Tag Archives: Copyright (c) 2010 by Christina D. Frangiosa All Rights Reserved.

Copyright Cleanup Bill Clears Congress for Signature by Pres. Obama

by Christina Frangiosa


The Copyright Cleanup, Clarification, and Corrections Act of 2010 (S. 3689), proposed by Sen. Leahy to make certain technical amendments to both copyright and trademark law, cleared both chambers of Congress and was sent to the White House on November 19, 2010 for review and signature. The final bill, as enrolled, can be found here.

Easily missed in this Bill is a provision modifying the Trademark Technical Amendments Act (“TTAA,” now Pub. L. No. 111-146), and in particular, the study that the Department of Commerce is obligated to perform relating to trademark misuse. The TTAA currently requires the Department to study:

1.”the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;” and
2.”the best use of Federal Government services to protect trademarks and prevent counterfeiting.”

Pub. L. No. 111-146 § 4(a). The modification in S. 3689 states, “(h) TRADEMARK TECHNICAL AMENDMENTS ACT.—Section 4(a)(1) of Public Law 111–146 is amended by striking ”by corporations attempting” and inserting ”the purpose of which is”.”

In my initial blog posting about this Bill, I had posited that Congress would not reach S. 3689 because it had been proposed so late in the session. Pundits have argued that the remaining term of this Congress would be spent drafting and passing a budget, since one had not been proposed to date. However, it appears that this amendment may be enacted before the new year. The impact of this amendment, in fact, may be minimal because the mandated study has already begun, with comments due to the USTPO before January 7, 2011.

USPTO Seeks Comments on Potential Trademark Misuse

by Christina Frangiosa


The US Patent and Trademark Office (USPTO) has posted a request for public comment “regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. The USPTO also is eliciting suggestions to address any allegedly problematic litigation tactics.” Comments are due by January 7, 2011 and the details of what to address in the comments can be found in the USPTO’s request.

This study is mandated by the Trademark Technical and Conforming Amendment Act of 2010 (see below).

Statutory Background

The Trademark Technical and Conforming Amendment Act of 2010 (Pub. L. No. 111-146) was signed into law on March 17, 2010, and generally addresses technical amendments to the Trademark Act. However, buried at the end of the law (initially proposed as HR 4515 and S 2968), is a provision requiring that the Secretary of Commerce should undertake a study to determine:

  1. “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner;” and
  2. “the best use of Federal Government services to protect trademarks and prevent counterfeiting.”

Pub. L. No. 111-146 § 4(a). The study is due within one year after the enactment of the Bill – thus placing the deadline no later than March 17, 2011.

During the debates in the Senate in early March, both Senators Coble and Johnson conceded that Section 4 (where this “study” language appears) needed work, but that the remainder of the Bill was so important that it should pass without amendment to avoid the delay of returning an amended Bill to the House for approval. (For background on legislative procedure and how Bills get enacted, see What Does the House Do? and How Does a Senate Bill Become Law?.)

Senators Coble and Johnson also explained that Senator Leahy (who had proposed S. 2968) had agreed to “improve the language” in a subsequent bill.

SEN. JOHNSON:  “However, the bill is not perfect. It includes a study provision regarding alleged trademark lawsuit abuse and small businesses. While we don’t want to delay the necessary relief to the trademark owner that this bill will provide by immediate passage of S. 2968, the ranking member and I are committed to working with Senator Leahy to refine the text of this study provision at our soonest opportunity.” 111 Cong. Rec. at H1081 (Mar. 3, 2010).

SEN. COBLE: “[T]he legislation includes a study provision that was inserted at the behest of the other body. It directs the Intellectual Property Enforcement Coordinator and the Department of Commerce to evaluate and report on treatment of smaller businesses involved in litigation. Along with Chairman Conyers and the chairman of the subcommittee, the distinguished gentleman from Georgia, I believe the study text could be clarified further.  I’m happy to report that Senator Leahy has agreed to work with us on making the necessary minor revisions to improve the language.  We intend to move this language at a later date on a different vehicle.  We just don’t want to delay further consideration of S. 2968 by requiring the other body to pass the bill for a second time.”  111 Cong. Rec. at H1081 (Mar. 3, 2010).

Indeed, Senator Leahy introduced an amendment contained within a separate bill, the “Copyright Cleanup, Clarification and Corrections Act of 2010” (S. 3689, proposed on August 2, 2010). This Bill passed the Senate and was referred to the House Budget Committee and the House Judiciary Committee before Congress when on recess. This Bill changes the focuses to “the extent to which small businesses may be harmed by litigation tactics by corporations attempting the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” (Former language crossed out; new language in bold and italics).

While the Congress may return from its current recess after the elections in order to pass a budget or appropriations measure, this Bill may not progress further before the end of the Congressional term. If that is the case, then it would need to be re-proposed in January before it can be adopted.

Comments Requested by the USPTO

In the meantime, in the absence of “improved language,” the Department of Commerce (and in particular, the USPTO) is now undertaking this study and has requested public comment, due by January 7, 2011. In particular, the USPTO has requested comment about the following topics:

. . . Although the USPTO would find it most beneficial to receive responses to every item, you may answer all or any portion of the following questions.

1.  Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles.  Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.

2.  In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.
3.  Please describe situations where you have been involved in receiving a cease-and-desist letter.  Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.

4.  Please describe situations where you have been involved in trademark litigation in state or federal courts.   Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s).  Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys’ fees) against the small business, requiring the plaintiff to pay the defendant’s attorneys’ fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).

5.  Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners.  Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition.  Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board (“TTAB”) refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.

6.  Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?

7.  Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?

8.  Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should the USPTO do?

9.  Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies?  If yes, what should the U.S. courts do?

10.  What other U.S. agencies may have a responsibility to do something about the problem?

11.  Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying?   If yes, what should Congress do?

12.  Please provide any other comments you may have.

*****
[1] A trademark “bully” could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.

Note that this study still contemplates a focus on small businesses and promises to examine whether they are disproportionately affected by trademark owners’ enforcement activities. If the USPTO posts any of the comments it receives, I’ll try to post updates here for anything of particular interest.

Have We Lawyers Genericized “Bates” Numbers?

by Christina Frangiosa


We lawyers are enamored with the phrase “Bates numbers” – however, even if “enamored” is too exaggerated, you must agree that lawyers use that phrase a lot, especially when talking about documents produced during litigation. It generally refers to the sequential numbering applied to documents exchanged between parties during a lawsuit. See generally, “Bates numbering” on Wikipedia; see also Masters, “Acrobat, The Solo and Small Firm Litigation Tool,” ABA’s GP Solo Magazine, June 2010, ¶¶ 10-13.

So, if one party produces documents to another during litigation, every page of those documents probably bears a unique, sequential number to enable consistent and uniform identification of a particular document referenced during the lawsuit. For instance, if Defendant produces a five-page memo bearing a 2005 date, the lawyers for both parties would argue about whether it should be characterized as the “2005 memo” or the “2005 admission that Defendant was negligent.” A far less argumentative way to identify that document accurately is by its sequential page number (a.k.a. the “Bates” number). Thus, both parties can agree that the document is D1234-D1239 and then move on to their substantive arguments.

How did these page numbers start being referred to as “Bates” numbers – and why do lawyers still call them that? I don’t claim to have all of the answers on this point, but after some digging, here’s what I’ve found:

In the late 1890s, the US Patent Office issued several patents to an individual inventor who later assigned them to the Bates Manufacturing Company for various devices that enabled the sequential numbering of paper. For example, you can find the following patent files through the U.S. Patent & Trademark Office:

  • U.S. Patent No. 484,389 for a consecutive-numbering machine, issued in 1892 to Edwin G. Bates
  • U.S. Patent No. 676,084 for an automatic numbering machine, issued in 1900 to Edwin G. Bates
  • U.S. Patent No. 676,082 for an automatic numbering machine, issued in 1901 to Edwin G. Bates

Note however, that some more recent patents refer to methods of assigning “Bates numbers” in a specific way and were issued to others:

  • U.S. Patent No. 5,960,448 issued in 1999 and assigned to Legal Video Services Inc.
  • U.S. Patent No. 7,103,602 issued in 2006 and assigned to Kroll Ontrack

Even though the patents have long since expired (patents are not valid forever), the trademarks remain valid, at least in connection with numbering machines.

The Bates Manufacturing Company also applied for – and was issued – registration of its trademark BATES (stylized) claiming a date of first use since 1891 for “numbering machines” in Class 09 (Reg. No. 158,174, renewed in 2002) and in Class 07 (Reg. No. 269,975, renewed in 2010). In fact, you can order one of these devices, which still bears this trademark, from sites like Amazon.com. (Note that Class 09 is also the class in which marks associated with software programs tend to be registered.) The company also owned trademark registrations in BATES for other products like ink pads and stapling supplies.

However, it appears that these trademarks may be of limited value because in undertaking the research for this article, I found many sites marketing software versions of “bates numbering” programs (e.g., http://www.bates-stamp.com/), or offering to sell their services to manage the “bates numbering” process for litigants (e.g., http://lsilegal.com/web/Solutions/TraditionalSvcs.aspx). It appears that the mark “Bates” as applied to automatic numbering systems may have become generic for a system of automatically applying sequential numbers to documents.

In this case, the trademark owner consistently applied its graphic label (which seems to be branded onto a metal plate) to the stampers themselves, by affixing it mechanically. Even today, the stampers seem to bear this label. (See e.g., the image of a stamping machine bearing the mark – click on “specimen” after reaching the Case File – as submitted to the U.S. Trademark Office in 2010 in support of an affidavit of continuing use). But, it apparently did not protect the mark (or the mark has lost its trademark value) in connection with sequential numbering systems or services to apply these types of numbers to documents, either in hard-copy or electronic form.

The lesson to be drawn from this – when you create a unique name for a product (or service) and begin to use it in commerce in connection with that product (or service), plan ahead for the possibility that the technology in which you began using the mark will evolve into something new. At the very least, recognize that as your industry matures, your trademarks may change, even if the products or services themselves remain the same as they were when they were first introduced. While it may be wonderful when your brand name becomes a household (or lawfirm-wide) word, mark owners need to police the use of their marks to keep the their value from being undermined.

Being vigilant means a mark can last forever. History is replete with examples of brand names that were not protected adequately by their owners and now are generic to identify products of that type. For example, Bayer failed to protect the name “aspirin” in the U.S., so anyone can use the mark “aspirin” in connection with their own brand of that medication in the U.S. without violating Bayer’s trademark rights. Bayer has successfully protected “ASPIRIN” worldwide (e.g., Canada, Reg. No. NFLD761, where the mark was registered in 1919) and it remains the exclusive property of Bayer.

Awards of Attorney Fees in Copyright Infringement Cases Are Justified for “Vexatious Conduct” by Attorney

by Christina Frangiosa


In FM Industries, Inc. v. Citicorp Credit Services, Inc., the U.S. Court of Appeals for the Seventh Circuit (“Seventh Circuit”) affirmed an award of attorneys’ fees to a prevailing defendant in a copyright infringement action, explaining that plaintiff’s attorney’s conduct was “vexatious,” “amateurish and absurd”. FM Indus., Inc. v. Citicorp Credit Svcs., Inc., No. 08-3184, 2010 U.S. App. LEXIS 15057 at *4, *13 (7th Cir. July 22, 2010). Written by Chief Judge Easterbrook, this is a colorful opinion that richly deserves reading (as his opinions usually are).

Prevailing parties (whether plaintiffs or defendants) in copyright infringement actions can be awarded attorneys’ fees pursuant to 17 U.S.C. § 505 (“the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs”). The Seventh Circuit explained that this provision “vindicates the public’s interest in the use of intellectual property” and that in the absence of such a provision, prevailing defendants would have “only losses to show for the litigation.” FM Indus., 2010 U.S. App. LEXIS 15057 at *12.

In this case, after the district court dismissed all of plaintiff’s claims for failure to prosecute, the court ordered plaintiff to pay attorneys’ fees of $750,000 to defendant pursuant to 17 U.S.C. § 505. The court also ruled that plaintiff’s counsel (Wayne D. Rhine) “vexatiously multiplied the proceedings and is liable for attorneys’ fees under 28 U.S.C. § 1927.” The court concluded that another lawyer, William T. McGrath (“a copyright specialist who Rhine engaged to assist him”) was jointly and severally liable for the attorneys’ fees awarded under § 1927. The total award, for which the two attorneys were jointly and severally liable, was $35,000 (“because the district judge deemed only a subset of the filings sanctionable under § 1927). The court made a separate award against Rhine for $2,694 (although the Seventh Circuit did not explain why).

The Seventh Circuit affirmed all of the attorney’s fee awards except for one: the joint and several liability award against McGrath, concluding that McGrath’s only sanctionable conduct was “making the mistake of agreeing to help a careless lawyer (Rhine) who put his name to frivolous and malicious documents drafted by a self-interested layman [the client], and then not reviewing all of the documents that [the client] prepared for Rhine’s signature.” Id. at *15.

The Seventh Circuit explained that liability under § 1927 is direct, not vicarious (Id.), and nothing required one attorney to take responsibility for another attorney’s filings in the same case. “Section 1927 does not require every lawyer who files an appearance to review and vet every paper filed by every other lawyer. Neither the text of § 1927, nor any decision of which we are aware, imposes on any lawyer a duty to supervise or correct another lawyer’s work.” Id. at *15-*16. As a result, the Seventh Circuit reversed the district court’s award of sanctions against McGrath.  Id. (“We appreciate that the judge was disgusted by the behavior of FM Industries and its counsel, but personal responsibility remains essential to an award of sanctions under § 1927.”).

Summarized below is the conduct that the Seventh Circuit cited in its opinion as supporting the various awards of attorneys’ fees in this case (“There is more, but extending this recitation would not serve much purpose” Id. at *12.):

Problems with the Complaint

  • The client’s (plaintiff’s) repeated demands for $15 billion in statutory damages (notwithstanding the statute’s limitation of $150,000 in statutory damages per copyrighted work (not per use of a copy). Rhine argued that the figure $15 billion never appeared in plaintiff’s papers. Labeling these arguments as “quibbles,” the Seventh Circuit noted that “A complaint that demands $150,000 (the statutory cap) times 100,000 (the complaint’s estimate of the number of times computers copied the software into random access memory) is demanding $15 billion. Even lawyers can multiply two numbers.” Id. at *13 (emphasis added). It seems the Seventh Circuit has a sense of humor.
  • Plaintiff also sought a separate item of damage of $7.2 million (“$150,000 times 48, the number of outside law firms that used the software” at issue in this case), which was “no more tenable than $15 billion.” Id.
  • Plaintiff also sought $ 235 million in actual damages – which plaintiff never attempted to prove. Id.

Problems with Litigation Conduct

  • The Seventh Circuit called plaintiff’s litigation tactics “extortionate” – including the subpoenaing of several law firms who were not parties to the suit, but completely ignoring the requirements of Fed. R. Civ. P. 45 (regulating the manner and extent of discovery to be sought from non-parties), and thus causing the recipients to engage in expensive efforts to respond to improperly served subpoenas. On top of that, plaintiff failed to serve proper subpoenas after being informed of the deficiencies. The Seventh Circuit labeled these efforts as “extortionate discovery, the kind a litigant undertakes when it hopes to be paid to go away.” Id. at *12.
  • Filing motions for sanctions against defendants when they missed one discovery deadline, by a single day, seeking sanctions in the amount of $ 815 million. “The defendants and district judge were not amused, but defendants had to devote substantial time (and thus expense) to responding, because if the judge were prepared to award even a tiny fraction of the request the outlay would be considerable.” Id. at *10.
  • Attempting to “force” the current and former chairs of Citigroup’s board of directors to appear for deposition “even though they had nothing to do with Citigroup’s use of [the software at issue], is further evidence that FM Industries and its lawyers were engaged in the abuse of legal process.

One of the particularly notable points the Seventh Circuit made was that Rhine had only recently returned to private practice (in 2006) after 24 years as a judge of the Circuit Court of Cook County, Illinois (which I understand to be the trial level in Illinois state court). With regard to his handling of this case, the Seventh Circuit admonished, “The problem here, and in much else that went wrong with this case, is that Rhine allowed Friedman [the client], a non-lawyer, to draft many of the papers that were filed over Rhine’s name. Rhine insists that he did not simply rent out his law license but instead reviewed and edited the documents before filing them. We accept that representation, but it also means that Rhine, who resumed legal practice in 2006 after 24 years as a judge . . . bears the responsibility for amateurish and absurd filings.” Id. at *4.

The take away? If you permit your clients to prepare the first draft of any pleading – especially where they may be inspired to vent their spleens on their opponents – be sure to really edit the result to ensure that what is ultimately filed is professional, meritorious, respectful and complies with the applicable rules of civil procedure. Ultimately, the attorney must take full responsibility for the accuracy and propriety of any filing that bears his or her signature. Such responsibility cannot be abdicated to the client, even though the client may ultimately have to pay the sanctions.

ISPs Are Not Required to Search Independently for Potential Infringement

by Christina Frangiosa

Recently, the Southern District of New York confirmed that a copyright owner bears the sole responsibility for searching the marketplace for evidence of piracy or infringement of its works. In Viacom Int’l v. YouTube, Inc., the court explained that as long as an Internet Service Provider (“ISP”) such as YouTube complied with the notice and take down requirements of the Copyright Act (specifically the Digital Millennium Copyright Act, or “DMCA”), it could not be held liable for failing to proactively search for content on its site that might infringe copyrights owned by others. Viacom Int’l v. YouTube, Inc., No. 07 Civ. 2103, 2010 U.S. Dist. LEXIS 62829 (S.D.N.Y. June 23, 2010) (available on Justia.com).

Both parties moved for summary judgment. YouTube argued that the safe harbor of 17 U.S.C. § 512(c) protected it from liability for others’ infringing acts. Id. at *8-*9. In turn, Viacom argued that YouTube was liable for intentional infringement of thousands of Viacom’s copyrighted works and was not protected by the DMCA’s safe harbor rules because 1) it had actual knowledge of the infringement and failed to stop it, 2) YouTube benefited financially from the infringement because of the increased traffic to YouTube’s site; and 3) the safe harbor protected those ISPs that only provided storage at the direction of the user. Id.

The court was persuaded that the safe harbor applied and found that the phrases “actual knowledge that the material or an activity using the material on the system or network is infringing” and “facts or circumstances from which infringing activity is apparent” as used in § 512(c) meant “actual or constructive knowledge of specific and identifiable infringements of individual items” and not “general awareness that there are infringements (here, claimed to be widespread and common).” Id. at *15-*16. Ultimately, the court granted YouTube’s motion for summary judgment on the basis of the § 512(c) safe harbor and denied all of Viacom’s claims that YouTube was liable for direct and secondary copyright infringement. Id. at *45.

In this case, Viacom collected approximately 100,000 videos from YouTube that it claimed to be infringing and sent a single “mass take-down notice” listing each one. Id. at *30-*31. By the following business day, YouTube had removed “nearly all” of the videos identified in the notice. Id. at *31. YouTube’s prompt response was apparently key to the court’s holding. Id. at *37-*38. (YouTube’s current copyright policy (which relies on the § 512(c) safe harbor) can be found here.) Perhaps the court was also persuaded by the potentially daunting task facing an ISP that had “over 24 hours of new video-viewing time . . . uploaded to the YouTube website every minute” if it were required to search proactively for content that potentially infringed others’ rights. Id. at *14.

The court evaluated the legislative history of the DMCA and focused on its articulation of a “red-flag” test: “[A] service provider need not monitor its service or affirmatively seek facts indicating infringing activity (except to the extent consistent with a standard technical measure complying with subsection (h)), in order to claim this limitation on liability (or, indeed any other limitation provided by the legislation). However, if the service provider becomes aware of a ‘red flag’ from which infringing activity is apparent, it will lose the limitation of liability if it takes no action.” Id. at *20 (quoting Senate Judiciary Comm. Report, S. Rep. No. 105-190 at 44-45 (1998); House Comm. on Commerce Report, H.R. Rep. No. 105-551, pt. 2, at 53-54 (1998)).

The legislative history further clarified that “a service provider conducting a legitimate business would not be considered to receive a financial benefit directly attributable to the infringing activity’ where the infringer makes the same kind of payment as non-infringing users of the provider’s service.” Id. at *22 (quoting Senate Report at 44-45; House Rep. at 53-54). As a result, the court in the Viacom v. YouTube case concluded that any financial benefit YouTube received did not disqualify it from the safe harbor provisions because even those benefits must be tied to item-specific knowledge. Id. at *40-*41.

Congress similarly provided that the failure to recognize and act on “red flags” would preclude the application of the safe harbor. Id. at *25 (“a service provider would have no obligation to seek out copyright infringement, but it would not qualify for the safe harbor if it had turned a blind eye to ‘red flags’ of obvious infringement.”). Specifically, the ISP is not required to evaluate or reach any conclusion about the potential for infringement of someone else’s works. Id. at *26.

Ultimately, the court held that “[m]ere knowledge of prevalence of such activity in general is not enough” to justify imposing liability for indirect copyright infringement on an ISP. Id. at *29. Particularly, imposing liability on the ISP based solely on “knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials . . . would contravene the structure and operation of the DMCA.”

The court also rejected Viacom’s argument that the take down list (identifying approximately 100,000 claimed infringing videos) was merely “representative” of a larger number of infringing videos to be found on YouTube, and that the take down notice required YouTube to search for other similar works and remove them in order for the safe harbor to apply. Id. at *44-*45. The court opined that “This ‘representative list’ reference would eviscerate the required specificity of notice . . . if it were construed to mean a merely generic description (“all works by Gershwin”) without also giving the works’ locations at the site, and would put the provider to the factual search forbidden by § 512(m).” Id. at *44. Instead, take down notices must provide specific locations to the infringing works, whether by providing the precise URL (uniform resource locator, or website address), in order to permit the ISP to react appropriately to the notice and remove the infringing work.

The upshot is this: copyright owners still bear the burden to police the market to find instances of infringement, and cannot abdicate this duty to any of the various ISPs that host “user generated content.”

Statutory Language:

The relevant DMCA safe harbor rules that the court considered are contained in 17 U.S.C. § 512(c), reprinted below. There are several other safe harbors that the court did not analyze that can also be found in § 512. They are not reprinted here in the interest of space.

17 U.S.C. § 512(c) Information residing on systems or networks at direction of users.
(1) In general. A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—
     (A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
          (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
          (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
     (B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
     (C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

(2) Designated agent. The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
     (A) the name, address, phone number, and electronic mail address of the agent.
     (B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.

(3) Elements of notification.
     (A) To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:
          (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.
          (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
          (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
          (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
          (v) A statement that the complaining party has a 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.
          (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.
     (B) (i) Subject to clause (ii), a notification from a copyright owner or from a person authorized to act on behalf of the copyright owner that fails to comply substantially with the provisions of subparagraph (A) shall not be considered under paragraph (1)(A) in determining whether a service provider has actual knowledge or is aware of facts or circumstances from which infringing activity is apparent.
          (ii) In a case in which the notification that is provided to the service provider’s designated agent fails to comply substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii), (iii), and (iv) of subparagraph (A), clause (i) of this subparagraph applies only if the service provider promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with all the provisions of subparagraph (A).

17 U.S.C. § 512(c) (emphasis added).