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Author Topic: BWP Media appeal in Texas: DMCA Agent Not Required for Safe-Harbor Protections  (Read 2408 times)

Matthew Chan

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A recent appeal in Texas has revealed an important defense for those of you who host online forums, blogs, and other websites that permit third-parties to post.  (For example: the ELI Forums.)

Although I "own" the website, many others post here. The general rule of thumb for website owners such as myself is that each person is responsible for what they post and write. I don't allow people to upload images, videos, or documents to the ELI Forums because I don't want the headaches of policing such content. I also don't want to get caught up in the argument that because someone posted things they should not have, someone accuses ME of being responsible for it.

In theory, there are federal laws in place that allow internet service providers (such as little ole me with this forum) to have protections from what end-users post. If that didn't happen, very few people would ever let ANY user post on their website. There would be no Facebook, Pinterest, Twitter, Amazon, eBay, or nearly any other website where end-users are involved. It would be too risky for any website owner to permit end-users to participate without those protections in place.

However, the whole copyright thing makes this a bit more complicated with the DMCA provisions. Essentially, the general rule of thumb in dealing with copyright matters is that ISPs are supposed to respond to copyright complaints and those complaints go to a DMCA agent.  But if you are a small website or someone new to the online world, most people are not going to the trouble of registering and setting up a DMCA agent just because someone allows user comments or user content.

In the past, there was some question whether an ISP had "safe harbor" protections if they did NOT have a DMCA agent registered.  This issue has come up a couple of times with ELI readers. And there had been no clear answer only guidelines. Others have taken a stronger stance than I have regarding DMCA agent status for a website owner. It is most certainly the SAFE thing to do, but does that mean you forfeit all your rights if you don't want to spend the money or go through a hassle to setting up a DMCA agent? I was never convinced that someone automatically lost "safe harbor" protections without a DMCA agent.

Well, BWP Media apparently was not satisfied with letting the matter go and they sued a website provider (T&S Software Associates) in a Texas court because one of their users supposedly posted copyrighted images belonging to BWP Media.  The defendant did NOT have a DMCA agent at the time of the supposed infringement by the end-user. There was no accusation by BWP Media that T&S Software Associates committed the supposed copyright infringement. But BWP Media, in its infinite wisdom and persistence to make a money grab, filed suit against T&S Software Associates.

The appellate court provided this case summary:

T&S hosts a website that includes a public forum called “HairTalk.” Users of the forum may post content, share comments, ask questions, and engage in online interactions with other users on a range of topics including hair, beauty, and celebrities. Use of HairTalk is governed by terms of service providing that “any photo containing . . . celebrities . . . or any copyrighted image (unless you own the copyright) is not permitted.” Every time someone logs on to HairTalk, the user must agree to these terms. Also, each page of the website includes a “contact us” link, which allows anyone to contact the website to report objectionable content. During the relevant time period, T&S did not have an agent designated to receive notices of content that should be removed as required to qualify for the statutory safe harbor of the Digital Millennium Copyright Act (“DMCA”). The specific section on the protections arising from naming an agent is 17 U.S.C. § 512(c).
 
Plaintiffs BWP Media USA and National Photo Group (collectively, “BWP”) are registered owners of various celebrity photographs. Three photographs owned by BWP were posted by third-party users on HairTalk without BWP’s permission. They depicted Ke$ha, Julianne Hough, and Ashlee Simpson. BWP sued for copyright infringement. The suit claimed that T&S was liable for its users’ infringement because it failed to designate a registered agent under Section 512. T&S learned of the photographs upon commencement of this suit and promptly removed them. The district court granted summary judgment in favor of T&S as to both direct and secondary infringement. BWP appeals the district court’s judgment only as to T&S’s direct-infringement liability.


T&S prevailed in the lower Texas court in that first lawsuit but BWP Media apparent found that ruling by the lower court unsatisfactory and filed an appeal. And to make this easy, the Texas appellate court affirmed (supported) the lower court's decision.

http://law.justia.com/cases/federal/appellate-courts/ca5/16-10510/16-10510-2017-03-27.html

It is long reading and I thought it got complicated in places. But a quote jumped out at me:

T&S points out that Section 512 includes a caveat: “The failure of a service provider’s conduct to qualify for limitation of liability under this section shall not bear adversely upon the consideration of a defense by the service provider that the service provider’s conduct is not infringing under this title or any other defense.”

Another quote:

Even though the DMCA was designed to provide ISPs with a safe harbor from copyright liability, nothing in the language of § 512 indicates that the limitation on liability described therein is exclusive. Indeed, [Section 512(l)] provides explicitly that the DMCA is not exclusive . . . . Given that the statute declares its intent not to “bear adversely upon” any of the ISP’s defenses under law, including the defense that the plaintiff has not made out a prima facie case for infringement, it is difficult to argue, as CoStar does, that the statute in fact precludes ISPs from relying on an entire strain of case law holding that direct infringement must involve conduct having a volitional or causal aspect.

MY takeaway that I am sharing with my readers is that we now have a strong appellate case to quote where DMCA Agents are NOT required for a website owner safe-harbor protections against infringing material an end-user may post. It does NOT absolve website owners to promptly respond and takedown infringing content after being notified. But it does absolve website owners for being RESPONSIBLE for what another end-user posted.

BWP Media pushed way too hard and they got spanked TWICE. They were too blinded in their pursuit of money.

Congratulations and thanks to T&S Software Associates for making a stand and defending the case. They are one of the few who were able and willing to fight back.  It could not have been cheap and I suspect that T&S Software Associates will try to recover some costs and legal fees from BWP Media for appealing this case and lost.

So, the moral of the story is, if you are a website owner and some irresponsible end-user recklessly posts copyrighted content, the image owner/artist doesn't get to automatically squeeze money from the website owner even if they don't have a DMCA agent.  Website owners still have safe-harbor protections and defenses. The website owner has the responsibly to removed infringing content ASAP once notified, but NO, they don't have to pay money to the image owner/artist.

It is a clear victory for justice and fairness. And a strike for the overzealous pursuit of money in these types of cases.
« Last Edit: April 05, 2017, 09:06:07 PM by Matthew Chan »
I'm a non-lawyer but not legally ignorant either. Under the 1st Amendment, I have the right to post facts & opinions using rhetorical hyperbole, colloquialisms, metaphors, parody, snark, or epithets. Under Section 230 of CDA, I'm only responsible for posts I write, not what others write.

Greg Troy (KeepFighting)

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Very interesting, thanks for sharing this Matthew.  I will have to read it again more thoroughly when I have time this weekend. This deserves a second look.
Every situation is unique, any advice or opinions I offer are given for your consideration only. You must decide what is best for you and your particular situation. I am not a lawyer and do not offer legal advice.

--Greg Troy

 

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