Table of Contents

Gather Your Facts
Elements of a Copyright Infringement Claim
Consider Valid Defenses
Ownership
Copying of Original Elements
Procedural Requirements
Substantial Similarity
What Copyright Does Not Protect
Fair Use
Other Statutory Limitations on Exclusive Rights
Independent Creation
Innocent Infringer Defense
Equitable Defenses
DMCA Safe Harbor

In 1989, popular Miami rap group 2 Live Crew released a song called “Pretty Woman.” If the title sounds strangely similar to the breezy Roy Orbison ballad, that was the point.

The rappers asked permission from Nashville publishing company Acuff-Rose to sample Orbison’s lyrics in their parody of the 1964 hit “Oh, Pretty Woman.” The company refused. In a display of characteristic defiance, 2 Live Crew released the song anyway — with the same bassline, but with lyrics that were far less… family friendly.

Acuff-Rose subsequently sued the rap group for copyright infringement in a case that made its way to the U.S. Supreme Court. Attorneys for 2 Live Crew argued “fair use” — a legal exception that allows the use of copyrighted works in certain limited circumstances.

In 1994, the Supreme Court unanimously agreed — and that’s how a rap group from Miami set the legal standard for fair use as a copyright infringement defense.

Chances are slim that you’ll one day find yourself defending a raunchy rendition of a Roy Orbison classic in front of the nation’s highest court. But you may find yourself being sued for copyright infringement. If so, you’ll need to take swift action. This article details which action to take and defines several viable copyright infringement defenses.

Talk with a Copyright Attorney

Penalties for copyright infringement can be severe. A court may order you to pay as much as $150,000 per work infringed if it finds that you willfully violated another person’s copyrighted material. Most people can’t afford that kind of financial setback. A savvy copyright attorney is your greatest weapon when you’re facing an infringement lawsuit. Call Robinson & Henry at 303-688-0944 today to begin your case assessment.

What Should I Do First if I’m Accused of Copyright Infringement?

After receiving a demand alleging copyright infringement, your first instinct may be to contact the copyright owner and get your side of the story on record. Do not do this. “Anything you say can and will be used against you” isn’t just an overused phrase in procedural cop shows.

Don’t Ignore the Demand

You may think you don’t need to respond to a demand letter as long as you simply stop any potentially infringing activities or remove infringing works. However, ignoring a demand letter may cause the copyright holder to spend additional resources in pursuit of his or her claim. These additional costs may drive up the damages that the copyright holder is seeking. Thoroughly read the letter and make note of any deadlines mentioned.

Gather Your Facts

Facts will lay the foundation for your case. And while you need an experienced copyright attorney to fully determine the validity of a copyright infringement claim, only you can provide the facts that will allow them to do so.

Ask yourself the following questions:

• Did I use or make money from the copyrighted works listed in the demand letter?
• How was the copyrighted material obtained?
• Did I “knowingly” use the material in the manner alleged in the demand letter? Or was it inadvertent?
• Do I have a valid license or permission to use the material? If you did obtain a license or written authorization from the owner, find proof. Then, check the terms and conditions to make sure your usage complied.

Elements of a Copyright Infringement Claim

To prove copyright infringement, the plaintiff generally must show:

• ownership of a valid copyright
• copying of original elements
• substantial similarity between the infringing work and the copyrighted work

Consider Valid Defenses

Generally, there are two main defenses that you can raise against a copyright infringement claim:

(1) challenging the alleged copyright owner’s claim to ownership

(2) challenging an alleged violation of a right.

No Infringement

No claim exists where no infringement occurs, whether because an element of the claim was not met or the use was not infringing for another reason.

Ownership

If someone is suing you for copyright infringement, it makes sense that he or she would need to own a valid copyright in the work. You do not have to register your copyright with the U.S. Copyright Office for it to be valid. However, registration is a requirement to file a copyright infringement claim.

In the 2019 case Fourth Estate Public Benefit Corp v. Wall-Street.com LLC et al., Supreme Court justices unanimously decided that you must have a registration from the U.S. Copyright Office, or have been refused a registration, in order to sue for copyright infringement. Justice Ruth Bader Ginsberg noted in her written opinion that once a registration has been issued for a copyright, a copyright owner can recover damages for infringement that occurred both before and after registration.

The court also ruled that the Copyright Act allows for preregistration in certain circumstances. This simply means the copyright owner can file an infringement suit before a registration has been issued. Preregistration is allowed if a copyright owner is preparing to distribute a work that is vulnerable to pre-distribution infringement, such as a movie or musical composition.

The Supreme Court further noted that a copyright owner may also sue for infringement of a live broadcast before the copyright is registered. Additionally, the Supreme Court ruled that copyright owners facing prospective infringement litigation can seek expedited processing of a registration for an additional $800 fee.

For expedited processing, the Copyright Office will “make every attempt to examine the application . . . within five working days.” Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 892 (2019)

Chain of Title

Sometimes the person suing you for infringement does not appear as the owner on the copyright registration certification. They are responsible in this case for demonstrating ownership through a chain of title. This is the series of legal documents or agreements that establishes propriety rights or ownership in a project, from completion to conception.

As the alleged infringer, you can challenge the chain of title by showing that any link in the chain is invalid, missing, or does not meet the applicable legal requirements. For example, in the 2009 case Am. Plastic Equip., Inc. v. Toytrackerz, LLC, Toytrackerz proved that American Plastic Equipment, Inc., did not have the correct chain of title for a variety of action figures. Thus, the court ruled in favor of Toytrackerz.

Copying of Original Elements

The subject matter of the work must be copyrightable. A work qualifies for copyright protection if it is:

• original, meaning the work was independently created by the author and has some minimal level of creativity
• fixed, meaning that the work has been preserved in any tangible medium of expression

For example, if the work is a list or directory, the work must involve at least a minimal amount of selection and organization with a modicum of creativity to satisfy the creativity requirement.

If the work does not satisfy both these requirements, the copyright is not valid and there is no infringement.

Procedural Requirements

As with any lawsuit, parties involved in a copyright infringement claim must take into account certain procedural requirements and considerations, including:

• subject matter jurisdiction
• personal jurisdiction
• venue
• standing
• the statute of limitations

Subject Matter Jurisdiction

Per the U.S. Copyright Act, federal courts have exclusive subject matter jurisdiction over all copyright claims. Therefore, you cannot be sued for copyright infringement in Colorado state court.

When is a state law not preempted by the Copyright Act?

A state law claim is not preempted by the Copyright Act if it requires the plaintiff to prove an additional element that changes the nature of the action.

Personal Jurisdiction

Personal jurisdiction means a court has the power to render a valid judgment against a particular person. All states have laws called “long-arm statutes” that spell out the circumstances under which a court in that state may assert jurisdiction over an out-of-state defendant.

Colorado’s long-arm statute, Colorado Revised Statute § 13-1-124, provides that a non-resident may be sued in Colorado when he or she engages in some contact with Colorado, including:

• the transaction of any business
• the commission of a tortious act
• the ownership, use, or possession of any real property
• contracting to insure any person, property, or risk residing or located within this state at the time of contracting

In Shepard’s McGraw-Hill, Inc. v. Legalsoft Corp., Shepard’s McGraw-Hill, Inc. sued Oklahoma software company Legalsoft Corp., Inc., in Colorado state court for copyright infringement. However, Shepard’s could not prove that the business transactions Legalsoft had conducted in Colorado were sufficient to grant the court personal jurisdiction. Thus, the Colorado District Court dismissed the case.

Extraterritorial Jurisdiction

The Copyright Act does not apply to acts of infringement that take place outside of the U.S. An example is the 1994 case Subafilms, Ltd. v. MGM-Pathe Communications Co. In this case, Subafilms and Hearst Corporation sued MGM for unauthorized distribution abroad of The Beatles’ “Yellow Submarine.”

Interpreting the U.S. Copyright Act as establishing rights no further than the national border, the U.S. Court of Appeals for the Ninth Circuit held that merely authorizing infringing acts within the United States did not violate domestic copyright law.

Standing

The legal or beneficial owner of any of the exclusive rights in a copyrighted work has standing to sue for infringement that occurs while it owns that right, per 17 U.S.C. § 501(b).

Non-exclusive vs. exclusive licenses

In copyright law, there are “non-exclusive” and “exclusive” licenses. When you give someone a non-exclusive license, you give that person permission to exercise the right in question — but you also maintain the right to continue exercising it yourself, as well as authorize others to do so.

When you give someone an exclusive license, you are agreeing that the licensee and only the licensee may exercise the right. This means that when you grant an exclusive license, even you may not exercise the granted right — nor may you authorize anyone else to do so.

Effectively, those who hold exclusive rights to a copyright have standing to sue for copyright infringement. A person holding a non-exclusive license is not entitled to sue for alleged infringement of the copyright.

If you can provide written proof of either a non-exclusive or exclusive license for the work in question, you are not liable for copyright infringement.

Statute of Limitations for Civil Copyright Claims

A civil copyright infringement claim must be filed within three years after the claim accrued.

Under the “discovery rule,” a copyright infringement claim accrues — and the statute of limitations begins to run — when someone discovers or reasonably should have discovered the alleged infringement.

Separate Accrual Rule

Importantly, the Copyright Act’s “separate-accrual rule” provides for a new three-year statute of limitations each time an infringement occurs. This allows a copyright owner to bring a lawsuit years after the initial infringement occurs, although he or she is only entitled to damages for the latest three-year period.

Under this rule, even if a plaintiff is time-barred from filing a claim based on an alleged infringement that happened more than three years earlier, he or she may still seek relief for successive infringing acts occurring during the three years before filing suit.

Substantial Similarity

Even if the plaintiff manages to establish that you infringed on their copyrighted work, you may not be out of options. The copyright owner also has the burden of showing the court that your work is substantially similar to their copyrighted material.

Evaluating Substantial Similarity

The Tenth Circuit Court of Appeals evaluates substantial similarity using the abstraction/filtration/comparison test — which most circuits reserve for cases involving computer programs — in all copyright infringement cases.

Courts in the Tenth Circuit begin by separating the infringement analysis into two distinct inquiries:

(1) whether there is sufficient evidence of access and probative similarity to prove that the defendant copied

(2) whether the alleged infringer took enough of the copyright owner’s protected material to be guilty of infringement.

The Tenth Circuit tests probative similarity by comparing all elements of the works — not just the protected elements — to determine whether there are similarities that would imply copying.

‘Copying alone is not infringement’

In the 2011 case Blehm v. Jacobs, artist Gary Blehm brought a copyright infringement action in Colorado district court against the Life is Good Company, run by brothers Albert and John Jacobs. Blehm had created copyrighted posters featuring cartoon stick figures called “Penmen.” He contended that numerous Life is Good depictions of a cartoon character called “Jake” infringed on his copyrighted works.

The Colorado court ruled in favor of the Jacobs brothers after determining that the two works were not substantially similar. Upon review, the U.S. Court of Appeals for the Tenth Circuit affirmed:

“Copying alone is not infringement. The infringement determination depends on what is copied. Assuming Life is Good copied Penmen images when it produced Jake images, our substantial similarity analysis shows it copied ideas rather than expression, which would make Life is Good a copier but not an infringer under copyright law.” Blehm v. Jacobs, (D. Colo. Sep. 19, 2011)

What Copyright Does Not Protect

The following categories of work are not eligible for copyright protection, regardless of when they were created and whether or not they bear a copyright notice:

• facts
• works created by the United States government
• works not fixed in a tangible form of expression
• ideas, concepts, principles, or discoveries
• words, phrases, or familiar symbols

Facts

As previously stated, copyright protection applies exclusively to “original works of authorship.” Although the creativity threshold required for “originality” is extremely low, facts do not have the requisite level of creativity. For example, football scores, telephone numbers, dates of birth, and the number of people at an event are non-copyrightable facts.

However, a compilation of facts may be protected if the creator of the original publication selected, coordinated, or arranged the facts in an original way. For example, a sports almanac may arrange baseball scores in a creative way. In this instance, the creator of the work would have a copyright in the creative arrangement of the facts, but not the facts themselves.

Works Created by the United States Government

You can use any work of the U.S. government because copyright law does not cover such works. These works include:

• federal judicial decisions
• federal statutes
• speeches given by federal government officials in the course of their employment
• federal government press releases
• federal government reports (such as census reports)

Works Not Fixed in a Tangible Form of Expression

Copyright protection only applies to “original works of authorship” that are “fixed in a tangible medium of expression.” Consequently, if you attended an improvisational speech that had not been transcribed or recorded, you would not be liable for copyright infringement if you then published the speech in your online work.

Ideas, concepts, or principles

Copyright does not cover ideas, concepts, and principles themselves, only the form in which they are expressed. For instance, merely coming up with an idea does not make you the copyright owner because you haven’t actually expressed anything. You become the copyright owner only when you put that idea into “expression” through words or another tangible form (such as a video, photograph, or podcast).

Words, Phrases, or Familiar Symbols

In general, copyright does not protect individual words, short phrases, and slogans; familiar symbols or designs; or mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents.

Fair Use

The exclusive rights granted to copyright owners are not without certain restrictions. There are several exceptions to the copyright owner’s exclusive rights scattered throughout the Copyright Act.

The most significant limitation on a copyright owner’s exclusive rights is the fair use exception. As previously stated, fair use is a legal doctrine that allows the unlicensed use of copyrighted works in certain circumstances. 17 U.S.C.S. § 107

Copyright law exists first and foremost to “promote science and the useful arts” by protecting creators’ ability to profit from their creations through sales or licensing of their work. The fair use clause of the U.S. Copyright Act recognizes the public’s interest in using copyrighted works without permission (and without being sued) for certain purposes.

Examples include commentary, news reporting, research, education, and — as Acuff-Rose and 2 Live Crew learned — parody.

Statutory Factors of Fair Use

There is no one-size-fits-all approach to determining fair use. Courts decide this on a case-by-case basis. However, the fair use analysis is generally governed by the following four statutory factors:

1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes

Courts typically focus on whether the use is “transformative.” That is, whether it adds new expression or meaning to the original work, or whether it merely copies from that work. In Campbell v. Acuff-Rose, 2 Live Crew’s “Pretty Woman” was considered transformative because it altered the original song’s meaning.

This factor is influential in fair use analysis and may outweigh the other factors when a highly transformative work creates significant public benefits. Transformative uses such as parody or criticism that “lie at the heart” of copyright generally warrant stronger fair use protection.

2. The nature of the copyrighted work

Using material from primarily factual works is more likely to be fair use than using purely fictional works. For example, where a magazine published excerpts of unpublished presidential memoirs, the Supreme Court noted that the scope of fair use is narrower for unpublished works because the author’s right to control the first public appearance of his expression weighs against another party’s use of the work before its release.

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

This factor assesses whether the new work borrows the “heart” of the original work. Courts allow substantial borrowing to the extent that the borrowing is needed to express the function or purpose of the new work.

Borrowing small bits of material from an original work is more likely to qualify as fair use than borrowing larger portions. However, even taking a small amount may weigh against fair use in some situations. If the copied portion constitutes the “heart” of the work, courts likely will not consider that fair use.

4. The effect of the use upon the potential market for, or value of, the copyrighted work

The Supreme Court has called this statutory factor “the single most important element of fair use.” Essentially, if your usage harms the copyright owner’s ability to profit from his or her original work by serving as a replacement for demand for that work, courts are less likely to find fair use.

Courts will weigh this factor in the copyright owner’s favor when the two works may directly compete in existing or potential markets belonging to the copyright owner. If the new work competes in a different market, or the effect on the original work in the same market is negligible, courts generally find this factor in favor of the alleged infringer.

Clean Flicks of Colo., LLC v. Soderbergh

Background

The 2006 case Clean Flicks of Colo., LLC v. Soderbergh centered around the fair use doctrine. The Utah-based business CleanFlicks created, sold and rented copies of commercially-released DVDs and VHS tapes that it altered by deleting “sex, nudity, profanity and gory violence.”

CleanFlicks would purchase the DVDs from authorized retailers before downloading a digital copy of the entire movie onto the hard drive of a computer. After using software to make the edits, the company would then download an edited master copy. That copy would then be used to create a new recordable DVD-R to be sold to the public, either directly or indirectly through a retailer.

In 2002, the Directors Guild of America declared its intention to bring copyright infringement claims against seven companies that had been profiting from “cleaning up” mainstream movies. The announcement prompted CleanFlicks to preemptively file a lawsuit in Denver Federal Court, naming prominent Hollywood figures such as Steven Spielberg and Martin Scorsese as defendants.

CleanFlicks Argues Fair Use

In their suit, CleanFlicks asked the Colorado District Court to find that editing video content to eliminate “objectionable” subject matter constituted fair use and was therefore legal under federal copyright law.

According to the court’s opinion, CleanFlicks also sought to:

establish a public policy test that they are criticizing the objectionable content commonly found in current movies and that they are providing more socially acceptable alternatives to enable families to view the films together, without exposing children to the presumed harmful effects emanating from the objectionable content. Clean Flicks of Colo., LLC v. Soderbergh, 433 F. Supp. 2d 1236 (D. Colo. 2006)

CleanFlicks relied on the fourth statutory factor for the basis of their fair use argument. The company claimed that there was no adverse effect on the market for the films because they maintained a one-to-one ratio between original and edited films.

CleanFlix added that consumers of the edited versions would likely not have purchased the authorized versions because of the inappropriate content. Therefore, the studios did not compete in the same market.

Court Ruling

Following a four-year legal battle, Judge Richard P. Matsch ultimately ruled in the studios’ favor. Matsch ordered CleanFlicks to “stop producing, manufacturing, creating, and renting” edited movies, and to hand all inventory to movie studios within five days of the ruling.

The court ruled that CleanFlicks’ edited film versions were not transformative because they added nothing new to the original work. Additionally, the court held that the “amount and substantiality” factor weighed against a fair use finding because the movies were copied in their entirety for non-transformative use.

In his opinion, District Judge Richard P. Matsch wrote that CleanFlix’s argument ignored “the essence of copyright law,” which is “the intrinsic value of the right to control the content of the copyrighted work:”

Whether these films should be edited in a manner that would make them acceptable to more of the public playing them on DVD in a home environment is more than merely a matter of marketing; it is a question of what audience the copyright owner wants to reach. Clean Flicks of Colo., LLC v. Soderbergh, 433 F. Supp. 2d 1236 (D. Colo. 2006)

Other Statutory Limitations on Exclusive Rights

There are numerous other exceptions and limitations to the copyright owner’s exclusive rights in the Copyright Act, including exceptions to:

• allow libraries and archives to make copies for preservation purposes
• allow the owner of a copy of a computer program to make a back-up copy of the program
• allow certain performances and displays for the purposes of classroom education, religious services, and transmissions to people with disabilities
• allow certain authorized entities to reproduce and distribute copies of certain works in specialized formats exclusively for people with disabilities to use
• allow purchasers of legal copies to re-distribute or otherwise dispose of those copies (commonly referred to as the first sale exception)

First Sale Doctrine

The “first sale doctrine,” per 17 U.S. Code § 109, states that someone who knowingly purchases a copy of a copyrighted work from the copyright holder has the right to sell, display or otherwise dispose of that particular copy without permission from the copyright owner.

The right to distribute ends, however, once the owner has sold that particular copy. Furthermore, the privileges created by the first sale principle do not “extend to any person who has acquired possession of the copy or phonorecord from the copyright owner, by rental, lease, loan, or otherwise, without acquiring ownership of it.” 17 U.S.C. § 109(d)

Independent Creation

Independent creation is another way of saying that the copyrighted work was not copied. This defense is fairly straightforward. Any similarities are irrelevant if you can prove you created your work independently without knowledge of or exposure to the other person’s copyrighted material.

Innocent Infringer Defense

Innocent infringement is one of the most common defenses in copyright infringement litigation. It is also the most misunderstood.

According to 17 U.S. Code § 504, someone is considered an innocent infringer if the court finds:

“that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright”

“Innocent” is not synonymous with “unintentional.”

It is crucial to understand that the innocent infringement defense involves effectively admitting to copyright infringement liability. An innocent infringer is still an infringer.

This defense only comes into play when the court calculates statutory damages for the infringement. If you can prove the elements of the innocent infringer defense, the judge may reduce any award of statutory damages to as low as $200 per work infringed.

However, a judge is not required to reduce the amount of statutory damages even if you do prove innocent infringement. This is entirely at the judge’s discretion.

Equitable Defenses

Equitable defenses are usually affirmative defenses asking the court to excuse an action because the party bringing the cause of action has acted in an unfair way. Here are some examples of equitable defenses often used in copyright infringement litigation:

• copyright misuse
• “unclean hands”
• laches
• estoppel
• copyright abandonment

Copyright Misuse

The 1990 Supreme Court case Lasercomb America, Inc. v. Reynolds first established copyright misuse as a viable defense to infringement. Copyright misuse occurs when the copyright holder tries to extend the copyright beyond its intended reach.

Software developers Lasercomb created a computer program that allowed a designer to create templates used by lasers to produce steel rule die. (Steel-rule die is a tool used for cutting sheet metal and softer materials such as plastics, wood, cork, felt, fabrics, and paperboard.) The company licensed the software to Larry Holliday and Job Reynolds, of competitor Holiday Steel Rule Die Corp.

The licensing agreement included a clause preventing Holiday Steel from developing its own computer-assisted die making software for 100 years. When the corporation created a computer program nearly identical to Lasercomb’s software, Lasercomb sued for copyright infringement.

Holliday and Reynolds never contested the infringement allegation. Instead, they claimed in an appeal that Lasercomb had misused its copyright by including such a restrictive term in the licensing agreement. The Fourth Circuit Court agreed.

However, the court did clarify that Lasercomb was free to pursue another copyright infringement lawsuit once the company had stopped the misuse and its copyright was no longer invalid.

Unclean Hands

The “unclean hands” defense refers to wrongful behavior by the copyright owner. This can sometimes bar a copyright owner from enforcing his or her exclusive rights.

The “unclean hands” defense was used successfully in the 1973 case Edward B. Marks Music Corp. v. Colo. Magnetics, 357 F. Supp. 280 (W.D. Okla. 1973). Marks Music Corporation, an independent music publisher, authorized various record companies to make recordings of compositions in which it owned the copyright. The licensed recording companies hired artists who made recordings of these compositions. Those recordings were then sold to the general public.

Colorado Magnetics, Inc. would purchase those records on the open market and duplicate the recording with its own sound equipment on magnetic tapes. The company would then sell those records to the general public at a much lower price than the originals.

Marks sued Magnetics for copyright infringement. However, the court found that Marks had “used its copyright monopoly in the musical compositions in suit in a manner constituting unclean hands.” (Edward B. Marks Music Corp. v. Colo. Magnetics, 357 F. Supp. 280, 287 (W.D. Okla. 1973)

Among other things, the court wrote, Marks had “agreed, combined and conspired with other music publishers… in an attempt to deny the Defendants the rights provided via the compulsory license provision of the Copyright Law.” Edward B. Marks Music Corp. v. Colo. Magnetics, (W.D. Okla. 1973

Laches

Using the laches defense means asking the court to find that the plaintiff waited too long to file a claim after learning of the alleged infringement. This means the plaintiff is no longer entitled to bring an equitable claim:

“Laches, in legal significance, is not mere delay, but delay that works a disadvantage to another …” thus, “[i]n order to prove the affirmative defense of laches, the defendant must demonstrate that there has been an unreasonable delay in asserting the claim and that the defendant was materially prejudiced by the delay.” Malibu Media, LLC v. Cuddy (D. Colo. Apr. 24, 2014)

Colorado courts have generally held that laches is not available to bar a claim for copyright infringement damages brought within the three-year statutory time limit.

However, the defense may still be available in extreme circumstances to limit equitable relief at the beginning of litigation. (Equitable relief happens when a court orders one party to refrain from participating in one activity and orders them to perform a new action for the sake of the other party. Two examples of equitable relief are injunctions and restraining orders.)

Estoppel

The following four elements must be present in an estoppel defense:

1. The copyright owner must know the facts underlying your alleged infringement.
2. The copyright owner must intend for you to rely upon his or her conduct. Or he or she must act in a way that gives you the right to believe they intended reliance.
3. You, the defendant, must be ignorant of the true facts.
4. You, the defendant, must rely on the copyright owner’s conduct to your detriment.

Copyright Abandonment

A person abandons a copyright if he or she commits an overt act that indicates an intent to surrender exclusive rights in the work.

When the copyright is abandoned by the owner, it enters the public domain. Thus, he or she no longer owns any exclusive rights in the work and cannot bring a claim of copyright infringement against anyone who uses the work.

Simply not using the copyright does not demonstrate abandonment. However, let’s say the copyright owner has failed to enforce their copyright over a certain period of time. A court may interpret such inaction as an intent to surrender rights in the copyrighted work.

DMCA Safe Harbor

The Digital Millennium Copyright Act provides safe harbors in certain conditions for qualified online service providers from claims of copyright infringement made against them as a result of the conduct of their users. (17 U.S. Code § 512)

DMCA’s safe harbor provision serves as an incentive for service providers to cooperate with copyright owners in removing infringing materials from their websites. The law grants service providers immunity for four types of activities:

• providing networks and infrastructure
• caching infringing activities
• hosting and storing infringing activities
• linking, directing and providing other tools that point users to infringing activities

DMCA Safe Harbor Requirements

In order to qualify for the safe harbors, service providers will need to satisfy the following threshold requirements:

• adopting and implementing a policy of terminating the accounts or subscriptions of repeat infringers
• informing subscribers and account holders of the repeat infringer policy
• accommodating and not interfering with standard technical measures used by copyright owners to identify and protect their works
• designating agents to receive takedown notices from copyright owners and recording those designated agents with the U.S. Copyright Office

In addition to meeting these requirements, the safe harbors for hosting/storage and linking only apply if the service provider:

• complies with the DMCA takedown and counter notice process
• was not aware of the infringement, or of facts or circumstances that would make the infringement apparent, prior to receiving a takedown notice

These safe harbors only apply when someone other than the service provider is responsible for the infringement.

The law does not apply if the service provider itself is engaging in the infringing activities.

An Example

At the center of the 2016 case BWP Media United States, Inc. v. Clarity Dig. Grp., LLC (D. Colo. Mar. 29, 2016) was a Clarity Digital Group independent contractor who posted 75 photographs to the news organization’s website. Unfortunately, the independent contractor did not receive permission to post these photos from two businesses that held the copyright to the pictures. One of the businesses, BWP Media, sued Clarity for copyright infringement.

However, a Colorado district court found no evidence that Clarity instructed the contractor to post the photos on its website, or that the company had any knowledge of the copyright infringement. Moreover, Clarity removed the photographs after learning they had been posted without the copyright holders’ permission. Thus, Clarity Digital Group was not liable for copyright infringement under the DMCA’s safe harbor provision.

Are You Facing a Copyright Infringement Claim?

Your response to a copyright infringement notification could mean the difference between successfully defending a case against you or being saddled with hefty financial penalties. This is why your main priority should be involving a copyright attorney immediately upon receiving notification of an infringement claim. The copyright attorneys at Robinson & Henry can direct your initial response to that notification, which will set the tone for resolving the accusation in a timely and cost-effective manner. Call 303-688-0944 today to begin your case assessment.