ROM. Maxis Corp., owner of Sim City, sued
The fact is that the copyright laws have
Wizardware for copyright infringement,
never prevented private individuals from
claiming that it owned the artwork the
making unauthorized copies. What
players used to create the cities along with
copyright has done and will continue to do
the computer code that was included in the
even in the online era is deter the big players
CD-ROM. The judge ordered Wizardware to
from stealing others’ work.
312 | THE COPYRIGHT HANDBOOK
stop manufacturing and sel ing the CD-ROM have held that an ISP is liable for copyright
and impounded all existing copies, until a
infringements committed by its subscribers
trial could be held. ( Maxis Inc. v. Wizardware only if either of the following is true: Group, Inc. , C95-4045WHO (N.D. Cal., 1996).)
• The ISP knew about, or should have
If you’re liable for infringement, a court
known about, the infringing activity
can order you to stop the infringing activity,
and induced, caused, or contributed to
destroy any copies you’ve made, and pay
the infringing actions.
the copyright owner damages. This is so
• The ISP had the right and ability to
whether or not you knew the work you
control the infringer’s acts and received
infringed upon was protected. The fact
a direct financial benefit from the
you didn’t know a work was protected may
infringement.
affect the damages you’ll be required to
EXAMPLE: Dennis Erlich, a former member
pay but will not relieve you of liability for
of the Church of Scientology, uploaded
infringement.
copyrighted Scientology material onto the
However, you don’t have to infringe on
Internet using the ISP Netcom to obtain
someone’s work yourself to be liable. A per-
Internet access. The church sued both Erlich
son who induces, causes, or helps someone
and Netcom for copyright infringement.
else commit copyright infringement may be
The court held that Netcom was not liable
held liable as a contributory infringer. For
for direct copyright infringement because
example, you could be liable for contribu-
it did not directly participate in copying
tory infringement if you permit someone
and posting the church materials on the
else to use your computer and modem to
Internet. All Netcom did was operate as
transmit unauthorized copies of a work.
an ISP. Moreover, Netcom did not receive
What about companies that provide
a direct financial benefit from the alleged
access to the Internet (often called Internet
infringement because it only charged Erlich
service providers or ISPs)? Obviously,
a flat fee for Internet access. This meant that
an ISP will be liable for infringement
Netcom could be held liable for Erlich’s acts
where it or its employees actively engage
only if it knew about them and induced,
caused, or material y contributed to Erlich’s
in the infringement—that is, copying,
allegedly infringing conduct. ( Religious
distributing, or displaying a copyright
Technology Center v. Netcom On-Line
owner’s works without permission.
Communication Serv. Inc. , 907 F.Supp. 1362
However, a far more important question
(N.D. Cal. 1995).)
is whether ISPs are liable when they don’t
actively participate in the infringement and
Under normal copyright infringement
instead one of their subscribers or users
rules, an ISP or other entity that provides
commits the infringement. Most cases
access to the Internet will likely not be held
CHAPTER 11 | COPYRIGHT INFRINGEMENT | 313
liable for subscribers’ or users’ infringing
(1) individual infringers can be hard to find,
conduct where the ISP only passively
and (2) they often have no money to pay
transmitted or stored the al egedly infringing any damages. As a result, copyright owners material at the user’s direction, provided
have frequently sued ISPs instead—that is,
that the ISP didn’t know or have reason to
the companies that provided access to the
know about the infringement or receive a
Internet, and stored and transmitted the
direct financial benefit from it. However,
allegedly infringing material.
an ISP may become liable where it directly
The threat of such lawsuits greatly con-
participates in the infringement, directly
cerned ISPs and led them to lobby hard for
benefits from it financial y, or looks the
Congress to enact a special law exempting
other way when it should have reasonably
them from liability for online copyright
suspected that a subscriber or user was
infringements by their subscribers or users
committing infringement. These are the
under certain circumstances. This law, known
normal copyright rules. In 1998, Congress
as the Digital Mil ennium Copyright Act
enacted a law giving ISPs special relief
(DMCA), took effect in 1998. Among its
from liability from copyright infringements
many provisions are “safe harbors” exempting
committed by their subscribers or users, and ISPs from liability for monetary damages
for certain other common Internet activities. resulting from copyright infringements by
(See the detailed discussion in the fol owing
their users. The safe harbors also exempt ISPs
two sections.)
from liability for common Internet practices,
Internet service providers should delete
such as caching, that could raise infringement
any infringing material they become aware issues.
of or terminate the accounts of users who
The basic intent of the DMCA safe harbors
commit infringement. User agreements
is to codify into law the holding of the RTC
should also prohibit users from engaging
v. Netcom case discussed in the previous
in illegal activities, including copyright
section—that an ISP cannot be held liable
infringement, and provide that the user will for copyright infringement where it acts
indemnify (repay) the operator for claims
as a passive automatic conduit for Internet
resulting from such conduct.
users, but does not know about or actively
participate in the al eged infringement.
Internet Service Providers’ Safe Harbor
However, to qualify for the safe harbor
for Copyright Infringement Liability
exemptions, a number of complex require-
ments must be complied with. (See “What
It has been difficult or impossible for
ISPs Must Do,” below.)
copyright owners to enforce their rights
These safe harbor rules
are lengthy and
against individual online infringers because complex, but they are important—not just to
314 | THE COPYRIGHT HANDBOOK
ISPs, but to copyright owners as wel . If you
If you’re a person who uses the Internet to
believe someone has committed copyright
post or email copyrighted material, the safe
infringement by placing your copyrighted
harbor rules may impact you greatly as wel .
material online without your consent, the
Your ISP may remove material you’ve posted
rules may bar you from suing the ISP the
because someone claims it’s infringing. Such
infringer used to access the Internet. This
removal can occur without any court hearing
may make it effectively impossible for you to or other legal process, and you may have no obtain damages, since the actual infringer
legal remedy against the ISP.
may have no money or assets. On the other
hand, the rules give you a very powerful
tool to have the ISP remove the infringing
What to Do If Someone
material without your having to go to court.
Infringes Your Work Online
If you discover that someone has copied
What ISPs Must Do
your work and placed it online, you have
some powerful self-help weapons at your
The safe harbor rules are complex and
disposal to get the infringing work removed.
lengthy. Fortunately, it isn’t necessary to
You should take a three-step approach:
understand them all in detail to qualify.
• First, make sure a copyright
Here’s all an ISP must do to qualify for the
infringement has actually occurred.
safe harbor exemptions:
• Second, send a cease and desist email
• Designate an agent to whom
to the infringer demanding that the
copyright owners may send notices
work be removed.
of claimed infringement; this involves
• Third, if the work isn’t removed, send
fil ing out a simple form and sending
DMCA notices to the infringer’s
it to the Copyright Office and posting
Internet hosting company, search
the information on its website.
engines, and others.
• Adopt a policy that repeat copyright
infringers will have their accounts
terminated and let subscribers know
Step 1: Make Sure Infringement
about it.
Has Occurred
• Designate someone to deal with
First things first: You need to be certain
notices of claimed infringement from
that copyright infringement has actually
copyright owners; prompt action will
occurred. (See the first sections of this
be required.
chapter for a detailed discussion of what
constitutes copyright infringement.) Keep
CHAPTER 11 | COPYRIGHT INFRINGEMENT | 315
in mind that not all copying is copyright
Step 2: Send Cease and Desist Email
infringement—some types of copying
qualify as a fair use (see Chapter 10) and
If you are sure your work has been
some things are not protected by copyright
infringed, send a cease and desist email to
at all, such as facts and ideas (see Chapter 5). the copier demanding that they remove
Both the person you accuse of infringement your work and stop infringing on your
and the ISP can sue you for damages if you
copyrights. You’ll often be able to find
knowingly misrepresent—that is, lie—that
contact information for the infringer at
copyright infringement has taken place.
the website where your work appears.
If not, check out the website’s WHOIS
information at https://whois.icann.org.
Discovering Online Infringers
This email is very similar the cease and
desist letter discussed earlier in this chapter.
You can use search engines like Google to
Give the infringer 24 to 48 hours to remove
attempt to discover whether someone is
your content or otherwise respond.
copying your work online. There are also
various services that employ sophisticated
EXAMPLE: Jill actively maintains a blog
software to do this for you automatical y.
cal ed Wage Slave No More (nowageslave.
These include:
com) that provides advice to self-employed
• Copyscape (www.copyscape.com)
people. She discovers that a lengthy article
• Stop Web Pirates (www.stopweb
from the blog has been reposted verbatim
pirates.com), and
without her permission on a website called
• Maverickeye (www.maverickeye.de).
NerdAdvice.com. She sends the fol owing
email to the site’s email address:
Subject Line: Cease and Desist Notice to
In one case involving online content, a
NerdAdvice.com
company was required to pay more than
To whom it may concern:
$125,000 in damages after attempting
I am the copyright owner of the article
to use the DMCA takedown procedure
entitled “How the Self-Employed Can Save
to remove content (internal emails about
Money on Taxes,” published on my blog at
faulty voting machines) whose unauthorized
www.nowageslave.com/1043828. Al content
online distribution the court found to be
on nowageslave.com, including the article
protected by fair use. Accordingly, if you are
“How the Self-Employed Can Save Money
not sure whether material available online
on Taxes,” is copyrighted under U.S. law, and
infringes your copyright, you should contact
unauthorized duplication is illegal.
an attorney. ( Online Policy Group v. Diebold,
337 F.Supp.2d 1198 (N.D. Cal. 2004).)
316 | THE COPYRIGHT HANDBOOK
Your website NerdAdvice.com has illegal y
Using this notice and takedown
copied the entire text of my article. The
procedure is not mandatory. You can always
infringing work appears at the fol owing
forgo it and go straight to court and file
location on your website: www.nerdadvice.
a copyright infringement lawsuit against
com/103984.html. A screenshot taken from
the infringer or ISP. But it’s usually wise to
this URL is attached to this email as Exhibit 1.
take these initial self-help steps first. Filing
I demand that you immediately remove
a DMCA Takedown Notice is not difficult
the article from your website and cease
and can easily be accomplished by any
and desist all further unauthorized copying
copyright owner without paying a lawyer. If
of my copyrighted content. If you do not
the notice is successful and the ISP removes
remove my content within 48 hours of
the infringing material or disables access
receipt of this email, I will file Takedown
to it, there will often be no need to fi
le an
Notices against you under Section 512 of the expensive court action. If the infringing
Digital Millennium Copyright Act (DMCA)
material is removed by the ISP, you will
with your hosting provider, search engines,
still have the right to sue the infringer for
and others. I will also pursue all appropriate
damages, but in this event, the ISP will not
legal remedies against you for copyright
be liable for damages.
infringement. Under 17 U.S.C. Section 504
the consequences of copyright infringement Takedown Notice to ISP
include statutory damages between $750
and $30,000 per work, at the discretion of
ISPs are companies and institutions that
the court, and damages of up to $150,000
provide people with Internet access and host
per work for wil ful infringement.
websites and other materials on the Internet.
For nowageslave.com
The ISP is usually not the infringer, but
rather the conduit through which the
Jill Johnson
infringer has accessed the Internet. If it is
not clear which ISP the alleged infringer
Step 3: Send DMCA Takedown Notices
uses, check the domain name registration
If the infringer does not respond adequately records for the website where the infringing to your cease and desist email, or can’t be
material is found. You can do this at: www.
found, you should send a Notice of Claimed networksolutions.com/whois/index.jsp or
Copyright Infringement (commonly
www.whoishostingthis.com.
called a DMCA Takedown Notice) to the
Most ISPs have designated an agent to
infringer’s Internet service provider (ISP), as receive DMCA takedown notices (doing
well as to Internet search engines, such as
so is required to qualify for the safe harbor
Google, and possibly others as well.
from copyright infringement liability
CHAPTER 11 | COPYRIGHT INFRINGEMENT | 317
discussed above). The ISP is supposed
Different ISPs have different policies
to post this information at its website.
about how you should format your DMCA
The Copyright Office also maintains a
Takedown Notice. Be sure to read and
centralized online directory of designated
follow the requirements of the ISP involved.
agent contact information for public use at
The notice can be either emailed or sent by
www.copyright.gov/dmca-directory.
postal mail to the ISP.
Draft and sign a Notice of Claimed
Copyright Infringement and send it to the
agent. The notice must:
The Copyright Handbook Page 55