March 15, 2017

Key Legal Tip for Publishers: Make Certain Your DMCA Designated Agent Does Not Expire This Year

3 min

Have you submitted your new DMCA Designated Agent designation with the Copyright Office yet? It is due this calendar year. In case you are unfamiliar with the need to submit a new designation, or for those who do not have one at all, here are the key points:

Executive Summary

The Copyright Office went electronic late last year with regard to Digital Millennium Copyright Act "DMCA" agent designations. Any DMCA agent designations that were filed at the Copyright Office prior to 12/1/2016 expire this year if not renewed online. Any publisher that may have previously qualified for the safe harbor from liability for copyright infringement under Section 512 of the DMCA will lose this safe harbor if it does not submit this critical filing in 2017. It is critical that every publisher this pertains to files the requisite submission this calendar year.

Background on Digital Millennium Copyright Act (DMCA) "Safe Harbor"

Under the U.S. copyright law, if a third party uploads or posts copyrighted material to your website, and the third party did not have authorization to do so from the copyright owner/exclusive licensee, your company can be held strictly liable for copyright infringement. Even if your company did not affirmatively place the material on your website, or know it was infringing.

However, if you comply with the statutory requirements of Section 512(c) of the DMCA, your company may qualify for a "safe harbor" from this strict liability for the infringing material posted or uploaded by another party to your website. But, your company must do three things in an effort to qualify. And there is a critical impending deadline with regard to item 2 below.

  1. Designate, on your website in a publicly available location, an agent to receive notifications from third parties of claimed copyright infringement and include the name of the service provider, and the name, address, phone, fax, and email of the specific designated agent you have selected to receive notifications.
  2. Provide the U.S. Copyright Office with the required information for the designated agent. A number of court decisions have held that if you do not directly provide the U.S. Copyright Office with the required information about your designated agent, this is fatal to your request for a safe harbor from liability – period. This is the step that we find clients most often overlook.
  3. Respond expeditiously to any effective notifications, or "take down" notices you receive, as required by the statute. Because some notifications, and your response thereto, can be nuanced, we recommend you discuss with copyright counsel your own protocol for responding to these notifications.

How Might This Impact You?

The Office issued a final rule on November 1, 2016 requiring that any service provider who filed the old paper submission prior to December 1, 2016 file a new designation electronically using the new online registration system by December 31, 2017. If you do not, your previous designation will expire and you will lose your ability to seek a safe harbor from liability.

Of course, there may be some companies reading this who did not initially file a designation. You are currently exposed if you allow third parties to post content on your website or otherwise act as a service provider who could seek the safe harbor.

What Action Should you Take?

First, we recommend you check the Copyright Office website and/or your records to make sure you filed your designation in the first place. If not, do it immediately.

Second, if you did previously, make it a priority to file your new designation so it does not expire this year. The Copyright Office does not send reminders.

Third, make sure you are following the three steps noted above.