44

A very large site and my site are both licensed to use product images created and photographed by the same vendor. Now the large site comes after my site and sends a DMCA notice to my hosting provider, asking us to take down quite some of our most popular products.

While it's absolutely a false claim and it's possible that they had no idea we were licensed just as they were, it seems I have to take down the infringing materials and send back a counter-notice and wait for 14 days?

My question is is this fair?

14 days are enough for Google to de-index the page and for it to lose all the ranking juices. Not to mention the sales losses.

What if they actually know we are licensed but just wanted to ruin our site rankings and keep coming after us in future?

Do we still have to follow the legal procedures to take down whatever products they claim infringing for 14 days? What better options do we have here?

Update

After I first posted this question, my host restored the allegedly infringing product after 14 days of my providing the counter DMCA notice. Now the same complaint is after us again on another of our popular products. This is really annoying and stupid.

How can I end this once and for all?

We are not physically in United States, can we still find someone to win the lawsuit for us? Or is there any other way to stop them?

  • 2
    Could you file the exact same complaint against them? Doesn't solve your issue, just wondering. – ESR Aug 14 '18 at 2:15
  • 8
    @EdmundReed Corporations get away with filing false DMCA notices all the time through institutional incompetence. However, if you file one back as an individual knowing full well the circumstances, that's wilful perjury. – richardb Aug 14 '18 at 7:34
  • @richardb Not quite. If I were to send a notice, it would say, under pain of perjury, that I owned the copyright on something (like this comment). I would then claim that your picture infringed on my copyright. Ridiculous, but not perjury. However, in this case, it sounds like the very large site doesn't have the copyright, and is therefore guilty of perjury. – David Thornley Oct 5 '18 at 19:29
47

There is a slight confusion here: The large company sent the DMCA notice to your host, not to you. You are not taking down anything. The host does that.

If the DMCA takedown notice is following all the rules, then your host has two choices: Take down your content, or be willing to be part of a copyright court case. Assuming that the host doesn't want to go to court and potentially lose tons of money, they will take down your content. Until you send a counter notice.

Now you can only legally create a DMCA notice as the copyright holder or their agent. Whoever sends the takedown notice must under threat of perjury declare that they are the copyright holder of material that they believe you are infringing upon. It seems that company is not the copyright holder, therefore perjury. (If they make a mistake, and your material is not their copyrighted material, that's legally Ok. But if they are not copyright holder, that is perjury). If you are sure that happened, a good lawyer will love to take them apart.

  • 31
    Except the system doesn't seem to give a hoot about that "under penalty of perjury" bit. – Loren Pechtel Aug 13 '18 at 23:56
  • 5
    Please tell me there are repercussions for large companies filing such claims...doesn't seem fair at all that they are allowed to do this. – ESR Aug 14 '18 at 2:15
  • 20
    @EdmundReed Since when is the law about being fair? – Mast Aug 14 '18 at 6:12
  • 7
    @EdmundReed welcome to the world of Copyright Bullying. The cost/effort (as a % of the income) for them to file against you is lesser than your own, so even when you fight back you lose in the attrition. – Mindwin Aug 14 '18 at 14:08
  • 4
    @Mindwin As an addendum, see patent trolls. Same idea, different part of the same system. – Nic Hartley Aug 14 '18 at 17:35
26

The most important fact to remember is that under DMCA safe harbor rules, you do not make a judgment of the merits of the allegation, you simply follow the rules. The second most important fact to remember is that you have to follow the rules exactly. The point of the rules is that it immunizes you from being sued either by the uploader or by the copyright holder. I'm speaking to "you" as though you are a provider, who has received a proper DMCA takedown notice.

The service provider takes down the allegedly infringing material, having gotten notice. The uploader can then file a proper counter-claim with the ISP. The ISP notifies the complainer of the counter-claim and waits between 10 to 14 days for the him to (claim to) file lawsuit; if they don't, the ISP puts the material back up (otherwise, the courts sort it out).

The uploader does not have any requirement to take material down (that requirement is imposed on the service provider). The uploader can (1) provide a proper counter-claim to get the material restored and (2) possibly sue the complainer for filing a false DMCA complaint (the statements that are filed have a "penalty of perjury" requirement associated with them). Option (2) is a mild long-shot because you'd have to prove that they knew their statement was false. If the material is actually licensed by a third party such as a photographer, that would clearly be a false statement (the complaint has to be filed by the copyright holder, not a person who has licensed the protected material). One of the requirements for the take-down notice is "A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed". When you license material from an owner, you do not gain authorization to act on behalf of the owner: claiming that you are authorized to act on behalf of the owner (or are the owner) is a false statement.

  • 3
    Can the licensee, rather than the copyright holder, legitimately make a DMCA takedown request? Seems... odd that they can. – Peter K. Aug 13 '18 at 16:27
  • 2
    @PeterK.: Only someone authorized by the copyright holder to act on its behalf can submit a legitimate notification. (One of the elements of a valid notification is a statement that the submitter of the request is such a person.) They can still request that the material be taken down, but the DMCA does not obligate anyone to care. – cHao Aug 13 '18 at 22:22
  • 1
    @cHao That sounds more like what I would expect. Why should I care what another licensee says? It's like we both wore the same dress to the ball... it's embarrassing, but... we both should have bought a more exclusive gown. – Peter K. Aug 13 '18 at 22:24
  • 2
    Could you reword this sentence that confuses me please? "The ISP notifies the complainer of the counter-claim and waits between 10 to 14 days for the him to (claim to) file lawsuit; if they do, the ISP puts the material back up (otherwise, the courts sort it out)." Does the material stay down for 10 to 14 days after the counterclaim is filed and go back up automatically? Does it go up for 10 to 14 days and then come down again when the claimant files suit? Or something else? – Qsigma Aug 14 '18 at 8:56
  • 1
    @Qsigma I believe it stays down for 10 to 14 days for the claimaint to file suit, and if they don't it can come back up. I think the sentence meant to say "if they don't..." – IllusiveBrian Aug 14 '18 at 12:33
3

But also consider the possibility that the Photograph Vendor is at fault here.

If a photographer is commissioned by a Client (e.g. Very Large Site) to make a number of photographs for them, it is not uncommon for the contract to include an assignment of copyright to the Client.

Then, if photographer overlooks this and subsequently sells licences for the same photographs to 3rd parties, they might not have the freedom to do so. I would guess those licences could then be challenged by the original Client.

Under those conditions the Client (Very Large Site) would be the copyright holder and able to submit the DCMA notice.

0

As others have said, merely being licensed to use the images does not authorize Very Large Site to file DMCA takedown notices. If VLS claimed to be the copyright holder or the holder's agent when it was not, you could sue VLS. A lawyer expereinced in copyright issues would surely be needed for this, and there would be significant upfront costs, I would think.

However, it is at least possible that VLS contracted with the copyright holder of the images, getting the right to act as agent and file takedowns. In that case, such a suit would go nowhere. (of course if you could prove that VLS knew or should have known that you were licensed, you could sue on those grounds, but proof of knowledge is often hard to get.)

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.