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The de-fanging of 17 U.S.C. § 512(f)

When a university student performed fellatio in a photobooth at her sorority’s formal ball, she probably wasn’t thinking about copyright issues.  When the images were, unbeknownst to her, uploaded onto facebook, she probably wasn’t thinking about the fact that the person who captured the images took the rights, or the complexity of who may own the images, depending on how they were created, as we’ve seen before.  (The automatic upload of these images to facebook is very common for these services, and may be governed by their contracts with the entities holding the events where they provide services.)  She was probably embarrassed, and thinking about the fastest way to remove the images from the Internet, rather than the legally proper way of doing so.  She then enlisted a relative to send DMCA notices seeking the removal of these images.  The claims in this paragraph can all be sourced with some internet research, but individual names and links to outable information have been removed to protect the young-and-judgment-impaired.

Setting aside non-copyright issues, there’s very good reason to believe she did not own the copyrights to the images that regrettably wound up online.  Nevertheless, they’ve been almost completely scrubbed from the internet.  As Marc wrote almost a year ago:

I have seen my share of DMCA takedown requests that targeted clearly fair use or were used to simply take down material that the requester did not like (for example, alleged defamation) (source)

I have not seen the DMCA notices sent over these images.  It is theoretically possible, though I am quite skeptical, that she received a written assignment of those images rights as required by 17 U.S.C. § 204.  Without possessing some right in the image, a take-down notice would be improper under 17 U.S.C. § 512(c)(3)(A), and should be punishable under 512(f).  Or, at least it used to be.

We’ve previously written about Lenz v. Universal, one of few § 512(f) cases ever filed nationwide.  Recently, the Northern District of California handed down an order denying both Lenz and Universal’s cross-motions for summary judgment.  The order is here.    Of particular note, the Court held that pre-suit attorneys’ fees may be the basis for a claim, but loss of one’s time amounts to, at best, a nominal damage.  These are sufficient damages to assert a claim, as the Northern District previously held that requiring a plaintiff to demonstrate “those damages were economic and substantial would vitiate the deterrent effect of the statute.” Id. at 14.  Absent § 512(f)’s provisions for the recovery of attorney’s fees, there would be no economical sense to the claim.  While this has been long suspected among those familiar with the statute, this decision puts the final nail in the coffin.  And, while mandatory shifting of attorneys’ fees and costs is tempting and an incentive for counsel to take a case that otherwise would not make it to court, they can be recovered only at the end of litigation.  The Lenz v. Universal summary judgment order is docket number 459, and comes years after the parties’ dispositive motions.

While this limitation on litigation’s back end – recovery – is not necessarily fatal, it acts in tandem with a prior injury to § 512(f)’s front flank that renders the statute almost useless.  In Rossi v. MPAA, the Ninth Circuit read 512(f)’s provision that an improper DMCA take-down notice “knowingly materially misrepresent … that material or activity is infringing” to require subjective bad faith by the take-down notice’s sender. 391 F.3d 1000 (9th Cir. 2004).  There are cases where that can be done – however, if the case has to progress to trial for a jury to decide the whether the sender had subjective bad faith as a matter of fact, the threat of damages under § 512(f) loses much of its deterrent effect. (Query further the “deterrence” of a big, fat judgment against someone with no assets, no job, and no chance at obtaining either.)

There are cases where § 512(f) continues to work.  If a party is careless about broadcasting his or her intentions in sending DMCA take-down notices, he or she may be liable for attorneys’ fees and costs at the end of an action.  In fact, such a case could be resolved at summary judgment within just weeks of being filed.  However, the fact that courts have read so many conditions into § 512(f) limits the statute’s capacity for use as a sword against censorship, and gives the growing class of people who abuse copyright laws free reign to remove unflattering, lawful, or fairly used materials with impunity.

Whatever replaces the DMCA will be an even more tangled mess of legislation, followed by another decade of spirited litigation between parties large and small.  When that successor arrives, however, it hopefully will have stronger consumer-level protections than § 512(f).

H/T: Eric Goldman

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