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Companies Must Consider Fair Use Before Issuing Take Down Notices

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By Casey C. Sullivan, Esq. on September 16, 2015 12:58 PM

A dancing baby may have just made IP enforcement a bit more difficult. The baby in question, 18 month-old Holden Lenz, was caught bopping to Prince's "Let's Go Crazy" in a 29-second YouTube video. When Universal Music Group told his mother to take the video down for copyright infringement, she sued, alleging that the video was clearly protected by fair use and that Universal had illegally misrepresented the law in its notice.

And she won. On Monday, the Ninth Circuit ruled that copyright holders must consider fair use before issuing take down notices, leading to potentially big changes in how companies protect their intellectual property rights.

From Affirmative Defense to Pre-Notice Requirement

Lenz's case gained national attention -- and the pro-bono support of the Electronic Frontier Foundation -- since Universal's take down notice seemed like such incredible corporate overreach. Here, a mother was simply engaging in normal Internet activity, sending a short clip of her son out into the world.

Legally, no serious lawyer at Universal could think that the video was a violation of copyright law, could they? After all, fair use doctrine protects works where the copied material is not a central part of the work and unlikely to deprive the rights holder of any income.

Under the Digital Millennium Copyright Act, it's illegal to knowingly misrepresent that material or activities are infringing. Yet this is exactly what Lenz claims Universal did. Universal, in moving for summary judgment, argued that fair use was only an affirmative defense against an infringement case and thus the company did not have to consider it before sending out notices. If fair use justified the video, that was up to Lenz to prove.

The Ninth Circuit disagreed, however, ruling that under the DMCA, copyright holders must not knowingly issue takedown orders when material is protected by fair use. Universal and Lenz may now go to trial to see whether Universal had knowingly misrepresented the law in its takedown notice.

Can Automated Take Down Notices Be in Good Faith?

Rights holders issue millions of take down notices a year. The Ninth's ruling adds an additional step to the process -- consideration of fair use. But, how does fair use factor in to take down notices when many of them are automated?

In 2007, Universal's legal department actually had to use humans to issue notices. Today, most of the process is governed by computer algorithms. Programs scan the web and send out notices when they find duplication of protected content. Those algorithms usually don't account for all possible fair uses, even obvious ones.

The Ninth addressed this potential complication directly, though it issued no absolute guidance. "Without passing judgment," it said, such algorithms would appear to be "a valid and good faith middle ground" for considering fair use. Algorithms which identify materials matching protected content in "nearly the entirety" might not require a human's consideration of fair use.

The dissent was less sure, however, noting that copyright holders should not be allowed to rely purely on computer algorithms unless those programs could account for all fair use factors -- a tough thing to do, given that even full reproductions can be fair use.

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