united-states copyright intellectual-property dmca
How does the Supreme Court ruling in *Fourth Estate* not undermine the DMCA&#39;s notice-and-takedown process?
<p>The Supreme Court recently ruled in <a href="https://en.wikipedia.org/wiki/Fourth_Estate_Public_Benefit_Corp._v._Wall-Street.com" rel="nofollow noreferrer"><em>Fourth Estate v. Wall-Street.com</em></a> that copyright registration occurs (and thus an infringement action can be brought) only after the Copyright Office takes action and registers, or declines to register, the copyright at issue.</p>

<p>How does this not undermine the DMCA's notice-and-takedown process?</p>

<p>For example, if a web news media outlet were to upload a copyright-eligible breaking news video to YouTube and the next day discover that their video had been re-uploaded on another platform, the usual go-to option for recourse is to file a DMCA notification of claimed infringement. </p>

<p>The alleged infringer may in turn respond by filing a counter-notification, to which the claimant must then respond by either (a) doing nothing, or (b) <em>filing suit within fourteen days</em>.</p>

<p>How is that latter option still available in light of the court’s ruling in <em>Fourth Estate</em>?</p>

<p><em>I know that preregistration is one option. It's not a financially viable solution, though, and almost no one uses it.</em></p>

<p>This will indeed mean that when a person claiming copyright ownership has filed a DMCA takedown notice, and the alleged infringer has filed a counter-notice, the claimed copyright owner will be unable to file a suit within 14 days unless the copyright was already registered, except in those cases where the author is not a US national, in which case the requirement for registration does not apply.</p>
<p>Of course, the US Congress could amend DMCA to change the takedown procedure after a counter-notice.</p>
<p>However, it should be noted that counter-notices are much less frequent than are take-down notices, and that suits are filed within 14 days in only a small fraction of counter-notice cases. It should also be noted that an ISP or other hosting provider is not <strong>required</strong> to restore the content after a counter-notice if suit is not filed within 14 days. The only consequence for not restoring the content in such a case is that the provider loses its shield against liability for removing content. If the poster can show damage, and can also show an obligation to host the content, s/he could sue the provider for failing to  restore the content. But in the common case where the provider has no duty to host any particular content, or has reserved the right to take down any content at any time for any reason, there would be no liability, and so no penalty for failing to restore content. In practice, only where a provider is required by a contract to host the content is a suit plausible, and then only if the poster can show damage from the content being taken down. So in practice, there may well be little change.</p>
<p>The <a href="https://en.wikipedia.org/wiki/Fourth_Estate_Public_Benefit_Corp._v._Wall-Street.com" rel="nofollow noreferrer">Wikipedia article on the case</a> says:</p>
<blockquote>
<p>Others have observed that the practical effect is minimal, since although the turnaround time for a registration with the Copyright Office can be months at a time, the Office offers an $800 expedited review process for cases with &quot;compelling needs&quot; like upcoming lawsuits, and offers preregistration for categories of works more likely to be infringed. Moreover, plaintiffs can recover for any losses accrued from infringement, even while waiting for the examination to be complete.</p>
<p>The decision applies only to filing copyright litigation, and does not apply to other forms of enforcement, such as sending demand letters or issuing DMCA Section 512 takedown notices.</p>
</blockquote>
<p>In <a href="https://www.scotusblog.com/2019/03/opinion-analysis-a-copyright-owner-cant-sue-for-infringement-before-the-register-has-processed-its-copyright-registration-application/" rel="nofollow noreferrer">an article about the case</a> posted on scotusblog.com, Jessica Litman says:</p>
<blockquote>
<p>The opinion resolves a longstanding circuit split, but the practical implications may be modest. The decision may encourage some copyright owners to register their claims promptly, may reduce forum shopping, may delay some infringement suits for several months and may deter plaintiffs from including peripheral copyright infringement claims in suits over other disputes in order to brandish the threat of large copyright damage awards.</p>
</blockquote>

<p>That media outlet's upload isn't "eligible for copyright", it is copyrighted, whether copyright is registered or not. </p>

<p>The DMCA has two purposes: To allow websites to operates safely and not suffer for copyright infringement of their users, as long as the website plays by the rules. And to allow copyright holders to cope with casual copyright infringers with a minimum of fuss and cost. And that works. The DMCA doesn't work and isn't intended to work against persistent offenders, that's where you have to sue for copyright infringement. </p>

<p>We have a persistent copyright infringer here. DMCA doesn't let you remove their upload from the website, but you can still sue for copyright infringement. </p>

<p>And that infringer is in trouble: "Penalties are provided for knowing material misrepresentations in either a notice or a counter notice. Any person who knowingly materially misrepresents that material is infringing, or that it was removed or blocked through mistake or misidentification, is liable for any resulting damages (including costs and attorneys’ fees) incurred by the alleged infringer, the copyright owner or its licensee, or the service provider. (Section 512(f))"</p>

<p>It's really not a good idea for a copyright infringer to submit a DMCA counter notice with false claims. </p>
