Important DMCA Update re Designated Agents and Safe Harbors

The Digital Millennium Copyright Act of 1998 (DMCA) provides protection for online service providers (including website and blog operators) from claims of copyright infringement for content posted or stored by a third party. Section 512(c) of the DMCA provides a safe harbor from legal liability for service providers that are without actual knowledge of the infringing content and who expeditiously remove such content upon notice. Additionally, the provider must not receive a financial benefit directly attributable to the infringing content. These protections are effective if certain requirements are met, one of which is to identify and register a designated agent with the U.S. Copyright Office to receive notices of copyright infringement.

A federal court in California has ruled that the protections of the DMCA safe harbor do not extend to infringement prior to the designation of a DMCA designated agent. In Oppenheimer v. Allvoices, Inc., David Oppenheimer, a professional photographer, and his company sued Allvoices, Inc., an online service provider which publishes audiovisual content and sells advertising space based on traffic on its website, concerning a subscriber’s posting of several unlicensed photographs in January 2011. When Allvoicesdid not respond to a cease and desist letter sent by Oppenheimer, the photographer and his company filed suit alleging direct, contributory, and vicarious copyright infringement and a violation of the Lanham Act. Oppenheimer requested monetary damages. Allvoices filed a motion to dismiss, arguing that its March 2011 registration of its designated agent with the Copyright Office was sufficient to invoke the protections of the DMCA safe harbor for all infringement claims. The court rejected Allvoices’ argument, ruling that Allvoices’ DMCA registration was not retroactive. The court stated that the DMCA“plainly specifies that a registered agent is a predicate, express condition that must be met and that the safe harbor will apply only if such agent has been designated and identified to the Copyright Office for inclusion in the directory of agents.” Allvoices’ registration should have been completed prior to any notice of copyright infringement.

As a result, the court found that Oppenheimer sufficiently pleaded each of the copyright infringement claims and denied Allvoices’ motion to dismiss, in part. The court granted the motion to dismiss without prejudice on the Lanham Act claim because it was not clear whether this claim was for false designation of origin or for false advertising.

Section 512(c) of the DMCA and other court decisions also require a service provider to maintain properly its registration of a designated agent by posting accurate contact information on its website and updating this information with the Copyright Office. Failure to maintain a registration can also void safe harbor protections.

In summary, the failure to file promptly and maintain properly a DMCA designated agent registration can subject a business to monetary damages for direct, contributory, and/or vicarious copyright infringement of third party generated content. If you have not registered a designated agent with the Copyright Office, need to amend and/or update a current registration, or desire additional information about the DMCA, please contact S. Jenell Trigg at strigg@lermansenter.com or 202.416.1090, or any attorney in our office.