Prince, The Dancing Baby, Fair Use, and the Takedown

The prodigiously talented Prince – singer, composer, guitarist, dancer, and more – is also a frequent instigator of litigation. He clearly takes his copyrights seriously. He’s not always as transcendent in the courts as he is in Paisley Park, however.

In February 2007 Stephanie Lenz uploaded to YouTube her videotape of her young son walking and dancing to Prince’s hit “Let’s Go Crazy.” Prince’s music publisher Universal filed a “Takedown” Notice in June 2007 demanding that YouTube remove the video from its website. Ms. Lenz took the unusual step of turning the tables on the Takedown Notice sender. She sued Universal. Judge Fogel in the federal district court for the Northern District of California indicated early on that her video was protected by the fair use defense.

The legal backdrop for the case is as follows. The Digital Millennium Copyright Act (“DMCA”) provides that if a website accepts uploads of user–generated content (like your own video of your adorable Australian Labradoodle, your late-night Karaoke performance, or a purloined copy of Les Enfants du Paradis alike) the website has a “safe harbor” from copyright infringement and therefore is not liable for your copyright infringement if it follows certain minimal procedures. These steps include designating a Copyright Agent and posting – and following — a copyright policy. If a copyright owner sees or hears something it believes is infringing it must send a formal Takedown Notice — no need to file a lawsuit typically — that complies with the DMCA. If the website takes down the accused content it enjoys the safe harbor. Suffice it to say, the procedures get much more complicated if you want to probe more deeply.

Judge Fogel’s latest orders came in January 2013, this time on summary judgment motions in the case. The ruling, as the Electronic Freedom Frontier Foundation (which assisted Ms. Lenz in her action) notes, sends “contradictory signals on the future of fair use under the DMCA.”

What’s a copyright owner to do? The Court wrote that “at minimum, for the reasons discussed in its prior order…. a copyright owner must make at least an initial assessment as to whether the fair use doctrine applies to the use in question in order to make a good faith representation that the use is not ‘authorized by law.’” The court further said that the “evidence is sufficient to establish that Universal issued its Takedown Notice without considering fair use.” It appears that a party in Universal’s position must make the legal determination of whether the facts of the use are subject to the fair use defense. The court left unsettled whether Universal had “willfully blinded” itself to the fair use defense. For music companies who are metaphorically in a bunker where it seems that the world is against them, the original Lenz decision had to provoke cries of “Give me a break.” Yet, the counter-view is if fair use applies, isn’t it only fair to consider it?

I’ll submit for consideration the thought that Congress largely got the big picture of the DMCA right. If the DMCA didn’t exist, websites like YouTube and Facebook would run the real risk of crippling lawsuits for copyright infringement. Copyright infringement is what the law calls a “strict liability tort”. In other words, even if someone distributing a copyrighted work has no knowledge – or even any practical means of knowing — what’s infringing it’s liable. The bookstore selling an infringing book is technically liable for copyright infringement. So, if websites were liable for third party postings the Internet would be a whole lot less vibrant than it is today.

Can and should the DMCA be modified? Yes, the notice and counter-notice procedures need tightening. It’s also reasonable to say that before the Lenz litigation, the applicability of fair use to DMCA notices had not been the focus of much discussion. After the Lenz decision is over we will have more guidance as to the state of the law. Ultimately, the applicability of “fair use” may need consideration by Congress.

Many other DMCA Takedown Notice procedures need review. For example, the takedown notice provisions are open to abuse. A prankster (or astute musical critic) was able to remove Justin Bieber videos from YouTube. (Yes, I’ve seen the Biebs in concert – opening for Taylor Swift, who I went to see. And while I can’t condone illegal behavior in the slightest and therefore am compelled to condemn it, I can understand the motivation.)

When Stephanie Lenz took a video of her baby son dancing on the kitchen floor, who could know all that would come? This is truly the power of the Internet at work.

In February 2015, our colleague and friend, partner Mark Fischer, passed away. We have made his blog posts available in honor of both his nuanced and wide-ranging knowledge of intellectual property, new media and entertainment law and of his entertaining style. Please read our tribute to Mark in the firm’s Alumni Spotlight publication and his obituary in the Boston Globe.