Minneapolis’ own hometown hero Prince Rogers Nelson, formerly and currently known simply as “Prince,” has been in the news quite often in 2013. It began with his surprise, limited ticket performances in January, which he followed up with a surprise concert to close out the SXSW festival in Austin, Texas. Prince has also made legal news this year. He recently made headlines for sending DMCA take-down notices for eight video clips to Vine, Twitter’s video sharing site. In case you don’t know much about Vine, it is a mobile app that allows users to share video clips over the internet. The clips cannot be longer than six seconds, which seems to present a strong case of a defense based on fair use.
Members of the DuetsBlog staff have been posting regularly on trademark bullying in general, as well as on Minnesota’s attempts to address the issue through legislation. (See here, here, and here). A similar concern exists with copyright law, where copyright owners are sometimes accused of issuing meritless cease-and-desist letters. The most common complaint is that the allegedly infringing use is a “fair use” of the work, protected by the First Amendment. Thanks to the DMCA’s safe harbor provisions, websites and ISPs have an incentive to accept as true the allegations in a take-down notice. And, similar to claims of trademark bullying, the alleged infringer normally lacks the legal expertise and financial resources to assert their legal rights.
Back to Prince, though, who has a reputation for aggressive enforcement of intellectual property rights, as referenced by one blogger’s headline “Prince Still Hates the Internet.” Some of you may remember the case of Lenz v. Universal Music Corp., in which an internet user fought back after Prince’s representatives filed a take-down notice. The video in question was a 30 second home video clip of the user’s child dancing while the Prince song Let’s Go Crazy played in the background (the video has since been re-posted to YouTube and is available here).
Prince and his representatives were so concerned with this video that they sent YouTube a DMCA take-down notice. The lawsuit is now entering its sixth year of existence. On January 24, 2013, the federal judge issued an order denying both parties summary judgment. The basic legal issue in this case thus far has relied primarily on the interpretation of Section 512(f) of the DMCA, which provides that a copyright owner may be forced to pay damages, including attorney’s fees, if the owner “knowingly materially misrepresents . . . that material or activity is infringing.”
The Plaintiff in Lenz argued that the “good faith” requirement of the DMCA requires a copyright owner to consider whether an allegedly infringing use is protected by the fair use doctrine. The judge agreed and in its most recent order, ruled that “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.'” (Opinion available here).
The ruling could have serious consequences for copyright owners. Use of computer programs to identify infringing activity would no longer be sufficient, at least when there is an arguable claim for fair use. Of course, a “good faith” standard is not always difficult to meet. This is particularly true for a determination of “fair use,” which is applied on a case-by-case basis, based on a number of factors with varying importance. Consequently, a win for Lenz in this specific case may establish Section 512(f) as an avenue for relief from DMCA take-down notice abuse. However it is unclear whether Section 512(f) would have any teeth moving forward. There may be little to no protection if all an owner (or representative) must do is adopt a subjective conclusion regarding potential fair use. An owner could easily state that they considered the various factors, but one factor in particular tipped the scale toward a subjective belief that the fair use defense did not apply.
With regard to trademark bullying, there is no equivalent of the DMCA for trademark infringement. However, this does not mean that Lenz is irrelevant to cease-and-desist letters or notices of claimed infringement for trademarks. The ruling in Lenz might be relevant in the event a notice requires the owner to declare it has a good faith belief that the complained-of activity is infringing. Trademark owners might be expected to not only consider their own rights before filing a claim of infringement with a website, but also consider whether the alleged infringer has any strong or obvious defenses.
I’ll do the internet a favor and resist the urge to close with a Prince-based pun.