Behind the scenes of the Internet's current swirl of memes, mashups and other viral content is a massive system of takedown notices and counternotices passing back and forth between content owners, web hosts and users, intended to quickly eliminate infringing material that gets posted by users, while providing users the opportunity to object when they believe their postings have been unfairly removed.

This system was created by the mandates of the Digital Millennium Copyright Act (DMCA), and most of the major disputes that have arisen regarding the structure of the system have turned on a single question, variously applied: Whose burden is it? Should Web hosts have a duty to filter incoming content or not? What triggers sufficient knowledge of infringement for a Web host, such that it has a duty to remove content? And in the most recent decision by the 9th U.S. Circuit Court of Appeals on point, does a copyright owner have the burden to affirmatively consider fair use before sending a takedown notice? Given the scale of the takedown regime, the answers to these questions can cause tectonic shifts in respective financial burdens.

In Lenz v. Universal Music Corp., 9th Cir. Nos. 13-16106 and 13-16107 (Sept. 14, 2015), the 9th Circuit held that copyright holders must consider whether an apparently infringing use qualifies as a fair use before sending a takedown notice under the DMCA, and the failure to do so exposes the copyright owner to possible liability for damages under 17 U.S.C. § 512(f). At the same time, the court clarified that a copyright holder need not get the fair use analysis right, it must merely have a subjective good-faith belief that the use was infringing.

While most large content providers have already altered (where necessary) their practices following the lower court's holding in 2013, the Lenz decision highlights the central role of fair use in the modern copyright ecosystem and the need for copyright holders to carefully assess their claims. It also suggests that users who file lawsuits for improper takedowns will face a heavy evidentiary burden to actually prove a takedown was wrongfully issued.

Background: The Dancing Baby 

It may feel like years since the so-called "Dancing Baby" copyright case was last in the news because it has been years. So many viral videos — including too many other dancing babies to count — have come and gone since the YouTube video at the heart of the Lenz case was first introduced into our collective bloodstream back in 2007, a lifetime ago in the Internet era, where full-blown Internet phenomena are measured in weeks, if not days (Harlem Shake anyone?).

After Stephanie Lenz uploaded to YouTube a 29-second home video of her two young children dancing to the song Let's Go Crazy by the artist once-and-again known as Prince, Universal Music sent a takedown notice directing YouTube to remove the video as infringing. The notice included the following statement required under 17 U.S.C. § 512(c): "We have a good faith belief that the above-described activity is not authorized by the copyright owner, its agent, or the law." Over eight years of litigation (with no end in sight) would turn on that last clause, "or the law."

After YouTube notified Lenz of the takedown notice, she sent counternotifications that resulted in YouTube reposting the video, where it remains today, having garnered more than 1.3 million views (see Lenz filed suit, claiming that Universal Music misrepresented in the takedown notice that the video was infringing, and the case has been winding its way through the courts ever since (during which time the subject of the video has presumably abandoned onesies, Prince, and the innovative dancing style showcased in the video).

A Brief Primer on Fair Use

The Copyright Clause in the U.S Constitution strikes a bargain between creators and the public: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." In other words, the government gives creators a limited monopoly over their (original) works in exchange for bringing those works to the public.

The concept of fair use is an exception to this monopoly, pursuant to which copyrighted works can be used for certain purposes without the copyright owner's permission. While it is difficult to predict with any accuracy what uses courts will deem "fair" under the Copyright Act, the statute provides four factors that must be weighed, including the purpose and character of the use (and specifically, as interpreted by the courts, whether the use "transforms" the original for a different purpose), the nature of the copyrighted work, the amount of the portion used, and the impact of the use on the market for the original work.

While the underlying question in the Lenz case was whether a noncommercial, yet publicly shared, home video of toddlers dancing to a copyright-protected work qualified as a fair use, the specific legal question that played out in the courts was different: whether Universal was required to expressly consider whether the video was a fair use of Prince's song before sending a takedown notice under the DMCA.

The 9th Circuit Decision 

On Sept. 14, 2015, the 9th Circuit ruled that a copyright owner cannot claim a good-faith belief that a use is not authorized by the law without first considering whether the use is permitted under the fair-use doctrine. The court held that "the statute unambiguously contemplates fair use as a use authorized by the law." While Universal argued that fair use is merely an affirmative defense that excuses otherwise infringing conduct, the court disagreed, finding that, under the Copyright Act, a fair use is not an infringement in the first place.

After deciding that a copyright owner must have a "good faith belief" that a use is infringing (and thus not a fair use) to issue a takedown notice under § 512(c), the court turned to what exactly constitutes such a belief. The court explained that the law requires only a subjective, not objective, good-faith belief of infringement, and that the court will accept a copyright owner's belief that a use was not fair "even if we would have reached the opposite conclusion." The court further held:

[A] copyright holder's consideration of fair use need not be searching or intensive. . . . [F]ormation of a subjective good faith belief does not require investigation of the allegedly infringing content. . . .We are mindful of the pressing crush of voluminous infringing content that copyright holders face in a digital age. But that does not excuse a failure to comply with the procedures outlined by Congress.

The court cautioned, however, that "if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under §512(f)" and "[a] copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to §512(f) liability."

In dicta, the court also suggested, "without passing judgment," that use of computer algorithms as a first cut in the analysis was "a valid and good faith middle ground for processing a plethora of content while still meeting the DMCA's requirements to somehow consider fair use":

For example, consideration of fair use may be sufficient if copyright holders utilize computer programs that automatically identify for takedown notifications content where: "(1) the video track matches the video track of a copyrighted work submitted by a content owner; (2) the audio track matches the audio track of that same copyrighted work; and (3) nearly the entirety . . . is comprised of a single copyrighted work."

On its face, this suggestion is rather remarkable: that sufficiently sophisticated computer algorithms could substitute for a fair-use analysis by a human being. But then the court continued: "Copyright holders could then employ individuals . . . to review the minimal remaining content a computer program does not cull." By falling back on the need for human review of content culled by those algorithms, the 9th Circuit seems to have reinforced the notion that the fair-use analysis will always require some amount of individual review.

Implications of the Decision 

This most recent decision in the Lenz saga provides some guidance to copyright owners who send takedown notices. First, copyright owners should have written procedures for determining whether to include a particular video in a takedown notice, and those procedures should expressly require a consideration of fair use. Second, the employees responsible for determining what material is infringing should receive information and training about fair use. Third, to the extent possible, the employees making these determinations should document that they did, in fact, consider fair use before issuing a takedown notice. Not only will adhering to these guidelines decrease the likelihood of liability for an improper takedown notice, but it also will decrease the likelihood of facing potentially lengthy and expensive litigation in the first place.

As for those who have their material wrongfully removed from the Internet in response to a takedown notice, unless they have evidence that the copyright owner subjectively believed that the takedown notice was improper, the most effective remedy will likely be to prepare and submit a counternotification to have the material restored and not to file a lawsuit (importantly, however, once a service provider receives a counternotification, the only way for a copyright owner to stop the allegedly infringing material from being restored is to bring a lawsuit against the user).

While the 9th Circuit's decision is notable for what it held, it is also notable for what it did not hold: It did not actually decide whether Stephanie Lenz's YouTube posting was fair use in the first place, nor did it decide whether Universal misrepresented that the video was not authorized by the law in its takedown notice. The case will be sent back to the district court for those determinations and will likely find itself back in the 9th Circuit in another few years.1 At this rate, the case may be heard by the Supreme Court just as the dancing baby is headed to college.

This Article was published in the Intellectual Property & Technology Journal, Vol. 27, No. 12 (December 2015).


1 On October 20, 2015, both sides filed petitions for rehearing with the 9th Circuit, hoping to obtain a more decisive victory. As of this publication, the court had yet to rule on the petitions."