CONNIE J. MABLESON is an IP attorney who represents ISPs, websites, e-commerce sites, and online
and creative entrepreneurs and artists. She is the author of two books about the DMCA, including DMCA
Handbook for ISPs & Websites, Content Creators, & Copyright Holders, available at Amazon. Her blog is
www.dmcahandbook.com.
owner of the copyright) six separate and
exclusive rights to: 11
• copy or reproduce the work;
• distribute the work;
• display the work;
• perform the work (if it is capable of being
performed);
• make derivative works from the work; and
• perform the work by means of a digital
audio transmission in the case of a sound
recording.
setting up and operating a system that is
necessary for the functioning of the
Internet.” 16 The court observed that it
would not be workable to hold “the entire
Internet liable for activities that cannot reasonably be deterred.” 17
In 1988, as a result of the Netcom case
and the rapidly developing “world wide
web,” Congress enacted the DMCA to
address the concerns of content providers,
authors, ISPs and the concerns of the pub-
lic in general. 18 The DMCA “intended to
ding types of activity (transmit, cache, store
and index) to be eligible for safe-harbor
immunity. Most ISPs will seek immunity
under the storage safe harbor if they satisfy
the following prerequisites: 21
1. The ISP must qualify as a “service provider.”
The definition of “service provider” for ISPs
that cache, store and index is broadly
defined as “a provider of online services or
network access, or the operator of facilities
therefor.” 22
For instance, when a photographer
takes a picture, the photographer is
the “author” and owns the copyrights
to the photograph. When a user uploads
or posts UGC to a website such as
Pinterest, and the user is not the owner
of nor has obtained the permission of
the owner to post the photograph, the
user is essentially copying, distributing
and perhaps displaying or performing
the UGC in violation of the exclusive
copyrights held by the owner. This is
direct copyright infringement. 12 And
when a user/infringer uploads or posts
infringing UGC to an ISP’s servers,
system, network or website, the ISP
is liable for contributory copyright
infringement—even if the ISP is not aware of
the posting or does not know that the
uploaded UGC is infringing. 13 Furthermore,
an ISP that induces, encourages, fosters or
facilitates direct infringement may also be a
contributory infringer under an inducement
or facilitation theory. 14
An ISP that induces,
encourages,
fosters or facilitates
direct infringement
2. The ISP must designate an agent
to receive notification of claimed
infringement from copyright owners
and register that agent with the U.S.
Copyright Office. 23
The U.S. Copyright Office has a form
that ISPs are required to file with the
Copyright Office that designates the
agent who is authorized to receive the
DMCA notices on behalf of the ISP. 24
may also be a
contributory infringer.
The Netcom Case & DMCA
Liability of an ISP as a contributory infringer
was first determined in the 1995 Netcom
case. 15 The court in Netcom ruled that when a
bulletin board service operator cannot reason-
ably verify a claim of infringement due to the
copyright owner’s failure to provide the nec-
essary documentation to show that there is
likely infringement, the operator’s lack of
knowledge is reasonable and there is
no liability for contributory infringe-
ment for allowing the continued distri-
bution of the works. The Netcom court
reasoned that “it does not make sense
to adopt a rule that could lead to lia-
bility of countless parties whose role in
the infringement is nothing more than
`balance the need for rapid response to
potential infringement with the end users’
legitimate interests in not having material
removed without recourse.” 19 The DMCA
created a mechanism for copyright owners
to inform the ISP of potentially infringing
UGC while, at the same time, providing
“greater certainty to service providers con-
cerning their legal exposure for infringe-
ments that may occur in the course of their
activities.” 20
3. The ISP must not have actual knowledge that the material or activity or
UGC on its servers, system, network
or website is infringing. 25
“Actual knowledge” in this context
has been interpreted to mean actual knowledge of specific and identifiable infringements of UGC. General awareness or general knowledge that infringing UGC is present on a server, network, system or website,
is not sufficient to constitute “actual knowledge.” 26 This requirement also means that
the ISP cannot “police” or review UGC as a
matter of course to determine if any UGC is
infringing. If the ISP does, then the ISP will
not be protected by the DMCA.
ISP Eligibility Requirements Applicable to the
Storage Safe Harbor
ISPs seeking immunity under the four
DMCA safe harbors must satisfy different
prerequisites for each of the four correspon-
4. In the absence of such actual knowledge,
the ISP must not be aware of facts or
circumstances from which infringing activity
is apparent.27
This is called the “Red Flag” test. 28 Under
• U.S. Senate and House provide information servers. • Shopping malls arrive on the Internet. • Arizona law firm “spams” the Internet with email advertising green card lottery services; Net citizens “flame” back in opposition. This is the first commercialization of the Internet. • First Virtual, the first cyberbank, open for business. • The first banner ads appear on hotwired.com in October. They were for Zima (a beverage) and AT&T.
INTERNET
1994
