TechLaw

It used to be that sending a take-down notice to an ISP was a fairly routine exercise, with little downside for the copyright owner. ISPs usually complied without much fuss, more concerned with preserving their safe harbor status under the DMCA than losing an angry infringer as a customer.

But take-down notices are becoming a riskier proposition these days, at least for copyright owners asserting inaccurate or highly improbable infringement claims.

Blame (or thank, depending upon your perspective) the EFF. The civil rights group has quite effectively exploited a provision in the DMCA that imposes liability upon copyright owners who "knowingly materially misrepresent" their claim of infringement in the course of invoking the take-down procedure. 15 U.S.C. 512(f).

The latest example of this is the dispute between an ABC affiliate radio station in San Francisco and a blogger who goes by the handle, Spocko. His blog included audio clip excerpts of broadcasts from KSFO-AM, which he used to criticize the indecent language used by the talk show hosts. ABC sent a take-down notice to the blogger's service provider, alleging that Spocko's "flagrant use of KSFO's material is a clear violation of KSFO's copyright." The service provider shut down the blog.

EFF got involved and, in a Jan. 25 letter, responded to the allegations, characterizing them as "false" and saying that the usage falls squarely within the bounds of fair use. "Far from being grounded in law, ABC/KSFO's complaints amount to nothing more than an attempt to silence an effective critic," said the EFF, adding that "further misrepresentation aimed at Spocko's protected speech online may subject KSFO and ABC to liability under 17 USC 512(f) . . . ."

It is a strategy that has worked before for EFF, most notably in Online Policy Group v. Diebold Inc., 337 F. Supp. 2d 1195 (N.D. Cal. 2004) (take-down notice directed to material that was clearly not copyrightable supports award of damages, attorneys' fees under Section 512(f)).

The prospect of section 512(f) damages may have influenced settlements in at least two other lawsuits, Marvel Enter. Inc. v. NCSoft Corp., 74  USPQ2d 1303 (C.D. Cal. 2005) (settled within a few months after court refused to dismiss defendant's Section 512(f) counterclaim for false notification) and Kopp v. Vivendi Universal Games, No. 06-01767 (C.D. Cal. complaint filed March 23, 2006) (video game publisher dropped allegations of infringement and declined to block further sales of unauthorized strategy book after accused infringer files declaratory judgment action asserting violation of Section 512(f)).

By their nature, cease and desist letters are often rife with bluster and bravado. But when that language is tied to a take-down notice, it can expose the copyright owner to a palpable risk of damages where the infringement claim has little substance to it.