September 2015

Legal Update: Fair Use Analysis Required For DMCA Takedowns


This week, the Ninth Circuit Court of Appeals ruled in a case (Lenz v. Universal Music Corp. No. 13-16106, 2015 WL 5315388 (9th Cir. Sept. 14, 2015) that may have an effect on the way many copyright holders use the Digital Millennium Copyright Act (DMCA) to remove infringing material from the Web. In the future, it may also affect brand owners using similar methods to monitor and report the sale of counterfeit or infringing goods.

In Lenz, Stephanie Lenz posted a half-minute video of her child playing with a toy, with Prince’s song – “Let’s Go Crazy” – playing in the background. Universal Music Corp. (UMC), the copyright owner, searched YouTube for videos “embod[ying] a Prince composition” by making “significant use of the composition…” However, UMC did not explicitly instruct its employee to consider the “fair use” doctrine prior to submitting a takedown request to YouTube. When filing a takedown notification under the DMCA, a copyright owner is required to make a statement that they “have a good faith belief that the…activity is not authorized by the copyright owner, its agent, or the law.” Following the takedown notification, Ms. Lenz filed a counter-claim alleging that because UMC did not consider that the video was protected under the fair use doctrine, and therefore authorized under the law,  their “good faith belief” statement was an actionable misrepresentation. The Ninth Circuit held that the DMCA “requires copyright holders to now specifically consider the possibility of fair use before sending a takedown notification.” Thus, following the ruling, submitting a takedown notification along with a “good faith belief” statement without first considering whether the fair use doctrine applies to the content at issue may result in a counter-claim for misrepresentation in a takedown notification. This raises the spectre that a copyright owner’s motivations and zeal will become “the story,” and not the unauthorized use of the original work.

While the Ninth Circuit ultimately remanded the case to the District Court to determine if UMC made enough of an investigation into the fair use doctrine prior to submitting a takedown notice, the ruling raises issues for copyright holders utilizing automated programs to monitor for infringement and submit takedowns. Programs utilizing detailed algorithms may be useful in locating potentially infringing content and in submitting takedowns where the infringement is clear cut and no possible fair use could be claimed, but are less likely to have the capacity to apply the factor-based fair use analysis to every piece of content before a takedown is submitted.

Sideman & Bancroft offers tailored web monitoring services for trademarks and copyrighted material. The search of online marketplaces for infringing content and products is accompanied by a sophisticated infringement/fair use analysis, done by people, not software. While the Ninth Circuit’s ruling in Lenz could be problematic for automated web monitoring, our program remains an effective and cost-effective enforcement tool, even post-Lenz. Please contact us if we can provide any further information about this most recent ruling or the services we offer.