“Oh right. . . THAT thing!” Designated Agent Required Prior To DMCA Copyright Infringement Safe Harbor

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

CaptureThe recent case of Oppenheimer v. Allvoices is, if nothing else, a cautionary tale for everyone who wants to start the next big social networking site or provide any internet service with user-generated content. The moral is that the Digital Millennium Copyright Act (DMCA) is not self-executing; there are a few hoops you have to jump through before you can take advantage of the DMCA safe harbor. One of them is selecting and registering a designated agent.

What is a DMCA Designated Agent?

Under the DMCA, an online service provider is protected from secondary liability for most copyright infringement by its users.  However, pursuant to 17 U.S.C. § 512(c)(2), this safe harbor only applies if “the service provider has designated an agent to receive notifications of claimed infringement.”  The online service provider simply has to publish the name and contact information of its designated agent on its website and let the Copyright Office know who it is. For example, here is the designated agent page for LinkedIn.com, and here is one of the designation forms the company submitted to the Copyright Office.

Allvoices.com: A Cautionary Tale

Founded in 2007, allvoices.com bills itself as “a platform for citizen journalism,” and essentially operates like a crowd-sourced news site, supported by ads. The site’s policy prohibits the posting of copyrighted material by users but, in January 2011, a user uploaded without permission images that were copyrighted by photographer David Oppenheimer.

Unfortunately for allvoices.com, it apparently had gone all this time without designating an agent to receive copyright notices.  Perhaps that is why, as Oppenheimer alleged, nobody responded to his demand letters. Not until March 2011, after receiving Oppenheimer’s demand letters, did allvoices.com comply with the statute and fill out its agent designation form.

Safe Harbor Does Not Apply Retroactively

When Oppenheimer recently sued for copyright infringement in the Northern District of California, allvoices.com filed a motion to dismiss, arguing that it was protected by the DMCA safe harbor. According to allvoices.com, it had designated an agent by the time Oppenheimer had sued in 2014, so who cares if it had a designated agent way back in 2011. Ancient history, right?

Wrong, said Judge Laurel Beeler. Judge Beeler pointed out that no case law supported the position advanced by allvoices.com.  On the contrary, the only case to have addressed the issue held that infringement claims predating DMCA agent designation were not barred by the safe harbor.  And the defendant in that one relevant case was. . . let’s see … here it is …. allvoices.com.

As Lionel Hutz, Esq. once said: “Oh right . . . THAT thing.” (apologies to non-Simpsons fans).

Judge Beeler denied the motion to dismiss the copyright claims. According to the docket, the parties are now engaged in alternative dispute resolution.

How Do I Designate an Agent?

In order to designate an agent for receipt of DMCA copyright infringement claims, pick an agent (it can be but doesn’t have to be your lawyer) and follow the instructions on the Copyright Office website, including by filling out the designation form and mailing it in along with a registration fee. If you want to see a list of designated agents and completed forms, the Copyright Office website contains a complete directory. Remember also to publish the identity and contact information of the agent on your website, as allvoices.com has now done.



Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

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