The Truth and the “truthiness” About Knowing Material Misrepresentations

• Publication year: 2007

Matt Williams⁰

In the spring of 2007, MoveOn.org and Brave New Films posted a spoof political attack ad video on YouTube.com. The video, Stop the Falsiness, contained clips of the Comedy Central show, The Colbert Report. Subsequently, Viacom, which owns Comedy Central, sent a "takedown" notice to YouTube alleging that the video infringed Viacom's copyrights. After YouTube removed the video from its site, MoveOn.org and Brave New Films filed a lawsuit against Viacom alleging that Viacom "knowingly materially misrepresented" that the video was infringing. The plaintiffs took the position that the video was a "self evident fair use." This Article argues that there is no such thing as a self evident fair use, and that the provision of the Copyright Act that creates liability for making knowing material misrepresentations does not impose liability on copyright owners who ask Internet service providers to remove material from their sites that is arguably noninfringing under the fair use doctrine.

I. Introduction

Copyright owners use a "notice-and-takedown" process to protect their rights on the Internet.¹ Congress created this process² to facilitate the availability of creative content online by reducing the unlawful proliferation of infringing material and protecting some online services from unwarranted liability.³ When a copyright owner discovers infringing material or activity, the copyright owner may send a takedown notice to an "Internet service provider" ("ISP") requesting the cessation of the infringement.⁴ Limitations on liability applicable to cooperative ISPs that fit within narrowly defined categories incentivize ISPs to assist copyright owners in this process.⁵ If an ISP removes or denies access to material that an Internet user believes to be non-infringing, the user can demand its replacement by sending the ISP a "counternotice."⁶

Congress is committed to strong copyright protection online, and the notice-and-takedown process is one manifestation of that commitment.⁷ However, some commentators and advocates maintain that the public does not benefit from Congress's copyright policies.⁸ opponents of these policies believe that strong copyright protection conflicts with online innovation, liberty, democracy, speech, and community.⁹ In order to promote these values, they advocate the repeal of some protections provided by current copyright laws.¹⁰ Some of these opponents have specifically targeted the protection provided by the notice-and-takedown process through articles accusing the process of hindering speech by facilitating the removal of content from the Internet.¹¹ More recently, the process is being attacked in the courts rather than the law journals.¹²

These attacks utilize 17 U.S.C. § 512(f), a provision that imposes liability and litigation expenses on copyright owners who, in takedown notices, "knowingly materially misrepresent that material or activity is infringing."¹³ Congress intended the provision to be a check on intentional abuses of the notice-and-takedown process.¹⁴ However, critics of online copyright protection are asking courts to apply the provision in circumstances that would render the process ineffective.

In one such lawsuit, the Electronic Frontier Foundation ("EFF") and the Stanford Law School Center for Internet and Society ("CIS") recently filed suit against viacom alleging a violation of § 512(f).¹⁵ The complaint claimed that Viacom should be liable for asking YouTube.com to take down a video produced by MoveOn.org and Brave New Films that, according to EFF and CIS, was a fair use of Viacom's copyrighted material (specifically, the Comedy Central show, The Colbert Report).¹⁶ EFF's website describes the video, Stop the Falsiness, as "a tongue-in-cheek commentary on Colbert's portrayal of the right-wing media . . . ."¹⁷

The takedown notice at issue is only a small part of viacom's efforts to protect its rights against infringement by YouTube.com and its users.¹⁸ These efforts now include pending infringement litigation, the resolution of which will have widespread implications.¹⁹ Before filing suit, viacom notified YouTube of over one hundred thousand infringing videos available on the site.²⁰ viacom later admitted that, due to the overwhelming volume of infringement, viacom made a few unintentional mistakes, including requesting the removal of Stop the Falsiness.²¹

To make amends for its mistaken objection to YouTube's performance of Stop the Falsiness, viacom agreed to take steps to allow fair use of its material online²² by posting on its website information regarding the statutory mechanism by which individuals who feel that their noninfringing material was wrongfully removed in response to a viacom notice can request the material be replaced.²³ In response, Moveon.org and Brave New Films voluntarily dismissed the suit.²⁴ Thus, the Stop the Falsiness litigation came to a speedy end without any judicial analysis of § 512(f).

Nevertheless, the complaint filed by EFF and CIS against Viacom (as well as other complaints recently filed by EFF and others) poses a real threat to the notice-and-takedown process.²⁵ If the argument that takedown notices targeting arguably fair use material give rise to liability under § 512(f) gains traction, copyright owners will not only have to spend millions of dollars reviewing websites and sending out takedown notices,²⁶ but they will also face potential liability and litigation expenses every time a user of their content believes that material removed from the Internet is covered by the fair use exception. Moreover, Internet users would face the same potential § 512(f) liability each time they send a counternotice asserting the fair use defense, because the statute makes § 512(f) applicable to both copyright owners and Internet users.²⁷ Congress did not intend to place such a burden on copyright owners or Internet users.²⁸

Fortunately, the position argued by EFF and CIS has been thoroughly rejected by the U.S. Court of Appeals for the Ninth Circuit. In Rossi v. Motion Picture Association of America,²⁹ the court held that the knowing material misrepresentation standard was equivalent to a subjective good faith belief standard.³⁰ Thus, "there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner."³¹ This standard is inconsistent with imposing liability for sending a takedown notice targeting fair use material. Fair use is an affirmative defense to copyright infringement that is extremely fact based and does not lend itself to "bright-line rules."³² Even critics of the notice-and-takedown process have stated, "for a complainant to 'know' with legal certainty that its complaint targets a non-infringing or fair use is often unrealistic, given the complexity of copyright infringement analysis and the famed unpredictability of the fair use defense."³³ Under Rossi, a copyright owner should not be liable for sending a takedown notice requesting the removal of material that is noninfringing only due to the applicability of the fair use defense.³⁴

However, the complaint filed against Viacom ignores the Rossi opinion in favor of the § 512(f) standard announced in Online Policy Group v. Diebold,³⁵ a pre-Rossi district court decision from within the Ninth Circuit in which EFF and CIS represented the plaintiffs. The Diebold court held that a manufacturer of voting machines was liable under § 512(f) for requesting the removal of internal Diebold e-mails revealing that its machines were faulty because posting the e-mails online was fair use.³⁶ This decision has been repeatedly criticized for its flawed reasoning and inaccurate articulation of copyright law.³⁷ In addition, the opinion's articulation of the § 512(f) standard directly conflicts with Rossi.

Thus, judges should reject complaints claiming violations of § 512(f) based on the applicability of the fair use defense. To do otherwise would undermine the notice-and-takedown process that Congress designed to facilitate the removal of infringing material from the Internet as well as the replacement of any wrongfully removed noninfringing material.

By examining the legislative history and statutory structure of the Digital Millennium Copyright Act ("DMCA") in general and of § 512(f) in particular, Part II of this Article demonstrates that Congress did not intend § 512(f) to deter copyright owners or Internet users from asserting their rights. Part III analyzes the Diebold and Rossi decisions and argues that Diebold's reasoning was completely undermined by the Ninth Circuit in Rossi. Part III also discusses other cases involving § 512(f), none of which support the arguments of EFF and CIS. Part IV more fully describes the circumstances involved in the § 512(f) complaint filed by EFF and CIS against Viacom and concludes that the complaint articulates claims inconsistent with Rossi and the statute. Part V provides a brief overview of the uncertainties implicit in any fair use analysis and explains why the knowing material misrepresentation standard should not apply to cases involving fair use defenses. Finally, Part VI concludes that courts should reject claims for damages under § 512(f) that are based on Diebold rather than on Rossi and the text of the statute. In addition, Part VI suggests that all interested parties should work together to protect copyrights and fair use online.

II. The DMCA's Legislative History and Statutory Structure

Although the legislative history of the DMCA can be deceptive,³⁸ there are some clear indications of Congress's intentions regarding the legislation as a whole, as well as specific provisions, including § 512(f). This legislative history, when combined with the statutory structure of the DMCA, shows that Congress intended to discourage abuse of the notice-and-takedown process and the putback process without discouraging their use.

A. The Purpose of the DMCA

Congress crafted the DMCA, in part, in order to implement...