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Proposed Changes Relating to DMCA Takedown Notices Generate Numerous Public Comments

Thursday, January 26, 2012

Laura McQuade | Bloomberg Law In September 2011, the U.S. Copyright Office sought comments1on its proposed amendments to the process for service providers to designate an agent to receive notices of alleged infringement pursuant to Section 512(c)(2)2 of the Copyright Act, the so-called "takedown notices." The Copyright Office asked for all comments by November 28, 2011, and all reply comments by December 27, 2011. Numerous parties responded to the proposed regulations, including the Motion Picture Association of America, Inc. ("MPAA"),3 the Electronic Frontier Foundation ("EFF"), the Recording Industry Association of America ("RIAA"), Microsoft Corp., Google Inc., Verizon Communications Inc, as well as a collective response from a group of cable and telecommunications associations.4

Current Process of Designating an Agent to Receive Takedown Notices

Under the Online Copyright Infringement Liability Limitation Act,5 an Internet service provider may qualify for safe harbor from liability for online copyright infringement. In order to qualify for such safe harbor a service provider must, among other things, designate an agent to receive "takedown notices." A service provider must provide the agent’s name, address, phone number, and e-mail address on its own website, and must provide this information to the Copyright Office.6 The Copyright Office adopted interim regulations governing the designation of agents that created the Copyright Office's current online directory of agents, which consists of .pdf copies of service provider's submissions made on paper.7 The Copyright Office plans on implementing an online process for the designation of agents in the hope that it will increase the directory's accuracy and currency.

Comments on Issues Relating to the Proposed Online System for Designating an Agent

The Copyright Office's proposed changes relate to several major issues, including electronic filing, mandatory periodic validation, designation amendments, mandatory re-filing, filing fees, and issues related to the content of the designation, such as contact information and how to handle related entities. For a more detailed discussion of the proposed process, see Copyright Office Seeks Comments on Proposed Online System and Regulations for Processing Service Provider Agent Designations, Bloomberg Law Reports® - Intellectual Property, Vol. 5, No. 41 (Oct. 10, 2011). Several of these issues generated comments, with the issues of using a third-party agent, mandatory periodic validation, mandatory re-filing, and the specific agent identity and contact information getting the most attention. — Electronic Filing and Use of Third-Party Agents The proposed regulations would implement a mandatory online submission form that would require the creation of a free account on the Copyright Office website. Service providers would be able to validate or amend the information on their account online for a fee. The proposed regulations provide a one year transitional period, during which either the existing paper-generated database or the new online directory would satisfy the requirements of Section 512(c)(2), but all new designations must be submitted electronically. One issue of concern for the Copyright Office was whether to allow the outsourcing of the agent designation process: "While the Copyright Office is willing to consider allowing a service provider to delegate this responsibility to an agent or other designee, there may be reasons to be concerned about the accuracy of amendments or validations of existing designation information that are not provided by the service provider itself."8 The MPAA and Microsoft both urged the Copyright Office to permit service providers to outsource the administration of their agent designations. According to the MPAA, ISPs would remain responsible for providing accurate information and for responding properly to takedown notices. Microsoft Corp. also supported the idea of outsourcing agent designations provided that the ISP remains responsible for the accuracy of the information. The Associations similarly supported the option of using a third-party to maintain and update agent designations, noting that they represented many ISPs with few employees that operate in sparsely populated areas, covering large territories, which may necessitate the delegation of this task so that their small local staffs can focus on their customers.9 To the contrary, the RIAA expressed its belief that only employees of the ISP should be permitted to submit agent designations. According to the RIAA, while outsourcing the designation of agents may help to keep the database up to date, "in other situations it might result in inaccuracies such as when there is a dispute or the outside representative fails to make a requested change."10 The MPAA went one step further, reasoning that the administration of the designation of agents by third-parties would increase the likelihood that notices would not be acted upon quickly and also "further complicate the ability of rights holders to efficiently contact the individual responsible for failures to act on notifications expeditiously, to follow up on the status of handling those notices, or take other action."11— Mandatory Periodic Validation Under the proposed regulations, ISPs must validate their information for a fee at least once every two years or the designation will expire and be removed from the directory entirely. The new system would generate reminders to validate the information and would also notify the service provider when its designation was removed from the system for failure to validate. Public Knowledge expressed its belief that periodic validation imposes an additional burden outside the scope of Section 512 and that the Copyright Office is not authorized to create new filing requirements. According to Public Knowledge, Congress decided that the risk of losing safe harbor protection as a result of failing to update your designation was sufficient to motivate service providers to keep their designation up to date. The CCIA similarly challenged the Copyright Office's authority to "expire" designations for a service provider's failure to periodically validate the information.12 The EFF also objected to the implementation of an additional requirement for service providers to qualify for safe harbor protection by requiring them to maintain their designations. The EFF reasoned that the requirements for safe harbor are already burdensome, as reflected by the fact that currently numerous smaller entities have not designated an agent under the current system.13 The addition of a periodic validation requirement, according to the EFF, would "impose disproportionately severe consequences" for a simple failure to maintain a designation on time, and would increase litigation costs for safe harbor cases.14 The EFF explained that Section 512 already penalizes those who do not provide accurate agent designations and that a jury, not the Copyright Office, should determine the consequences of doing so. The MPAA expressed a similar view: "[B]ecause service providers are responsible for maintaining correct designated agent information, are required to respond to notices of claimed infringement expeditiously, and typically want the benefit of the DMCA’s safe harbor limitations on liability, service providers should be self-motivated to keep this information current without the necessity of validation requirements."15 The MPAA suggested that service providers could be warned of the consequences of a failure to maintain current, accurate designated agent information during the initial designation process. — Mandatory Re-filing of Agent Designations Under the proposed regulations, ISPs that have already designated agents must re-file new designations using the online system. Thus, under the proposed new system, the Copyright Office explained that "[a]pproximately one year after the effective date of the final rule, all paper-submitted designations will become invalid and only those designations contained in the new electronically-submitted directory will satisfy the statutory requirement for designating an agent with the Copyright Office." 16 The MPAA expressed concern that the resubmission of designated agents could be "costly and burdensome" for companies with a large number of designations.17 The MPAA asked that, in the process of modernizing the designation process, the Copyright Office explore "ways to make this process more efficient for all parties by allowing the resubmission of existing designation through XML or some other form of electronic transmission allowing for the current library of agent to be populated into the new system."18 Public Knowledge urged the Copyright Office to transport its existing agent directory into its new database rather than requiring service providers to re-file.19 According to Public Knowledge, to do so would impose "new extra-statutory obligations" on service providers that are not contemplated by Section 512, and that would disproportionately burden small entities. Moreover, Public Knowledge deemed the migration of such information onto the new database to be part of the Copyright Office's obligation to maintain the database pursuant to Section 512(c).20 Both Public Knowledge and CCIA questioned the Copyright Office's legal authority under the Copyright Act to require re-filing of service providers' designations. — Agent’s Identity and Contact Information The Copyright Office sought comments on whether a service provider must provide an actual name as opposed to just the person's title, e.g. "Compliance Manager," and whether the agent must specify an actual physical address. The RIAA disagreed with the idea that service providers should be able to designate an agent by title, contending that use of an agent's actual name would help ensure that a service provider has not provided bogus information. Other parties, such as the Associations believed that use of title rather than an actual name would alleviate the problem of having to amend the designation every time the designated agent happens to leave the company or the position. Google agreed that service providers should be able to use job titles because the "misuse of personal contact information is unfortunately common,"21 a sentiment with which the Internet Commerce Coalition agreed. A service provider may provide a post office box under the proposed regulations, but only under exceptional circumstances and upon written request.22 The MPAA expressed concern about allowing a designated agent to provide a post office box rather than a physical address: "Allowing for the use of post office boxes would provide a layer of anonymity that is not warranted in this context. An individual who does not wish to provide a physical address available on the Copyright Office’s website should not serve as a designated agent."23 The RIAA agreed, noting that the agent's privacy concerns should not outweigh the need for accurate contact information in the directory. The Computer & Communications Industry Association, on the other hand, maintained that service providers should be allowed to provide post office boxes because certain private individuals who are service providers might not want to advertise a home address.24 The Internet Commerce Coalition agreed that a post office box should be permitted where only a home address is available, recounting the story of one woman who served as a designated agent for one of its member companies has been stalked as a result of providing her name to the database.25DisclaimerThis document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. The Bureau of National Affairs, Inc. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy.©2014 The Bureau of National Affairs, Inc. All rights reserved. Bloomberg Law Reports ® is a registered trademark and service mark of The Bureau of National Affairs, Inc.

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