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Online Piracy: 9th Circuit Cautions Copyright Holders re DMCA Takedown Notices


Franchise Agreement LawyerIntellectual Property Attorney



by Tal Grinblat
(818) 907-3284


A mother who uploaded a 29 second video to YouTube probably never dreamed she'd wind up with over a million views and a lawsuit by a major music publisher that went to the Ninth Circuit court of appeal.

Stephanie Lenz first videotaped her toddlers cavorting in her kitchen back in 2007 – Prince's Let's Go Crazy was playing in the background. She posted the video online along with the title "Let's Go Crazy" #1 to share with her family and friends. About four seconds into the video, Lenz asks her thirteen month-old son “what do you think of the music?” after which he jumped up and down while holding a toy.

An employee of Universal's music division (acting as Prince’s publishing administrator responsible for enforcing his copyrights) found the song on YouTube, considered the video's title and Lenz's question to her son and other details, to conclude the song was the focus of the video. Universal then sent YouTube a takedown notice pursuant to Title II of the Digital Millennium Copyright Act (DMCA) demanding the removal of Lenz's video.

To avoid infringement claims, YouTube complied with the DMCA notice and subsequently notified Lenz of the removal – citing Universal's claims of copyright infringement. Section 512(c) permits service providers, like YouTube to avoid copyright infringement liability for storing users’ content if the service provider “expeditiously” removes or disables access to the content after receiving notification from a copyright holder that the content is infringing. 17 U.S.C. § 512(c).

Lenz responded with a counter-notification to Universal, asserting fair use of the Prince song, and a demand that YouTube reinstate the video.

Abuse of the DMCA

If an entity abuses the DMCA notice procedure, it may be subject to liability under §512(f). That section provides:

Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages.

The 9th Circuit, in considering Lenz's claims that Universal misrepresented Lenz’s copyright infringement in their takedown notice to YouTube, questioned whether or not Universal abused the takedown procedures by not first evaluating whether or not the alleged infringement constituted fair use.

The Copyright Act of 1976 defines fair use as use of another’s work for purposes of criticism, comment,  news reporting, teaching, scholarship, or research (17 U.S.C. § 107). The Act includes a four part test to determine what constitutes fair use:

(1) Purpose or character of use, including commercial or nonprofit purposes;

(2) Nature of the copyrighted work;

(3) Amount of the work used;

(4) Effect of the use of the work on its market value.

The three judge panel decided there was not enough evidence to conclude that Universal knowingly made misrepresentations of copyright infringement in the DMCA takedown because the copyright holder need only form a subjective good faith belief that a use is not authorized to bring a DMCA take down notice.  However, the Court made it clear that copyright holders must consider the doctrine of fair use before issuing takedown notices:

Copyright holders cannot shirk their duty to consider—in good faith and prior to sending a takedown notification—whether allegedly infringing material constitutes fair use, a use which the DMCA plainly contemplates as authorized by the law. That this step imposes responsibility on copyright holders is not a reason for us to reject it. 

Should a jury conclude that Universal ignored or neglected to assess fair use before sending the takedown notification, it will be liable for damages.  Similarly if in evaluating the evidence a jury finds Universal’s actions were NOT sufficient to form a subjective good faith belief about the video’s fair use or lack thereof, Lenz could again recover damages from Universal, even if Lenz’s damages are nominal.

An attorney at the Electronic Frontier Foundation whose goals include protecting free speech online and represented Lenz, issued this statement:

Copyright abuse can shut down online artists [sic]   political analysts or — as  in this case — ordinary families who simply want to share snippets of their day-to-day lives. Universal must stop making groundless infringement claims that trample on fair use and free speech.

Tal Grinblat is an Intellectual Property Attorney and Shareholder at our firm. Contact him via email: or by phone: (818) 907-3284.

This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.


Show Me the License: Is Your Company Ready?


Business Litigation Attorney EncinoBusiness Litigation Attorney


by David Gurnick


Good record-keeping is a burden. But doing so is important. Here is an example of why it is important to keep good records of all software licenses.

Business Software Licensing LawThe Business Software Alliance is a consortium of large software and tech companies like Adobe, Intel and Microsoft. One of BSA’s missions is to stop software piracy.

BSA advertises, asking the public to report piracy. BSA’s ads encourage workers to report their employers for potential unauthorized software, via a toll free number or webform. BSA offers cash rewards. Their website notes that in a recent year, they investigated over 15,000 piracy reports. Many of the reports are from disgruntled ex-employees, seeking revenge for real or perceived grievances.

BSA contacts businesses suspected of using unauthorized software and often demands that the company do a self-audit and inform BSA of all unlicensed software in use. BSA then negotiates settlements, typically a multiple of the license fees that would have been charged. BSA claims the multiplier is essential to deter piracy. The multiplier also generates more revenue for BSA.

Company self-audits might identify typical uses of software programs, for example Adobe Photoshop, Microsoft Office, or other programs. Sometimes a company will respond pointing out that the software was purchased properly and is being used legitimately. One of BSA’s possible responses: “Show us the licenses.”   

Software Licenses: What Does the Law Say?

What if the software was legitimately purchased many years ago? Who keeps copies of old licenses and purchase receipts? 

Most record retention policies allow destruction of documents after four, five or seven years. Many companies continue to use software for a decade or more. Even a retention policy of 10 years would not produce software licenses or purchase receipts for software purchased that long ago. 

Having no proof of purchase and no copies of licenses could potentially result in financial penalties for many companies.  Because, under the law, a software maker like Adobe, Microsoft or BSA as their representative, can prove infringement by showing just two facts: 

  1. That it owns the copyright for the software (easy for Adobe to prove with regard to Photoshop, and for Microsoft to prove with regard to Windows, Word or Excel); 

  2. The company used the software (also easy to prove, especially when the defendant acknowledges using these programs). 

Under the law, the company’s response – that the software was legitimately purchased, and is used under a proper license – is a legal defense.

The law says it is the company’s burden to prove it has a license from the copyright owner. The proof is a copy of the license or proof of purchase. A company that cannot produce a license or proof of purchase may be found liable and labeled a “pirate.”

For a company that cannot readily find such records, there might be secondary methods to prove software was licensed. 

A company might ask the supplier of the software if it still has records of the original sale. The software maker might have records showing the original software purchase was registered by a warranty registration. A software consultant or technology officer may have other records proving the purchase, based on requests for assistance or consultation with the maker over the years.  Old billing and payment records might be unearthed, to see if they reflect the original purchase. But often such records are difficult, or impossible to find.

For most companies, the message is clear: Keep the purchase records and licenses for all software, permanently.

Because copyright ownership can last over a hundred years, and it is always the user’s burden to prove proper licensing, these records may be essential, even many years after the software was first purchased. It is easy to take a photo or screen shot and save these in electronic files. Then, if you are contacted by BSA or someone else demanding that you prove your software is authorized, you will be readily able to do so.

With BSA asking potentially disgruntled employees to report, this is a relatively simple step for proving you're licensed to use.

David Gurnick is a business litigation, franchising and licensing attorney. Contact him directly for more information at 818.907.3285 or email:



This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

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