[Infowarrior] - Another victory for fair-use rights

[Richard Forno]

Judge: Copyright Owners Must Consider 'Fair Use' Before Sending  
Takedown Notice

By David Kravets EmailAugust 20, 2008 | 6:21:03 PMCategories:  
Intellectual Property

http://blog.wired.com/27bstroke6/2008/08/judge-copyright.html

In the nation's first such ruling, a federal judge on Wednesday said  
copyright owners must consider "fair use" of their works before  
sending takedown notices to online video-sharing sites.

The 10-page decision (.pdf) came a month after Universal Music told a  
San Jose, California federal judge that copyright owners need not  
consider the "fair use" doctrine before issuing takedown notices  
requiring online video-sharing sites to remove content.

The doctrine, recognized by  the Digital Millennium Copyright Act,  
permits limited use of copyright materials without the owner's  
permission.

"Even if Universal is correct that fair use only excuses infringement,  
the fact remains that fair use is a lawful use of a copyright," U.S.  
District Judge Jeremy Fogel ruled. "Accordingly, in order for a  
copyright owner to proceed under the DMCA with '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,' the owner must  
evaluate whether the material makes fair use of the copyright."

Fogel added that  an "allegation that a copyright owner acted in bad  
faith by issuing a takedown notice without proper consideration of the  
fair use doctrine thus is sufficient to state a misrepresentation  
claim."

The legal dispute decided Wednesday centers on a rarely used clause in  
the DMCA -- originally approved by Congress in 1998 -- allowing  
victims of meritless takedown notices to seek damages, in a bid to  
deter false notices and breaches of First Amendment speech. It is  
usually used when somebody issues a takedown notice and misrepresents  
ownership of the copyright.

The case considered a lawsuit brought by a Pennsylvania woman whose 29- 
second garbled video of her toddler dancing to Prince's "Let's Go  
Crazy" was removed last year after Universal sent YouTube a takedown  
notice under the DMCA.

The DMCA requires removal of material a rights holder claims is  
infringing its copyrights. If it isn't removed, legal liability can be  
placed on YouTube or other video-sharing sites. But the act also  
allows the uploader -- in this case, the Pennsylvania mother of the  
dancing toddler -- to demand the video be reposted online.

Universal did not challenge Stephanie Lenz's assertion that the video  
was a "fair use" of Prince's song. After being taken down for six  
weeks, the video went back online last year, having now generated  
about half a million hits.

The Electronic Frontier Foundation, which is representing Lenz, has  
asked the judge to award attorneys' fees and other unspecified  
monetary damages.

While there is no bright-line rule, the factors to consider whether a  
video uploaded to a file-sharing site is a fair use are: how much of  
the original work was used, whether the new use is commercial in  
nature, whether the market for the original work was harmed, and  
whether the new work is a parody.

Universal argued that copyright owners may lose the ability to respond  
rapidly to potential infringements if they are required to evaluate  
fair use prior to issuing takedown notices. Universal also raised the  
question of whether a particular use of copyrighted material  
constitutes fair use is a "fact-intensive inquiry," arguing that it is  
difficult for copyright owners to predict whether a court eventually  
may rule in their favor.

Fogel ruled that, "while these concerns are understandable, their  
actual impact likely is overstated. Although there may be cases in  
which such considerations will arise, there are likely to be few in  
which a copyright owner's determination that a particular use is not  
fair use will meet the requisite standard of subjective bad faith  
required to prevail in an action for misrepresentation."

Judge Fogel denied Universal's motion to dismiss Lenz's case --  
freeing her to continue with her lawsuit seeking damages.

Still, Judge Fogel said he had "considerable doubt that Lenz will be  
able to prove that Universal acted with subjective bad faith" when it  
sent YouTube the takedown notice.

Universal spokesman Peter Lofrumento seized on that language.

"While the court merely declined to throw the case out at this early  
pleadings stage," Lofrumento said, "we remain confident that we will  
prevail in this matter."

Corynne McSherry, an EFF attorney, said the digital rights group  
intends on convincing the judge that Universal acted in bad faith when  
it sent the takedown notice last year.

"We will overcome his doubts," she said.