DMCA Safe Harbor Requires Registered Agent with Copyright Office – BWP Media USA Inc. v. Hollywood Fan Sites LLC

The BWP Media case highlights the importance of having certain requirements in connection with the operation of a website to protect the website owner from copyright infringement for material posted by third parties under the Digital Millennium Copyright Act (DMCA). In this case, defendants operated more than 4500 websites called “fan sites network,” which are dedicated to celebrities. Plaintiff BWP Media alleged that photographs of the celebrities were posted by defendants on defendants’ websites without a license and in violation of plaintiffs’ rights. BWP Media USA Inc. v. Hollywood Fan Sites LLC., Case No. 14-CV-121(SDNY  June 30, 2015) (Available Here).

Plaintiffs BWP Media sued defendants for copyright infringement and asserted claims under the Racketeer Influenced and Corrupt Organizations Act (RICO).  The RICO counts were dismissed earlier by the court but the copyright infringement claims remained in the case. Defendants asserted as an affirmative defense that BWP Media’s claims were barred under the safe harbor provisions of the DMCA, 17 U.S.C. Section 512 (c) which is part of the Copyright Act.  BWP Media filed a motion for partial summary judgment seeking to strike these DMCA safe harbor defenses.

The DMCA provides a safe harbor for website operators from liability for copyright infringement under certain circumstances. The website operator must qualify as a “service provider,” adopt a takedown or repeat infringer policy and accommodate standard technical measures that are used by copyright owners to protect copyrighted works. DMCA 17 USC Section 512 (k)(1)(B), 512 (i)(1)(A)–(B), (i)(2).  The DMCA safe harbor limits liability for infringement claims that arise by reason of storage at the direction of a third party user of material that resides on a system or network controlled or operated by or for the service provider.

The issue in the BWP Media case involved designation of a DMCA agent to receive notifications of claimed infringement. 17 USC Section 512(c)(2).  The DMCA safe harbor provisions require that the Copyright Office have the following information for a DMCA registered agent: the name, address, phone number and email address. DMCA Section 512(c)(2).  The Copyright Office DMCA Registered Agent Form is provided here.  (DMCA-Registered-Agent-Form).

“A service provider cannot retroactively qualify for the safe harbor for infringements occurring before the proper designation of an agent under the statute.” DMCA Section 512(c)(2).  

The court found that certain defendants did not have a DMCA agent registered with the Copyright Office at the initial time infringement. However once the DMCA agent was registered with the Copyright Office, subsequent infringement actions for new celebrity postings would fall within the parameters of the DMCA safe harbor. Also, the court noted that subsidiaries of certain defendants must also have a registered DMCA agent with the Copyright Office to fall within the parameters of the safe harbor.

The ruling identifies a bright line approach to the safe harbor provisions of the DMCA and the need for a registered DMCA agent with the Copyright Office.

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