united-states copyright creative-commons dmca
Can the original copyright holder issue DMCA takedown requests on infringements of second-order derivative works?
<p>Consider this scenario:</p>
<blockquote>
<p>Alice publishes a work A under CC-BY-SA-3.0.</p>
<p>Bob makes a derivative work B from A, and publishes it under CC-BY-SA-3.0.</p>
<p>Charles makes another derivative work C from B, and publishes under CC-BY-SA-3.0.</p>
<p>A and C don't share any content, or resemble each other in any way.</p>
</blockquote>
<p>If some third party infringes on the license for A, it's clear that Alice has standing to issue DMCA takedown requests for material that infringes on A. However, it's unclear whether Alice can do the same for B or C.</p>
<p>If some third party infringes on work B or on work C, does Alice have standing to issue a DMCA takedown request against the infringing use in each case?</p>

<p>You have the cart before the horse here, tiger. Copyright holders do not enforce licence terms, they sue for breach of copyright. </p>

<p>Copyright works that have been used with permission (which is what a licence is)are not breaches of copyright. Those that have not been used with permission are breaches.</p>

<p>If C's work does not contain any of A's copyright material (either original or derivative work) then A has no grounds to sue for breach - the licence is immaterial.</p>

<p>To issue a DMCA take down notice, A must state:</p>

<ul>
<li>That the notice is filed in good faith </li>
<li>That all information in the
notice is accurate </li>
<li>That under penalty of perjury, the originator is
entitled to act on behalf of someone who owns an exclusive right —
that is, a copyright — currently being violated.</li>
</ul>

<p>If A has a good faith belief that C is violating their copyright, they can issue the notice. The fact that C has cited A as a source (even if they actually aren't) is probably enough to support such a belief.</p>

<p>Since DMCA takedown is not a court process, the question of “standing” is not relevant. Anyone “can” submit such a notice, the relevant issues would be (a) will it achieve the desired effect of takedown and (b) will there be legal repercussions for submitting the notice?</p>

<p>The basic logic of the DMCA is that a person submits a notice; the ISP takes the material down expeditiously and notifies the uploader; the uploader may file a counter-notice; if he does, the ISP waits for a couple of weeks and puts the material back up if the complainer does not file suit. It is not guaranteed that an ISP will take material down when they receive notice: there is no provision under the law that the ISP should or may evaluate the believability of the notice. Assuming well-informed and law-abiding practices by the ISP, the notice should be effective in causing the material to be removed, as long as the notice satisfies the formal requirements. (The infringement suit, if there is one, will be dismissed).</p>

<p>There may be repercussions for Alice filing such a notice. Germane parts of the law are <a href="https://www.law.cornell.edu/uscode/text/17/512" rel="nofollow noreferrer">17 USC 512 (c)(3)(A)</a>, that the notice must have the following</p>

<blockquote>
  <p>(i) A physical or electronic signature of a person authorized to act
  on behalf of the owner of an exclusive right that is allegedly
  infringed…</p>
  
  <p>(v) A statement that the complaining party has a [b]good faith
  belief[/b] that use of the material in the manner complained of is not
  authorized by the copyright owner, its agent, or the law</p>
  
  <p>(vi) A statement that the information in the notification is accurate,
  and under penalty of perjury, that the complaining party is authorized
  to act on behalf of the owner of an exclusive right that is allegedly
  infringed.</p>
</blockquote>

<p>We would have to see the words of the notice Alice filed, to see what laws might have been violated.</p>

<p><a href="https://www.law.cornell.edu/uscode/text/18/1621" rel="nofollow noreferrer">18 USC 1621</a> criminalizes perjury as follows:</p>

<blockquote>
  <p>Whoever—(1) having taken an oath before a competent tribunal, officer,
  or person, in any case in which a law of the United States authorizes
  an oath to be administered, that he will testify, declare, depose, or
  certify truly, or that any written testimony, declaration, deposition,
  or certificate by him subscribed, is true, willfully and contrary to
  such oath states or subscribes any material matter which he does not
  believe to be true; or (2) in any declaration, certificate,
  verification, or statement under penalty of perjury as permitted under
  section 1746 of title 28, United States Code, willfully subscribes as
  true any material matter which he does not believe to be true;</p>
  
  <p>is guilty of perjury</p>
</blockquote>

<p>The law of perjury is narrowly construed in the US, so to secure a perjury conviction, the government would have to establish that the person did not believe the literal words of the  statement. Being mistaken, even if the error is due to egregious ignorance of or disregard for case law, does not support a perjury conviction. Other facts could, however, support the charge if they establish that Alice did not believe her statement (about being authorized to act). If the statement were “I have written authorization from Z, the author of work X, to act on his behalf”, that is likely to result in a perjury conviction. But one might actually (though incorrectly) believe that one had such authorization e.g. due to being the original author, so some statements might not be perjury. </p>

<p>Another consequence is via 17 USC 512 (f) which states:</p>

<blockquote>
  <p>Any person who knowingly materially misrepresents under this section— </p>
  
  <p>(1) that material or activity is infringing…</p>
  
  <p>shall be liable for any damages, including costs and attorneys’ fees,
  incurred by the alleged infringer, by any copyright owner or copyright
  owner’s authorized licensee, or by a service provider, who is injured
  by such misrepresentation, as the result of the service provider
  relying upon such misrepresentation in removing or disabling access to
  the material or activity claimed to be infringing, or in replacing the
  removed material or ceasing to disable access to it.</p>
</blockquote>

<p>On the face of it, there is no penalty for being wrong about your beliefs. An important case (the first case) regarding 512(f) is  <a href="https://www.courtlistener.com/opinion/2470092/online-policy-group-v-diebold-inc/" rel="nofollow noreferrer">Online Policy Group v. Diebold, Inc.</a>, 337 F. Supp. 2d 1195. In this case, students published internal emails from Diebold (and did so for political reasons): Diebold filed a DMCA takedown notice. The students sued under 512(f), alleging a violation based on the fact that their copying was fair use. An important question is what it means to “knowingly materially misrepresent”. The court found that</p>

<blockquote>
  <p>A party is liable if it "knowingly" and "materially" misrepresents
  that copyright infringement has occurred. "Knowingly" means that a
  party actually knew, should have known if it acted with reasonable
  care or diligence, or would have had no substantial doubt had it been
  acting in good faith, that it was making misrepresentations.</p>
</blockquote>

<p>The court’s further found that about Diebold “should have known” that they misrepresented the existence of infringement. The court stated that</p>

<blockquote>
  <p>No reasonable copyright holder could have believed that the portions
  of the email archive discussing possible technical problems with
  Diebold's voting machines were protected by copyright</p>
</blockquote>

<p>The court does not explain <em>why</em> no reasonable copyright holder could believe that there was infringement, but as outsiders, we can guess it is that Diebold engaged lawyers who advised them that the copying was allowed under fair use. The  reasonable care and diligence standard would make mistakes harder to get away with. But 512(f) is not about misrepresentation in general, it is specifically about misrepresentation of infringement. At least so far, the courts have not held that 512(f) extends to <em>any</em> incorrect statement that a careful person would have avoided (such as, whether they are likely to succeed in an infringement suit).</p>

<p>Only if the copyright owner has given Alice approval to act as agent specifically.  Copyright is an 'exclusive' right by definition, and only the owner(s), and or agents of, may act as such.  "is entitled to act on behalf of," means legally under a binding agreement to act in the stead of, not "just because I know it is so I'm entitled". </p>

<p>Well-crafted agreement is necessary too, as courts have ruled against (for example) literary agents and publishers who've pursued action against infringers on content that the publisher manages but does not have any actual ownership in the copyright. Standard business engagement contract lacked specificity on the issue, so publisher has no grounds to bring  action.  Case is thrown out.  Most recent I think was Norton.</p>

<p>Alice needs to tell B and C and they can then decide what they would like to do.  Third party work does not contain any of Alice's copyright material, then Alice has no grounds - the licence is immaterial.</p>

<p>You can issue a DMCA takedown notice if you hold a copyright (or are authorized by the copyright holder) to a work and have a good faith belief that the work you are seeking to take down is infringing that copyright.</p>

<p>In your hypothetical, Alice only holds copyright to A. So the question is whether Alice would have a good faith belief that this party was infringing her copyright to A. If so, she can send a DMCA takedown notice. If not, she can't.</p>

<p>Since the assumption is that the use of C infringes its license and the two licenses are the same, there is no defense that the alleged infringer has a license. So it just comes down to whether the use violates the copyright in A.</p>

<p>The key test here is whether the work that they are copying or distributing contains sufficient protectable expression from A that a license from Alice would be required to copy or distribute it.</p>

<p>Your hypothetical says "A and C don't share any content, or resemble each other in any way." In that case, Alice couldn't form a good faith belief that the work she wants to takedown contains sufficient protectable expression that she holds copyright to, since the work does not resemble hers in any way.</p>

<p>Therefore, no.</p>

<p>One possible exception is if Alice somehow was mislead about the contents of the work. She could, I suppose, in good faith wind up believing that the works are similar even though they aren't. But she must somehow come to the good faith belief that the work contains sufficient protectable expression she holds copyright to, even though it doesn't.</p>

<p>Of course, if she does file a DMCA takedown notice, the alleged infringer could counter-notice that Alice does not hold copyright to sufficient protectable expression in the allegedly infringing work. Alice would then no longer have a good faith belief that her cppyright was violated and the work would be restrored.</p>
