In the copyright strategy playbook there are offensive tools and defensive tools. We use offensive tools to advance copyright ownership and defensive tools to mitigate potential liabilities. Copyright compilation registration is an offensive tool, while the DMCA safe harbor is a defensive tool. Even though these concepts are distinct, there is often confusion between them, as some of the processes sound similar, and the Copyright Office manages both. We thought it would be valuable to review each of these tools to help you understand the distinction and when you might use them.
Note: This post assumes that you have a basic understanding of copyright ownership, if you want a refresher on that subject, Mitch wrote a summary here.
Copyright portfolio registration basics
The selection, coordination, and arrangement—or “compilation”—of the elements in the MLS database is subject to copyright, so long as there is some creative expression in it. The compilation copyright is distinguished from the copyrights in the underlying components, like photographs, free-form remarks, and other content subject to copyright. (It should also be distinguished from the term “compilation” as it is used in NAR policies and model rules—there, it refers to something more than the copyright compilation.) An MLS may choose to register its compilation copyright with the U.S. Copyright Office as part of its copyright portfolio strategy. Additionally, MLSs that have acquired copyright ownership in the underlying elements in the MLS database (photographs, free-form remarks, etc.) may also choose to register copyrights in those elements with the Copyright Office.
Copyright in the MLS compilation and other elements can be registered with the Copyright Office via the group registration process under Circular 65 (the circular is currently under revision and is temporarily unavailable online; see the Copyright Office Compendium). Registration filings can include information for up to three months; so, an MLS should consider updating its registration quarterly to ensure that the filing includes all new listing content.
While registration with the Copyright Office isn’t required to obtain protection for a copyright, it does offer some advantages. Registration of a copyright is evidence of copyright ownership. In the event the MLS sues an infringer, the copyright registration establishes the MLS as the owner of the copyrights it has registered, and the infringer has the burden of proving otherwise. Additionally, registration of a copyright helps the MLS prepare for litigation. The Copyright Act requires that copyright owners register their copyrights before filing a lawsuit. So, registration of the compilation copyrights means the MLS is ready to file litigation against a copyright infringer, if needed. Finally, copyright owners that register their works may also recover attorneys’ fees and statutory damages in an infringement lawsuit.
These benefits are also valuable outside of litigation as they create powerful, real penalties that an MLS can reference in stopping improper use of its listing content. When an MLS becomes aware of a potential infringer or improper use of its listing content, it can send the infringer a cease and desist letter identifying the various statutory remedies the MLS may be entitled to as a result of its copyright ownership and compilation registration. This puts the MLS in a strong position to deal with the infringer and deter future misuse.
While registration of the MLS database plays an important role in protecting listing content, it plays an offensive role. Compilation registration may be used to enforce an MLS’s copyright ownership against a copyright infringer. If we switch around the players and instead think about the MLS as a potential copyright infringer, compilation registration doesn’t provide any type of liability shield for the MLS. If someone accuses the MLS of copyright infringement, the MLS needs a defensive tool to mitigate negative outcomes; this is where the DMCA safe harbor comes into play.
DMCA safe harbor background
The DMCA, which is short for the Digital Millennium Copyright Act (17 U.S.C. § 512) was signed into law in 1998. One of key features of the DMCA is that it established new limitations of liability for service providers, if certain conditions are met. This limitation of liability is often referred to as the DMCA safe harbor. Note that this is only one part of the DMCA; the Act has five titles in total, all of which have detailed provisions that update various aspects of U.S. copyright law.
The DMCA safe harbor is only available to service providers. A service provider is an entity offering transmission, or connection, for digital online communications between or among users, of material of the user’s choosing. There are four categories of activities under which a service provider can qualify for the safe harbor: transitory digital network communications, system caching, information residing on systems or networks at the direction of users, and information location tools. In the MLS world, the third activity, information residing on systems or networks at the direction of users, is the most relevant.
How the DMCA safe harbor works
For your organization to avail itself of the DMCA safe harbor, it must not have knowledge of the infringing activity, it must not be aware of facts or circumstances from which infringing activity is apparent, and upon obtaining such knowledge or becoming aware of infringing activity must act expeditiously to remove or disable access to the material. Additionally, the service provider must not receive a financial benefit from the infringing activity when the organization has the right and ability to control the infringing activity. Upon receiving proper notice, the service provider must act expeditiously to take down any infringing material. Additionally, the service provider needs to have filed a designated agent with the Copyright Office and display its designated agent on its website. The Copyright Office maintains a database of all the organizations and their designated agents that is searchable by the public. The DMCA also lays out a specific procedure for notification and takedown.
So, how do all these things work in the real world? The MLS completes a designated agent registration with the Copyright Office and displays a DMCA notice on its website. When Photographer A looks at the MLS’s public-facing website and sees that one of her professional photos has been copied without permission and is displayed on a listing, Photographer A will then follow the DMCA takedown procedure. Upon receiving the notice, MLS promptly removes the photo. If MLS follows this process and meets the other procedural requirements of the DMCA noted above, then MLS can shield itself from the liability for copyright infringement from Photographer A. This example simplifies what is complex analysis and process, but you get the idea.
Updates to the DMCA
When the DMCA was signed into law in 1998, the Copyright Office issued an interim regulation with the process for registering a designated agent with the Copyright Office. It described the information required and also the filing fee ($105, plus an additional fee of $35 for each group of one to ten alternate names used by the service provider). The Copyright Office maintained a database of all the designated agents, which linked the service provider name to the PDF copy of the designated agent registration form. There was some indexing of the service provider names and some limited search functionality in the old database. You can check out the old database here.
In October 2016, the Copyright Office issued a final regulation that announced the completion of a new electronic system to designate and search for registered agents. In addition to modernizing the database, the final regulation introduced a much lower fee of $6 per filing (with no additional fee for alternate names). You can check out the new system here. Under the final regulation, all previous registrations submitted to the Copyright Office must be resubmitted in the new electronic system by December 31, 2017. A filing is active for three years, so designated agent filings will need to be renewed periodically. (We are uncertain whether the new system sends out a reminder for renewal.) The other requirements of the DMCA safe harbor, such as displaying the designated agent’s contact information on your website and complying with the takedown procedure, and other aspects of the DMCA, remain unchanged.
Hopefully, these explanations have helped to clarify how copyright portfolio registration and the DMCA safe harbor are separate, but important, parts of a winning strategy. While both processes have some similarities, they each offer different strategic benefits to MLS in its overall rights enforcement and risk strategy.
Also, if you previously completed a paper DMCA designated agent filing, you’ll have to complete a new filing in the electronic system before the end of the year to continue to avail your organization of the benefits of the DMCA.
Victor Lund says