Recent copyright office rule changes could terminate an unsuspecting OSP's eligibility for the DMCA's safe harbor provisions.

The Digital Millennium Copyright Act (DMCA) creates an important safe harbor from copyright infringement liability for certain websites and other online service providers (OSPs), so long as they follow a set of rules prescribed by statute and regulation. One such requirement, which applies to an OSP that stores user-generated content on its system or network, is that the OSP must register and designate an agent with the US Copyright Office to receive "takedown notices" (short communications from copyright holders claiming that content on the site infringes their rights). Failing to maintain a registered agent with the Copyright Office jeopardizes this critical DMCA immunity.

The Copyright Office recently announced significant changes to the registration process, including -- for the first time -- a requirement that past registrations be renewed in order to remain effective. This article explains the new rule changes.

The DMCA's Safe Harbors

Congress enacted the DMCA in 1998 to address and facilitate the development of the expanding online world.1 Complex questions of copyright liability born out of online commerce and communications had begun to percolate through the federal courts. In response, Congress enacted Title II of the DMCA -- the Online Copyright Infringement Liability Limitation Act2 -- more commonly known as the DMCA's safe harbor provisions. Codified in 17 U.S.C. section 512, the safe harbors broadly insulate a qualifying OSP from liability for both direct and indirect copyright infringement claims. Four categories of online activity by service providers potentially merit the statute's protections (if the OSP satisfies a range of specific requirements): (1) acting as a conduit carrying the digital communications of others ( 512(a)); (2) creating cached copies of websites ( 512(b)); (3) storing information at the direction of users ( 512(c)); and (4) creating directories or other means of locating information on the Internet ( 512(d)).

The Copyright Office's New 512(c) Agent Registration Procedures

The Copyright Office's new rule change primarily applies to 512(c), which protects service providers that store material on their system or network at the direction of their users (e.g., websites that host usergenerated content).3 Among other eligibility requirements, a service provider that wishes to avail itself of this safe harbor must designate an agent with the Copyright Office to receive notifications of claimed infringement, and must provide the agent's contact information on the OSP's website in a location accessible to the public.4

On November 1, 2016, the Copyright Office announced upcoming technological updates to its DMCA agent registration procedures along with a number of associated rule changes. OSPs must be aware of and comply with the rule change to successfully maintain ongoing agent designation, and therefore benefit from safe harbor protection under 512(c).5

Notably, the rule change eliminates the "set it and forget it" nature of the previous regime. In the past, an OSP could register an agent with the Copyright Office only once and ensure the OSP's compliance with 512(c)'s designated agent requirement ad infinitum. Now, an OSP is required to continually renew and maintain its take-down agent designation to remain in compliance.6

The principal rule changes (effective December 1, 2016) are as follows:

  • Electronic agent registration requirement: OSPs must register a DMCA agent through an electronic filing with the Copyright Office.7
  • Initial re-registration requirement: All OSPs with a DMCA agent currently registered with the Copyright Office under the old rules must electronically re-register that agent with the Office by no later than December 31, 2017.8 This means that an OSP's current paper-registered agent will continue to satisfy the DMCA until: (1) the OSP re-registers the agent electronically, or (2) through December 31, 2017.9
  • Renewal requirement: Once an OSP electronically registers or re-registers its designated agent with the Copyright Office, the OSP must renew its registration every three years (the renewal period).10 The renewal period will reset on two occasions, when: (1) the OSP renews its designation through the electronic system, or (2) the OSP amends its designation through the electronic system.11 An OSP's failure to renew or amend its agent designation within the renewal period will result in the expiration of the OSP's designated agent registration and the loss of its 512(c) safe harbor protection until renewal or amendment occurs. To help avoid the inadvertent expiration of an unwary OSP's designated agent, the Copyright Office's system will "automatically generate a series of reminder emails well in advance of the renewal deadline [sent] to every email address associated with the [OSP]." 12

The Copyright Office will allow an OSP currently operating under the old regime to continue to do so until December 31, 2017.13 At that time, an OSP that is not in compliance with the new rule will no longer satisfy the designated agent requirement and will lose its 512(c) safe harbor status.

Conclusion

While initial compliance with these rule changes may not seem demanding, vigilant maintenance (and renewal) of an OSP's DMCA agent registration status and accuracy is critical, with dire consequences if an OSP fails to do so. For example, numerous courts have found a service provider's invocation of the safe harbor unavailing in light of the provider's failure to satisfy 512(c).14 Some courts have held that agent registration is a predicate to safe harbor protection -- even an OSP that successfully receives and processes take-down notices despite the absence of a designated agent could be denied safe harbor protection.15

Given these rule changes, and the overall complexity of the DMCA safe harbor regime, this is an opportune time for OSPs to evaluate their eligibility and ongoing compliance requirements, to maintain complete DMCA safe harbor protection.