URGENT REMINDER: 2017 DMCA Agent Designation – Previous Designated Agents Must Re-Register Online Before December 31, 2017

do-it-now-1432945_1920If you operate, manage, or host a website, mobile app, blog or other digital service  that allows users (aka third parties) to post comments or upload media, such as pictures, videos or audio files, then you need to be taking advantage of the Digital Millennium Copyright Act (“DMCA”)  Safe Harbor to protect yourself from copyright infringement liability for infringing materials posted on your site by users of your service.

Last year, the U.S. Copyright Office introduced a new online DMCA Agent Directory and registration process to replace the prior paper-based system and directory for DMCA Designated Agents, which became effective on December 1, 2016.  Designating a DMCA Agent with the Copyright Office is part of the process to protect you from copyright infringement liability for third party posts (aka user-posted content) on your app/blog/website and corresponds to the DMCA Takedown Notice Procedures that should be included in the Terms of Use on your website/blog/app.  If you do not register (or re-register) a DMCA designated agent, you risk losing the safe harbor protections of Section 512 of the DMCA, leaving you potentially vulnerable to certain types of claims of copyright infringement.

 register-1627729_1280NOTE: Even if you previously designated an agent with the Copyright Office prior to December 1, 2016 (via a paper form), you will need to submit a new designation electronically using the online registration system by December 31, 2017, or your prior designation will expire and become invalid.

In order to register, you will need to create an account.  You will need to include a primary contact (with the option to include a secondary contact) when you register, and then an email will be sent to the primary contact with instructions on how to active the account.  Once the account is activated, you will be able to complete the DMCA designed agent registration process.

You will need to register the following information:

  • Full Legal Name of Service Provider (legal entity name) and related contact information
  • Alternative Name(s) of Service Provider (including all names under which the service provider is doing business, such as domain name(s), blog or mobile app name(s), assumed/trade name(s), etc.)
    • NOTE: Separate legal entities are not considered alternate names. Related or affiliated service providers that are separate legal entities (e.g., corporate parents and subsidiaries) are considered separate service providers, and each must have its own separate designation.
  • Name of Agent Designated to Receive Notification of Claimed Infringement (which can be the name of an individual or a specific position or title [e.g., Copyright Manager, VP Legal Affairs, or General Counsel] or a specific department [e.g., Copyright Compliance Department] or third-party entity [e.g., ACME Takedown Service] rather than an individually named person as the agent…which may be preferable to avoid having to update the form if the named individual should ever leave the company) and related contact information
  • Pay the Fee (the current registration fee to designate an agent, or amend or resubmit a designation is $6.00 per service provider, with no additional fee for any alternate names)

In addition to registering a designated agent, you will also need to post copyright infringement notice provisions on your site and comply with the DMCA takedown and notice procedures. Click on the following links for more information about the DMCA Safe Harbors and what you need to do to benefit from them, as well as DMCA Designated Agent FAQs.

Renewal Requirements. In an attempt to ensure that the DMCA Agent Directory contains accurate and up-to-date information, your agent designation will expire and become invalid three years after it is registered (or last amended) with the U.S. Copyright Office, unless you renew it prior to the expiration for another three-year period. The online system will send renewal reminders to the primary and secondary contacts, service provider, and designated agent listed in your account 90 days, 60 days, 30 days, and 7 days prior to your renewal deadline.

IMPORTANT NOTICE: 2017 DMCA Agent Designation – Previous Designated Agents Must Re-Register Online Before December 31, 2017

do-it-now-1432945_1920If you operate, manage, or host a website, mobile app, blog or other digital service  that allows users (aka third parties) to post comments or upload media, such as pictures, videos or audio files, then you need to be taking advantage of the Digital Millennium Copyright Act (“DMCA”)  Safe Harbor to protect yourself from copyright infringement liability for infringing materials posted on your site by users of your service.

The U.S. Copyright Office recently introduced a new online DMCA Agent Directory and registration process to replace the prior paper-based system and directory for DMCA Designated Agents, which became effective on December 1, 2016.  Designating a DMCA Agent with the Copyright Office is part of the process to protect you from copyright infringement liability for third party posts (aka user-posted content) on your app/blog/website and corresponds to the DMCA Takedown Notice Procedures that should be included in the Terms of Use on your website/blog/app.  If you do not register (or re-register) a DMCA designated agent, you risk losing the safe harbor protections of Section 512 of the DMCA, leaving you potentially vulnerable to certain types of claims of copyright infringement.

 register-1627729_1280NOTE: Even if you previously designated an agent with the Copyright Office prior to December 1, 2016 (via a paper form), you will need to submit a new designation electronically using the online registration system by December 31, 2017, or your prior designation will expire and become invalid.

In order to register, you will need to create an account.  You will need to include a primary contact (with the option to include a secondary contact) when you register, and then an email will be sent to the primary contact with instructions on how to active the account.  Once the account is activated, you will be able to complete the DMCA designed agent registration process.

You will need to register the following information:

  • Full Legal Name of Service Provider (legal entity name) and related contact information
  • Alternative Name(s) of Service Provider (including all names under which the service provider is doing business, such as domain name(s), blog or mobile app name(s), assumed/trade name(s), etc.)
    • NOTE: Separate legal entities are not considered alternate names. Related or affiliated service providers that are separate legal entities (e.g., corporate parents and subsidiaries) are considered separate service providers, and each must have its own separate designation.
  • Name of Agent Designated to Receive Notification of Claimed Infringement (which can be the name of an individual or a specific position or title [e.g., Copyright Manager, VP Legal Affairs, or General Counsel] or a specific department [e.g., Copyright Compliance Department] or third-party entity [e.g., ACME Takedown Service] rather than an individually named person as the agent…which may be preferable to avoid having to update the form if the named individual should ever leave the company) and related contact information
  • Pay the Fee (the current registration fee to designate an agent, or amend or resubmit a designation is $6.00 per service provider, with no additional fee for any alternate names)

In addition to registering a designated agent, you will also need to post copyright infringement notice provisions on your site and comply with the DMCA takedown and notice procedures. Click on the following links for more information about the DMCA Safe Harbors and what you need to do to benefit from them, as well as DMCA Designated Agent FAQs.

Renewal Requirements. In an attempt to ensure that the DMCA Agent Directory contains accurate and up-to-date information, your agent designation will expire and become invalid three years after it is registered (or last amended) with the U.S. Copyright Office, unless you renew it prior to the expiration for another three-year period. The online system will send renewal reminders to the primary and secondary contacts, service provider, and designated agent listed in your account 90 days, 60 days, 30 days, and 7 days prior to your renewal deadline.

The Digital Millennium Copyright Act (DMCA) Safe Harbor

email-826333_1280The Digital Millennium Copyright Act (“DMCA”) is an amendment to the U.S. Copyright Act (i.e., the federal copyright law) signed into effect in October 1998 that, among other things, provides certain limitations on the liability of online service providers (“Provider(s)”) for acts of copyright infringement by third parties.

The DMCA actually contains two types of liability limitations:

The first (Section 512(d)) protects a Provider that unknowingly provides a link to infringing copyrighted material located on another site.

The second (Section 512(c)) , which we discuss in more detail here, limits the liability of Providers that store copyrighted materials on a system or network they control or operate if (among other things), (i) such storage was directed by a third-party user, (ii) the service provider has designated an agent (also referred to as a “take-down agent”) to receive notifications of claimed infringement, and (iii) the service provider has both registered the agent’s contact information with the U.S. Copyright Office and publicly provided such information on its website.

It is important to note that, because the DMCA protects against claims of copyright infringement and not other types of wrongdoing, it will not help against claims of infringement concerning trademarks or service marks, stolen trade secrets, or other types of intellectual property.  The DMCA is also not relevant to claims of defamation, although a Provider may have protection for defamatory statements made by third parties under Section 230 of the Communications Decency Act.

The DMCA Safe Harbor

The DMCA is a “safe-harbor” is an exception to the general rule that a Provider is liable for acts of infringement committed by its users. Because the DMCA is intended to protect Providers from inadvertent infringement by third parties, it will not help in a situation where the Provider itself is accused of infringement (i.e., where the Provider posts infringing copyrighted content), or where the Provider knows content it hosts infringes a copyright.

Because the DMCA can be an absolute defense to liability for copyright infringement by a third party, registering a take-down agent may even prevent someone from suing the Provider for infringement in the first place.

Online Service Providers

In essence, you qualify as a Provider and are eligible for protection under the DMCA if you operate, manage or host a website, blog, mobile app, social media platform, portal, game, or other digital service that allows users (aka third parties) to upload or post content. That can include the following activities:

  • Allowing users to post comments or review, or respond to discussion threads
  • Allowing users to upload media, such as pictures, .gifs, videos or audio files

The above is true because the definition of “infringe” or “infringement” is very broad and captures many activities. For example, if your site allows users to submit a thumbnail sized avatar in connection with the user’s comment and the user chooses an image that infringes a third-party’s copyright, you can be liable. Knowledge or intent are not relevant for purposes of liability for infringement under the copyright law; so, you can be held responsible for copyright infringement even if you have no idea these activities are going on (and, if you have not registered a DMCA agent, even if you take down the offending material immediately after being notified!).

How to Benefit from the DMCA Safe Harbor Provisions

In order to enjoy the benefits of the safe-harbor provisions, a Provider must comply with a few administrative requirements:

  1. Designate a copyright take-down agent to receive DMCA takedown notices.

In order to designate an agent, a Provider must create an account, provide some basic information (the Provider’s legal name, alternatives names for the Provider, the name or title of the Provider’s agent designated to receive infringement claim notices, and related contact information) and pay a filing fee (currently $6 to designate an agent, or amend or resubmit a designation, for an unlimited number of alternative names, websites, etc. for the Provider). The U.S. Copyright Office maintains an official list of designated agents, which allows a person who believes his or her work is being infringed to quickly send a takedown notice.

  1. Adopt a copyright infringement policy and notify site users.

The Provider must publish a statement on its website to provide notice to the site users of its copyright infringement policies, the consequences of repeated infringing activity, and advising users of the takedown agent’s contact information. Many people include a DMCA policy in their terms of service, but it may also be placed in a separate document.

  1. Watch for and properly comply with any notice of claimed infringement received.

A person claiming infringement must provide the Provider a written notice that substantially meets the following requirements:

  • A detailed description of the copyrighted work(s) allegedly being infringed;
  • A description (such as the subdomain link) of the location on the site where the   allegedly infringing content appears reasonably sufficient to permit the Provider to locate the material;
  • The claimant’s contact information, including name, address, telephone number, and, if available, email address;
  • A statement that the claimant has a good faith belief that the allegedly infringing use is not authorized by the claimant as the copyright owner, by the claimant’s agent, or by law;
  • A statement affirming that, under penalty of perjury, the information in the notice is accurate and that the claimant is, or is authorized to act on behalf of, the copyright owner; and
  • A physical or electronic signature of the copyright owner or someone authorized on the owner’s behalf to assert infringement of copyright and to submit the statement.

Remember that the DMCA protects only against copyright infringement, not against other types of accused wrongdoing. Therefore, a Provider must be careful to make sure any notice it receives alleges a copyright infringement and not some other type of wrong doing.

Also note that not all cease and desist letters or takedown notices will be proper, and a Provider is not under a legal obligation to comply with notices that do not substantially meet the above requirements.

If a takedown notice does not meet the requirements, a Provider should respond to the party who submitted the takedown notice, state that the notice does not comply with the DMCA requirements, and inform the complainant that he may resubmit a takedown notice that substantially complies with the DMCA requirements.

If a takedown notice does meet the requirements, a Provider should promptly:

  1. remove or disable access to the material that is claimed to be infringing;
  2. notify the complainant that the material has been removed; and
  3. notify the allegedly infringing party that the material has been removed so that he may file a counter-notice.

Often, a potentially offending user will not file a counter-notice, but if he or she does, a proper counter-notice must contain substantially the following information:

  • The alleged infringer’s name, address, phone number
  • Identification of the material and its location before removal
  • A statement under penalty of perjury that the material was removed by mistake or misidentification
  • The alleged infringer’s consent to local federal court jurisdiction, or if overseas, to an appropriate judicial body
  • A physical or electronic signature of the alleged infringer

If the counter-notice meets these specifications, the Provider should forward the counter-notice to the person who claimed infringement. That person must then file a lawsuit within 10 business days of the Provider’s notice to the complainant of the counter-notice; otherwise, the Provider should reinstate the disputed material within 10-14 business days after sending the counter-notice to the complainant.

While there is no requirement under the DMCA for a Provider to remove any material(s), the receipt of a valid takedown notice acts to give the Provider notice of the allegedly infringing activity, and therefore ineligible for limited liability. The Provider may then face liability for continuing to host the material.

Consult a qualified attorney if you are unsure of what the notice or demand letter is alleging or if you have questions about whether you must comply with a takedown notice or how you should comply with the takedown notice.

I didn’t register a DMCA takedown agent and now someone has filed a copyright infringement lawsuit against me. Am I out of luck?

In order to benefit from the safe harbor protections, a Provider must register a DMCA agent prior to an allegation of infringement which it wishes to defeat with the registration.

Even if a Provider has not registered a DMCA agent, it may still be able to defend against a claim on the merits of the alleged infringement. For example, if the amount of supposedly infringing material is small or is posted in a way meant to be educational and includes a citation for the material, you may have a defense under the fair use doctrine (although a fair use defense may not apply depending on the facts of each particular situation). Some cases also indicate that a defense may exist by asserting that infringing third-party posts are simply not the responsibility of the Provider. However, if a Provider has not registered under the DMCA, it will not be able to claim that it was unaware of the infringing activity or that it quickly removed the offending material.

10 Legal Considerations for Entrepreneurs – Part 3

business-plan-2061633_1920In Part 2, we discussed selecting a business entity, taking advantage of protections provided by an entity, and funding your business.  Now we’ll look at other licenses you may need to run your business, considerations when working with employees and contractors, and the importance of written agreements.

6. Obtain Licenses, Permits & Certifications.

There are numerous federal, state and local regulatory agencies that may govern everything from education to professional licenses and violations. Most businesses need licenses in order to begin operations. Licenses may be required for your city, your municipality, your county and/or your state. Some occupations and professions require a state license or permit as well. If you’ll be running a home-based business, then you’ll need to make sure you’re not violating any zoning restrictions or homeowner association rules.

The U.S. Small Business Administration provides information about industry-specific federal and state business licenses and permits, as well as links to the specific agencies that maintain such licenses and permits.  Many states provide state-specific information and links to helpful business-related registration, licensing, permit and related sites, such as the Missouri Business Portal and Texas Wide Open For BusinessUSA.gov provides an A-Z list of all agencies as well as information regarding federal, state and local government.  A list of state regulatory agencies is available at All Things Political.

7. Employees and Independent Contractors.

If you intend to hire yourself or anyone else as a full or part-time employee of your company, then you may have to register with the appropriate state agencies, withhold and pay taxes, verify each employee’s eligibility to work in the United States, obtain workers compensation insurance or unemployment insurance (or both), create an employee handbook, and comply with other employment regulations. Hiring independent contractors instead of employees for your new business may be less burdensome, but working with independent contractors has its own set of risks. For example, if your independent contractor is discovered to meet the legal definition of an employee, you could face a number of costly legal consequences. Furthermore, unless an employee is performing services within the scope of his employment (work-for-hire), it is best (and often required) to have a signed, written agreement transferring rights in intellectual property created by an individual, independent contractor or entity to your business. For more information about hiring employees and working with independent contractors, visit the U.S. Small Business Administration and/or consult with an attorney.

8. Get it in Writing.

Relying on verbal or “handshake” deals may seem appealing, but it’s almost always advisable to have a written agreement in place. Whether it’s an office or equipment lease, an agreement with your business partners, a confidentiality agreement, a contract to provide services to a customer, or an agreement with someone providing services to your business, written contracts set out the details of the transaction, each party’s responsibilities and obligations, and often provide for procedures or remedies in the event something goes wrong. This last part is precisely why it’s advisable to negotiate a deal up front when the parties are happy with each other and excited about the transaction rather than waiting for an issue to arise and attempting to negotiate an agreement when at least one party is soured on the deal.

All contracts related to the business should be entered into in the name of the business and not by you personally. Know that it is rare for anyone to sign the first draft of an agreement.  It is always advisable to have an attorney review (and potentially negotiate) the agreement before it’s signed to ensure that you’re not missing something hidden (or not included) in the fine print.

In Part 4, the last installment in the series, we’ll talk about other issues you should consider to help your business grow.

New Trade Secrets Law – What it Means for Your Trade Secrets and Your Company

On May 11, 2016, President Obama signed the Defend Trade Secrets Act (“DTSA”), which went into effect immediately. The DTSA will have a major impact on intellectual property law and also has implications related to employees and independent contractors. Although the DTSA contains elements similar to the Uniform Trade Secret Act adopted in some form by every state except for New York and Massachusetts, there are notable differences. For example, the DTSA creates a federal private/civil confidential-stamp_GyH5lHOdcause of action for trade secret misappropriation. Previously, federal law only provided for criminal actions brought by the government. Available remedies include injunctive relief, exemplary damages in addition to actual damages, and attorneys’ fees. The DTSA also allows for civil seizure of an opponent’s property in extraordinary circumstances. These remedies could provide powerful tools for trade secret protection.

The DTSA provision of most immediate concern is the required employee notice of civil and criminal immunity for whistleblowers who disclose trade secrets to government officials for the purpose of reporting a suspected violation of law. The immunity also protects disclosures to attorneys or in sealed court filings. In order to comply with the DTSA, all agreements with employees, independent contractors or consultants covering trade secrets or confidential information must include notice of the DTSA’s whistleblower safe harbors and immunity. Although the DTSA requires that an employer provide notice of the whistleblower immunity in any agreement with an employee that governs the use of a trade secret or other confidential information, the act defines “employee” to include any individual performing work as a contractor or consultant. Compliance can be achieved by including specific language in the agreement or providing a cross reference to an existing whistleblower policy document, such as an employee handbook. Failure to include the required notice in employment agreements results in the employer losing the right to recover attorneys’ fees or exemplary damages from the employee.

Employers should take the following steps to comply with the DTSA:

  • All agreements concerning trade secrets or confidential information should be revised. This likely includes employment agreements, non-disclosure and confidentiality agreements, contractor agreements, severance or separation agreements, and more. The DTSA notice provision applies to agreements entered into or updated after May 11, 2016.
  • Employers may want to consider changing forum selection clauses in any contract affected by the DTSA. Having federal and state court options could be beneficial in a trade secret or other employment dispute.
  • Contractor or consulting agreements should be amended so that the service provider is required to notify its employees of the DTSA’s whistleblower protections.

Additional compliance issues may arise as case law develops and companies adjust to the DTSA’s requirements.

Happy Birthday Copyright Ruled Invalid

birthday-937520_1280You may be hearing “Happy Birthday” more often now that a federal judge in Los Angeles has ruled that the copyright Warner/Chappell Music claimed to own in the lyrics of the song is invalid.  According to the opinion issued on September 22, 2015, “Because Summy Co. never acquired the rights to the Happy Birthday lyrics, Defendants [Warner/Chappell], as Summy Co.’s purported successors-in-interest, do not own a valid copyright in the Happy Birthday lyrics.”

Unless the ruling is overturned or someone else comes forward with a valid ownership claim, third parties will no longer be required to pay licensing fees to use the song in movies, TV shows, greeting cards and the like…and Warner/Chappell will be out an estimated $2 million a year in royalties it collected from the song.

Click here for more on the story.

Why Should I Register My Trademarks?

TrademarkIn the United States, trademark rights are based on (1) priority (who used the mark first), (2) territory (the geographic area(s) where the mark has been used), and (3) use (whether products or services are actually provided under the mark).

Generally, the first to either use a mark in commerce or file an intent-to-use application with the United States Patent and Trademark Office (USPTO) has the ultimate right to use and registration of the mark.

Common law rights arise when products or services are offered for sale in connection with the mark.  However, common law rights are limited to the trade area in which you actually use the mark and those rights may be limited or even prohibited by prior senior uses of the same or confusingly similar marks.

A trademark owner may also register a mark in one or more individual states through Secretary of State Offices.

Although registering your mark with the USPTO is not required to establish rights in a trademark, there are many important benefits of federal trademark registration with the USPTO.  For example, upon registration of a federal trademark, the registrant obtains rights to the mark throughout the United States retroactive to the date of filing of the application. The registrant also obtains the right to stop junior users from adopting confusingly similar marks in overlapping trade areas or anywhere the registrant has acquired goodwill in such mark.

Here are some of the benefits of registration:

  • Registration provides constructive notice nationwide of the mark owner’s claim in the mark and evidence of ownership of the mark.
  • The mark owner has the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
  • The mark owner may bring lawsuits for infringement in federal court.
  • The mark owner may be entitled to recover profits, damages and costs of infringement, attorneys’ fees and treble damages.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • The mark can obtain incontestable status after continuous use for 5 years after the date of registration on the Principal Register (which limits third parties’ rights to contest your mark).
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

An application for trademark registration requires: (1) a completed application form, (2) a nonrefundable filing fee ranging from $225-$375 per class of goods/services, and, for marks already being used in commerce, (3) specimens of the mark showing use of the mark in connection with the applicable goods/services.

Click here for more information about how to select and protect a trademark.