If users ever post anything on a website you operate, you need to protect yourself from any copyright infringement they commit. And a new rule just enacted by the Copyright Office imposes a few new hoops and hurdles for that protection.
The Copyright Act protects certain website and other online service providers from copyright infringement committed by their users — but only if certain conditions are met. The first condition is that you must designate an agent to receive notices of infringement from copyright owners. That’s the requirement that just got a little bit harder.
After the online service provider protection was enacted in 1998 (as section 512 of the Digital Millennium Copyright Act (DMCA)), the Copyright office created a one-page form for designating agents. Those completed forms were then posted on the Copyright Office website, so that copyright owners could readily determine who to alert when they discovered infringing material. Once filed, agent designations remained active indefinitely.
But last month, in a new rule, the Copyright Office changed its procedures. The old one-page forms are out, replaced with electronic filings. Most importantly, the new filings must be renewed every three years. That raises the possibility, if not the likelihood, of some lapsed filings. And without an active and renewed agent designation, DMCA protections are lost.
Companies whose websites never include more than their own content don’t need to worry about this issue. But companies with interactive websites that allow user postings, even only occasionally, absolutely should take notice of the new rule. Those user postings could be as simple as reader comments on a news website; photos posted on a social media service; or user-submitted notes, photos, ideas, or recipes on a consumer-products company website.
Protection under section 512 of the DMCA is essential for any website that permits user postings. Without DMCA protection, those user postings could expose the website operator to significant copyright liability under a contributory infringement theory. Congress enacted the DMCA to overcome this potential liability.
But section 512 amounted to a compromise between Internet intermediaries (who want to be immune from liability for their users’ infringement) and copyright owners (who want to have recourse for any infringement). So section 512 imposes several requirements on intermediaries who want the protection. First, they must have a registered agent. Next, they must follow a statutory notice-and-takedown regime when they receive a copyright owner’s notice of infringement. Finally, they must police their users and prevent systematic infringement.
As the first step in the process, the agent registration looms large. Even some major players have been tripped up and lost their immunity for failing to have an agent designation on file.
While in the past one filing took care of things for all time, website operators will now need to take care to renew their registrations regularly. The Copyright Office said the renewals are necessary to weed out expired designations and keep its lists current.
The old paper filings will remain effective through the end of 2017. Between now and then, new electronic filings are currently being accepted (though some initial reports indicate that the Copyright Office’s procedures for the new filings are cumbersome and need to be streamlined).
Operators of websites that allow — or may allow in the future — user postings of any kind should take care to electronically register their DMCA agent, and institute proper reminder procedures so that they process the required renewal filings in the future.
Mark Sableman, Jennifer Visintine, Tom Polcyn, and Mike Nepple are attorneys in Thompson Coburn’s Intellectual Property group.