In view of the Ninth Circuit Court of  Appeals decision in Lenz    v. Universal Music Corp., Case Nos. 13-16106 and 13-16107 (Sept. 14, 2015), copyright owners need to be careful before sending Internet takedown notices for alleged infringement under the Digital Millennium Copyright Act (“DMCA”).  Stephanie Lenz posted a 29-second video on YouTube of her thirteen month old son dancing to Prince’s song Let’s Go Crazy.  Defendant Universal was the publishing administrator responsible for policing and enforcing Prince’s copyrights.  Universal transmitted a takedown notice to YouTube stating “We have a good faith belief that the above-described activity is not authorized by the copyright owner, its agent, or the law.”  In response, YouTube took down the video, notifying Lenz that it had done so.  Lenz sent a counter-designation to YouTube resulting in the reinstatement of the video; she then filed a lawsuit, claiming a violation of section 512(f) of the DMCA, namely, that Universal “materially misrepresent[ed] . . . that material . . . is infringing.”

The district court denied cross-motions for summary judgment on the 512(f) claim.  Both parties appealed.  On appeal, the Ninth Circuit held that “fair use” is an authorization of use under the Copyright Act that precludes a claim of infringement.  Anyone who makes a fair use of copyrighted material is not an infringer, and such fair use would not be the basis for a takedown notice under the DMCA.  Additionally, the court held that under the DMCA, in order for a copyright owner to avoid liability for a material misrepresentation of infringement in connection with a takedown notice, the owner must form a subjective good faith belief that the use is not an authorized use.  The standard is not an objective one.  This means that copyright holders must actually consider whether the use is a fair use.  However, such consideration “need not be searching or intensive.”  The Ninth Circuit affirmed the denial of partial summary judgment leaving it to the district court to determine the merits of Lenz’s claim of misrepresentation.

It is interesting to note that the court seemed amenable to approving use of computer algorithms to review large amounts of content to determine possible infringement:  “We note, without passing judgment, that the implementation of computer algorithms appears to be a valid and good faith middle ground for processing a plethora of content while still meeting the DMCA’s requirements to somehow consider fair use.”  How use of algorithms squares with considering fair use is not entirely clear from the court’s opinion.  The court expressly reserved the issue for another day.

Take Away:  Copyright owners and their representatives should have a written DCMA protocol/checklist in accord with 17 U.S.C. § 512(c)(3)(A) which sets forth the required content of a takedown notice under the DMCA.  This should include an express requirement that fair use be considered with a check off that fair use was indeed considered and rejected.  This evidence should assist in defending against a misrepresentation claim in connection with a takedown notice.