Earlier this year, the U.S. District Court for the Northern District of California issued its most recent opinion in Lenz v. Universal Music Corp., the long-running case over a twenty-nine-second YouTube video of two young children running in their kitchen to the Prince song "Let's Go Crazy." The case began more than a half-decade ago, when plaintiff Stephanie Lenz sued Universal after it requested that YouTube remove her video because it infringed on Prince's copyright in the song. Lenz asserted that Universal's alleged failure to consider fair use before requesting that YouTube remove the video constituted a violation of the Digital Millennium Copyright Act (DMCA). For a better understanding of the case, the issues involved, and the importance of the court's decision to today's copyright owners and content creators, we must first look all the way back to the late 1990s.
In 1998, Congress enacted the DMCA to "comply with international copyright treaties and to update domestic copyright law for the online world." Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004). Title II of the DMCA—the Online Copyright Infringement Liability Limitation Act—created a safe harbor to shield online service providers that store infringing material from liability for copyright infringement if they comply with certain requirements specified in the statute. 17 U.S.C. § 512. One such requirement is that service providers must "expeditiously" remove material that is claimed to be infringing. 17 U.S.C. § 512(c)(1)(C).
Copyright owners can request that online service providers remove or disable access to infringing material by sending them a Notification of Claimed Infringement—known as a "takedown notice." The takedown notice must include a statement that the copyright owner "has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law." 17 U.S.C. § 512(c)(3)(A)(v). Upon receipt of a proper takedown notice, the service provider must remove or disable access to the identified material and notify the alleged infringer, who can then submit a counter-notification to have the material restored. 17 U.S.C. § 512(g). Any person who "knowingly materially misrepresents" that content is infringing is liable for any damages incurred by the alleged infringer as the result of the service provider removing the material. 17 U.S.C. § 512(f).
The 9th Circuit in Rossi
In 2004, the 9th Circuit issued its only decision to date in a case filed by an alleged infringer for a wrongful takedown notice. In Rossi v. Motion Picture Association of America Inc., 391 F.3d 1000 (9th Cir. 2004), the plaintiff argued that the defendant Motion Picture Association of America Inc. (MPAA) did not have a "good faith belief" that plaintiff was infringing the MPAA's copyrights because it did not conduct a reasonable investigation into the allegedly offending website. The court disagreed, explaining that the DMCA imposed a subjective standard, not an objective requirement of a reasonable review. The court held that the DMCA imposes liability "only if the copyright owner's notification is a knowing misrepresentation." Id. at 1004-5. This means that a copyright owner "cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake. Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner." Id. at 1005.
"Let's Go Crazy #1"
In 2007, Stephanie Lenz uploaded the now-famous video of her children to YouTube and titled it "Let's Go Crazy #1." Several months later, Universal Music Corp., which administered copyrights for Prince, discovered the video after entering titles of Prince's most popular songs into YouTube's search field. Universal requested that YouTube remove a number of videos, including Lenz's video, and stated that it had a good faith belief that the identified videos were not authorized by the copyright owner, its agent, or the law. After YouTube removed the video, Lenz submitted a counter-notification claiming that the video constituted fair use, and sued Universal for sending the takedown notice.
The first question facing the court in Lenz was whether a copyright owner can form a "good faith belief" that material infringes upon its copyrights if it does not consider fair use in making that determination. In 2008, the court denied Universal's motion to dismiss, holding that for a copyright owner to have a "good faith belief," the owner "must evaluate whether the material makes fair use of the copyright." Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150 (N.D. Cal. 2008). It held that an allegation that a copyright owner did not properly consider fair use "thus is sufficient to state a misrepresentation claim pursuant to Section 512(f) of the DMCA." Id. at 1155. Despite the fact that the court denied Universal's motion to dismiss, it cautioned that it "has considerable doubt that Lenz will be able to prove that Universal acted with the subjective bad faith required by Rossi." Id. at 1156.
Later that year, the court denied Universal's motion to certify an interlocutory appeal and clarified that it "did not hold that every takedown notice must be preceded by a full fair use investigation." Lenz v. Universal Music Corp., 2008 WL 4790669, at *2 (N.D. Cal. Oct. 28, 2008). Rather, it explained, "in a given case fair use may be so obvious that a copyright owner could not reasonably believe that actionable infringement was taking place." Id. In such cases, which the court said are likely to be "extremely rare," the copyright owner must "at least" form a subjective good faith belief that the particular use is not fair use before sending the takedown notice. Id. In January, approximately six years after Lenz first uploaded the video to YouTube, the court denied motions for summary judgment filed by both Lenz and Universal, and paved the way for the case to proceed to trial. Lenz v. Universal Music Corp., 2013 WL 271673 (N.D. Cal. Jan. 13, 2013). In its opinion, the court held that while copyright owners must consider fair use before issuing a takedown notice, they are not required to engage in what the court called a "full-blown fair use analysis." Id. at *6. Rather, a copyright owner must make "at least an initial assessment" of the applicability of the fair use doctrine. Id. Despite this "requirement" to make an initial fair use assessment, and the court's finding that Lenz presented substantial evidence that Universal did not explicitly consider whether the video constituted fair use, the court held that Universal's "mere failure" to consider fair use is insufficient to give rise to liability under Section 512(f). Id. at *6. Instead, Lenz "must demonstrate that Universal had some actual knowledge that its Takedown Notice contained a material misrepresentation." Id.
While the court found no evidence that Universal subjectively believed that its takedown notice was deficient, it stated that willful blindness is "tantamount to knowledge," and held that Lenz could prevail if she established that Universal willfully blinded itself to the fact that her video constituted fair use. Id. at *7. To establish willful blindness, the court said that a plaintiff must prove that (1) the defendant subjectively believes that there is a high probability that a fact exists; and (2) the defendant takes deliberate action to avoid learning that fact. Id. In addressing the second factor first, the court held that a trier of fact could conclude that Universal took deliberate actions to avoid learning whether any particular use of one of Prince's works was protected by the fair use doctrine. Id. It reached this conclusion because Universal assigned the task of reviewing YouTube for infringing uses of Prince's songs "to a single person who was not given any information or training about fair use." Id. The court found, however, that Lenz did not present evidence suggesting that "Universal subjectively believed either that there was a high probability that any given video might make fair use of a Prince composition or that her video in particular made fair use of Prince's song 'Let's Go Crazy.'" Id. The court also held that Universal did not present sufficient evidence that it lacked a subjective belief that there was a high probability that any given video might make fair use of a Prince composition. Id. at *8.
The Rossi and Lenz decisions make it exceedingly difficult for a plaintiff to prevail on a Section 512(f) claim in the 9th Circuit. While Lenz "requires" copyright owners to explicitly consider fair use before issuing a takedown notice, the "mere failure" to do so does not necessarily subject them to liability. Rather, a subjective good-faith belief—even if that belief is mistaken—is sufficient for the copyright owners to prevail. Plaintiffs must instead establish that the copyright owner actually knew that its takedown notice contained a material misrepresentation or, under Lenz, that it willfully blinded itself to avoid learning that its notice contained such a misrepresentation.
Postscript: Both parties petitioned the 9th Circuit for permission to appeal the district court's ruling in Lenz, which the 9th Circuit granted in May 2013. See 9th Circuit Court of Appeals Docket Nos. 13-80055 and 13-80056 (9th Cir. 2013).
Originally published in the August issue of the Intellectual Property & Technology Law Journal.
Nicolas Jampol represents clients in media and intellectual property litigation. He also has extensive experience in complex commercial litigation, class action defense, and appellate litigation. He works in Davis Wright Tremaine's Los Angeles office.