With the recent publicity about the proposed Stop Online Piracy Act (SOPA) and Protect Intellectual Property Act (PIPA), it’s an opportune time to review the existing remedies for online copyright infringement in the United States (remedies for sites hosted in other countries are different, and beyond the scope of this article.)
First, I recommend that all published authors routinely take the time, at least once a month, to perform an Internet search for their name and book titles, and also to set up Google Alerts with the same information (www.google.com/alerts).
Let’s assume that you have found some or all of your novel published on a web site without your permission. It may be a file sharing site such as BitTorrent.com (or one of many sites using its technology), 4Shared.com, MediaFire.com, etc., or a fan site, or someone’s personal site.
So –what to do?
If the rights to your novel remain with your publisher, you must review your publishing agreement to see whether you or your publisher, or both, have the right and/or obligation to take action against infringers (unfortunately, some agreements are silent on this point). Typically, the publisher has the right to enforce your copyright – as well as the resources – so you should notify it of the infringing conduct and let it take over, at no cost to you. (Although your publisher has the right to take action, you still may wish to go ahead and take the pre-litigation steps set forth below – just check first with your editor.)
If your work is out of print and rights have reverted to you, or you have self-published, then you have the burden of enforcement. This can be accomplished by using the provisions of the Digital Millennium Copyright Act (“DMCA”). Under the DMCA, the owner of a work may notify the Internet service provider (“ISP”) about the offending material. Once the service provider has been notified, it is required to remove the material. In return, the service provider is granted complete immunity from liability for copyright infringement. To rely on this protection, however, the service provider must designate an agent to receive notifications and comply with the “takedown” procedures of the law. The Register of Copyrights has a directory of these agents available for inspection at www.copyright.gov.
Unfortunately, the definition of ISP in the DMCA is very broad, and has resulted in much litigation. Web “hosts” clearly are ISPs (hosts are companies that provide Internet connectivity to web sites), but the term also has been interpreted to include search engines, auction sites, social media, portals such as newspaper sites, and individual web sites. If the infringing material is on a web site that allows members or subscribers to post material without editing, the ISP can be that web site, not the host of the web site. But if the owner or publisher of the web site posted or edited the infringing material, the correct ISP to notify is the host of the offending web site (and the offending web site owner has no immunity from liability).
Many reputable sites that allow posting of content by members or the public have a “Copyright Policy,” “DMCA Policy” or similar wording listed on the site – usually noted in the site’s footer, it’s “About” link, or its “Terms and Conditions.” If your content is posted on one of these sites, follow the procedure set forth; it should be substantially similar to what I have outlined below. If no procedure is listed, go to “Step 2” below. Beware, however, that some sites list an e-mail address for copyright infringement complaints, but don’t list a formally designated agent, which may not comply with the law. (For example, see the “Copyright Policy” of the popular BitTorrent site “btjunkie” at http://btjunkie.org/?do=copyrights.)
If the offending web site doesn’t list a designated agent, either on the site or with copyright.gov, you’ll need to find out who hosts the site. Follow the steps below.
Step One: Find the Site’s Designated Agent.
Try any of these sites to get the web site’s registration information:
Let’s use the MWA web site as an example. On www.betterwhois.com, I see this:
Domain Name: MYSTERYWRITERS.ORG
Sponsoring Registrar: Network Solutions LLC
Name Server: NS3.WORLDNIC.COM
Name Server: NS4.WORLDNIC.COM
To translate, the domain name mysterywriters.org is registered with Network Solutions. The host is what’s listed after the words “Name Server.” Both servers listed have the name root: worldnic.com, which is the web site of Network Solutions. (In this case Network Solutions is both the site’s registrar and host, but more often the registrar and the host are different.) That’s the way to decode the host’s url: just look for the extension (.com, .net, .org, etc.) and whatever precedes it, ignoring everything up to the first period.
Step Two: Send a Takedown Notice
Your next step is to notify the ISP of the infringement, using what the DMCA calls a “Takedown Notice.” For your notice to be effective, you must:
• send a written notice to the ISP’s designated agent;
• identify the copyrighted work claimed to have been infringed;
• identify the infringing material with specificity (i.e., the exact URL – vague statements that a network has infringing copies of content somewhere on its system are insufficient);
• provide sufficient information so that the service provider can contact you (address, phone number, and e-mail address);
• include a statement that you have a good faith belief that the poster is using the material without authorization from you; and
• sign the notice with a statement that the notice is accurate under penalty of perjury.
Although these elements are a required part of the notification, the law does not require perfection, except with respect to the requirement that notification be in writing (whether an e-mail is sufficient depends on the case law in each federal circuit; when in doubt, follow up with a certified letter).
“Substantial compliance” with the other requirements is adequate. The following form, however, meets these requirements:
|NOTICE OF TAKEDOWN REQUEST PURSUANT TOTITLE II OF THE DIGITAL MILLENNIUM COPYRIGHT ACTTO: [ISP’s designated agent and address]
RE: [web site displaying your work]
1. Identification of Copyright Work Claimed to have been Infringed:
2. Identification of the Infringing Material:
3. Statement of Good Faith Belief:
The undersigned hereby certifies its 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.
I hereby certify under the penalties of perjury that the foregoing is true and accurate, and that I am authorized to act on behalf of the owner of the copyrighted material being infringed.
Now for the good part. Upon receiving your Takedown Notice, the DMCA requires the ISP to: “expeditiously take down or block access to the material,” and many ISPs will do so immediately.
The ISP hosting your content is entitled to respond with a counter notice stating that the content in question is not infringing. This rarely happens unless there is a genuine issue of ownership. The counter notification, like the initial notice, must be given pursuant to the DMCA’s provisions. If the ISP receives an acceptable counter notice from the web site’s subscriber, the ISP must give a copy of the counter notice to you. The ISP will replace the removed or disabled material within 10 to 14 business days following receipt of the counter notice unless it first receives a notice from you that an action seeking a court order to restrain the web site’s subscriber from engaging in infringing activity has been filed.
Step 3: Call in a Lawyer
If you can’t get find a designated agent, can’t get the ISP to take down the material, or want compensation for the infringement, it’s time to consult a lawyer.
You can’t file a copyright infringement lawsuit, however, unless you’ve first registered the copyright with the U.S. Copyright Office. Typically, this would have been done by your publisher (or you) before first publication, but if it hasn’t, you’ll have to do it now.
If your registration occurred before the infringement or within three months of its first publication, you will be entitled to receive attorney’s fees and “statutory damages” – the right to compensation without the need to show economic loss. Your copyright registration date is the date your material and fee arrive at the Copyright Office, regardless of how long it takes them to process the paperwork (currently about six months unless you pay for expedited service).
Most of the time, copyright infringement cases are settled out of court. A publishing lawyer can advise you and send demand letters on your behalf.
It is worth repeating that the Internet is international, and foreign ISPs have no obligation to comply with the DMCA. Many countries have signed international and bilateral copyright treaties giving American authors the right to make infringement claims locally, but court enforcement – especially in Russia and China, the major violators – is difficult, expensive, and often futile. It is this dilemma that the SOPA and PIPA are designed to remedy by giving the federal government the power to shut down U.S. access to offending foreign web sites. As of this writing, however, it is doubtful that either law will pass in its present form. Stay tuned.
©2011 Daniel N. Steven