the test, the ISP must remove the infringing
UGC even if a DMCA notice has not been
filed as to such UGC and even if the ISP
does not have actual knowledge. The questions are “What facts or circumstances” are
important “from which infringing activity
is apparent” 29 and, “Whether the service
provider deliberately proceeded in the face
of blatant factors of which it was aware.” 30
General awareness that infringing UGC is
likely stored on an ISP’s servers is insufficient to constitute “apparent” infringing
As described by Congress, “awareness”
or “apparent knowledge” requires evidence
that that an ISP “turned a blind eye to ‘red
flags’ of obvious infringement.” 32 The Red
Flag facts or circumstances must be readily
apparent or blatant—something from which
the only reasonable conclusion is that the
material or activity is infringing. Thus, once
an ISP is aware of a website containing such
“red flags,” the ISP would have apparent
knowledge of the infringing activity. 33 Pirate
sites typically employ terms such as “pirate”
or “bootleg” or use other slang terms in
their URL or header so that their infringing
nature is “apparent from even a brief and
casual viewing.” 34
What constitutes “awareness” was
expanded by the recent case of Viacom v.
You Tube. 35 There, the Second Circuit indicated that although the DMCA itself does
not mention any standard to be applied, the
common law doctrine of “willful blindness”
is applicable to demonstrate an ISP’s awareness or knowledge under the DMCA.
A person is “willfully blind” or engages
in “conscious avoidance” amounting to
knowledge where the person “was aware of
a high probability of the fact in dispute and
consciously avoided confirming that fact.” 36
The exact meaning of this standard and its
application to the facts will be litigated in
DMCA cases to come.
5. Upon obtaining such knowledge or awareness, the ISP acts “expeditiously” to remove
or disable access to the UGC. 37
Once the ISP has actual knowledge, or
awareness of, or knows from an effective
DMCA Notice about the existence of
infringing UGC on its servers, system, network or website, the ISP must “
expeditiously” remove or disable the infringing
UGC. “Expeditiously” is not defined in the
statute but has been interpreted to mean
“promptly” and “efficiently.” 38
If an ISP receives a financial benefit attributable to the infringing activity, it will also fail
this eligibility requirement. What this means is
that the ISP cannot make its money directly
from infringing activity. If the ISP endorses
business practices that would encourage, promote or induce users or content providers to
upload and download infringing UGC, then
the ISP loses DMCA protection. If an ISP
turns a blind eye to the source of massive
copyright infringement while continuing to
knowingly profit, then the DMCA will not
protect the ISP. 44
6. The ISP does not receive a financial benefit
directly attributable to the infringing activity,
in a case in which the ISP has the right and
ability to control such activity. 39
As an initial proposition, an ISP does not
want to control or enable infringements. An
ISP that has the “right and ability to control” is not eligible for DMCA safe harbors.
The pertinent inquiry is not whether the
ISP has the right and ability to control its
servers, system, network or website, but,
rather, whether it has the right and ability to
control the infringing activity. 40 A right and
ability to control infringing activity, as the
concept is used in the DMCA, does not
simply mean the ability of an ISP to
“remove or block access to materials posted
on its website or stored in its system.” 41
Rather, something more than the ability to
remove or block UGC is needed to indicate
control. 42 Precisely what constitutes the
“something more” to prove the right and
ability to control infringing activity in the
online context can be difficult to define and
tends to be fact-specific.” 43
Overview of DMCA Notice
& Take Down Process
The DMCA sets forth a specific process when
infringement has been alleged. The process
must be followed by all parties involved,
including the author, the user/infringer, and
the ISP. Each party has specific responsibilities.
STEP 1. Author sends an effective DMCA
“take-down” Notice to the ISP. 45
When an author discovers an online and
unauthorized copy of her original content,
the author must send a written, “effective”
DMCA “take-down” notice to the ISP alerting the ISP to the presence of the infringing
UGC. This begins the DMCA “notice and
take down” process.
STEP 2. ISP expeditiously removes or disables
access to the infringing UGC. 46
After receipt of the author’s effective DMCA
notice, the ISP must “expeditiously” remove
or disable the allegedly infringing UGC.
STEP 3. ISP promptly notifies the user/infringer
in a written communication that a DMCA “
take-down” Notice has been received by the ISP. 47
The ISP must then take reasonable
steps to promptly notify the user/
infringer who posted the infringing
UGC that an infringement claim was
made against the user/infringer relating to the particular UGC.
• Religious Tech. Ctr v. Netcom On-Line Commc’n Services, Inc., 907 F. Supp. 2d
1361 (N.D. Cal. 1995) (BBS operator not liable for copyright infringement).
• Registration of domain names is no longer free. A $50 annual fee has been
imposed, which up until now was subsidized by NSF.
• The Vatican comes online ( www.vatican.va/).
• The Canadian Government comes online ( http://canada.gc.ca/).
• The first official Internet wiretap was successful in helping the Secret Service and
Drug Enforcement Agency (DEA) apprehend three individuals who were illegally
manufacturing and selling cell phone cloning equipment and electronic devices.
• Operation Home Front connects, for the first time, soldiers in the field with their
families back home via the Internet.
• Microsoft launches MSN (Microsoft Network).
• Internet Explorer launched by Microsoft.
• CompuServe, America Online and Prodigy start providing dial-up Internet access.
STEP 4. User/infringer sends a Counter-
notification to the ISP (Optional). 48
The user/infringer has the option
to send an “effective” “Counter-
notification” to the ISP. The user/
infringer is not required to send a
Counter-notification but if the user