The Ninth Circuit has finally weighed in on the long-running saga of the “dancing baby” video case (the “baby” in the video is now a 9-year old), and its opinion could have long-lasting effects on fair use and how copyright holders send DMCA notices.

Under the Digital Millennium Copyright Act, service providers are immune from liability for copyright infringement if they remove or disable access to user-submitted material identified in takedown notices that adhere to the statute’s specified requirements. The notice-and-takedown system offers a “safe harbor” for the many companies that host user-submitted material, while allowing rapid removal of material copyright holders deem infringing. But because the system depends on copyright holders to identify the allegedly infringing material, it also opens the door for copyright holders to abuse the system to censor material that might not actually be infringing.

The Lenz case stems from a DMCA takedown notice that UMG sent to YouTube for removal of a 29-second home video clip of a baby dancing to a song playing on the radio in the background. The song on the radio was Prince’s “Let’s Go Crazy.” After the video clip was removed in response to the takedown notice, the baby’s mom, Stephanie Lenz, submitted a counternotice under the DMCA’s procedures for objecting to a takedown notice. YouTube then reinstated the video. Because Lenz and her attorneys did not believe the clip constituted copyright infringement at all, she filed suit under Section 512(f) of the DMCA.

Section 512(f) states: “Any person who knowingly materially misrepresents under this section—(1) that material or activity is infringing, . . . , shall be liable for any damages . . . .” The Lenz Court stated: “If an entity abuses the DMCA, it may be subject to liability under § 512(f).” The intent of Section 512(f) is to discourage the sending of fraudulent or “knee jerk reaction” takedown notices without due consideration of whether or not the content that is the subject of a takedown notice is actually infringing. Indeed, Section 512(c)’s requirements for a takedown notice include “[a] statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.”

The heart of the question before the Court was whether UMG had lacked a good faith belief that the video was “not authorized by . . . law” because UMG had not explicitly considered fair use before sending the takedown.

While the Ninth Circuit’s opinion did not fully end the case (a rehearing or Supreme Court review is possible, and the Ninth Circuit’s decision sends the case back to the district court for trial), it did lay down some important principles regarding fair use and the DMCA notice and takedown system.

There has been debate about how fair use fits into infringement analysis. The Ninth Circuit concluded that while procedurally, fair use may be called an affirmative defense because the burden of proof lies on the party claiming fair use, by statute, “[f]air use is not just excused by the law, it is wholly authorized by the law.” It reached this decision because Section 107 of the Copyright Act of 1976 explicitly states “the fair use of a copyrighted work . . . is not an infringement of copyright” and because the Supreme Court recognized that “anyone who . . . makes a fair use of the work is not an infringer of the copyright with respect to such use.” Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 433 (1984).

Because of this the Ninth Circuit held that the DMCA “unambiguously contemplates fair use as a use authorized by the law.” For copyright holders, the message was unmistakable: “We conclude that because 17 U.S.C. § 107 created a type of non-infringing use, fair use is ‘authorized by the law’ and a copyright holder must consider the existence of fair use before sending a takedown notification under § 512(c).”

Consideration of fair use

Going forward, fair use must be considered before a DMCA takedown notice is sent. That said, the Court’s analysis of UMG’s actions left many open questions as to what precautions would be sufficient to form a good faith belief as to lack of fair use and to infringement generally.

The Court instructed copyright holders in general, in sweeping terms:

“To be clear, if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under § 512(f). If, however, a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder’s belief even if we would have reached the opposite conclusion. A copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to § 512(f) liability.”

With respect to UMG, the question of how a copyright holder forms a subjective good faith belief is murky. UMG admitted that it did not specifically consider fair use before sending the takedown notice but argued that it got close enough because it considered other criteria (such as the “focus” of the video, the length of the clip, and the clarity of the music) that implicate some of the fair use factors. The question of whether UMG considered enough of and the right criteria to be the basis of a good faith belief will go to a jury.

Judge Milan Smith, who concurred in part and dissented in part, would have set a different standard. Because Section 512(f) requires a “knowingly material[] misrepresent[ation] . . . that material . . . is infringing,” and Section 512(f) is the one that contains the provision for damages, focus on Section 512(c)’s requirement of a statement of good faith belief is a red herring. A fair use is not an infringement, so submitting a takedown notice for material that is fair use is a “material misrepresent[ation]” that the material was infringing. Under common law principles of fraud, a misrepresentation is knowing when the speaker “knows that he does not have the basis for his representation that he states or implies.” (citing Restatement (Second) of Torts § 526, emphasis by Judge Smith). Under Judge Smith’s reasoning, if the dancing baby video was fair use, UMG became liable the moment it made a representation as to infringement without first having the basis the make that representation. All that was left for the courts was to make a determination as to whether the video actually was fair use. Only time will tell whether his view gains any traction.

In the meantime, copyright holders and their agents should consider fair use a standard part of their process for review and to document their good faith contemporaneously. Copyright holders who only send sporadic takedown notices should be aware of fair use and know to consider it, or consult an attorney before sending a notice.

The Lenz opinion does not change the safe harbor procedures for service providers that receive takedown notices, but it may affect the quality and volume of notices service providers receive, depending on how copyright holders and their agents adjust to the opinion.

Automated tools

Use of automated tools for takedown notices without running afoul of the Court’s directive will require thoughtfulness from those designing and implementing such tools to consider fair use.

The Court acknowledged the usefulness of such tools but cautioned against overreliance: “We are mindful of the pressing crush of voluminous infringing content that copyright holders face in a digital age. But that does not excuse a failure to comply with the procedures outlined by Congress.”

Without holding whether such a system would pass muster, the Court noted that an automated system could ‘pre-screen’ material and segregate out ‘easy calls,’ leaving the remainder for human review. The example the Court gave was a system that checked whether a video under consideration matches the both the audio and video tracks of the copyright holder’s work, and whether nearly the entire video in question matches that single original work. While the Court’s example is imperfect as its filters account for only some of the fair use factors (a 5-second clip from a movie would likely be a fair use, but these criteria would label it infringing) it does suggest criteria to consider in applying automated tools. Separately, Judge Smith questioned whether algorithms “are currently capable of analyzing fair use.” He cautioned that “[f]or a copyright holder to rely solely on a computer algorithm to form a good faith belief that a work is infringing, that algorithm must be capable of applying the factors enumerated in § 107.” That the Court “note[d], without passing judgment,” the use of automated tools indicates the Court recognizes that fine-tuning of acceptable criteria is yet-to-come.

Citing favorably to the Lenz district court opinion, the Ninth Circuit warned those that resent having to consider fair use as too great a burden that they may have been skirting the law in other ways: “The DMCA already requires copyright owners to make an initial review of the potentially infringing material prior to sending a takedown notice; indeed, it would be impossible to meet any of the requirements of Section 512(c) without doing so. A consideration of the applicability of the fair use doctrine simply is part of that initial review.”

Entities using automated tools should tailor criteria to screen out possible fair uses for human review. In addition to the Court’s examples, smart designers should give thought to issues such as medium type (video, audio, link, etc.), length, and volume, as well as consider past famous examples of fair uses wrongfully taken down by automated systems.

Damages

The Court also held that if UMG was liable, Lenz was entitled to at least nominal damages under Section 512(f) even if she could not show financial harm form the violation. It left for another day the question of whether “any damages, including costs and attorneys[‘] fees” under the statute includes fees and costs for bringing a 512(f) suit, an issue sure to return to the Ninth Circuit if Lenz wins at trial.