As a creator, you can be on either side of a copyright claim dispute. Someone might accuse you of infringing their copyright, and you might accuse someone of infringing yours. In an earlier article, we went over typical defenses like fair use that you can use if someone accuses you of infringement. Now, let’s look at what you can do if you think someone has infringed your copyright or if your accuser didn’t like your fair use argument.
Three Options for Enforcing Your Copyright Rights
If you think someone has infringed your copyright rights, you can do something about it. But you can also decide to do nothing about it.
Let’s say you’re a creator of an online show about a unique superhero. Your fans create some fan art. Technically, these are derivative works that build on your base copyright rights. It’s your choice to stop these fans or let them continue so you get a little free marketing.
If you decide to let them continue, then you don’t have to say or do anything. But if you wish to stop them, then you have three options:
- Sue for infringement in a federal court (under limited circumstances, you can sue in a state court)
- File a takedown notice under the Digital Millennium Copyright Act (DMCA)
- File a claim at the Copyright Claims Board (CCB)
We discuss each of these three options below.
You Can File a Copyright Lawsuit
The standard way to stop an infringer is to file a copyright infringement lawsuit.
To do that, you first have to have a copyright registration for the work that you think is infringed. It’s OK if you register after the infringement has occurred. You just won’t be able to get damages that can be automatically awarded from the copyright statute (called statutory damages).
Statutory damages can range from $750-$30,000 per work. It the infringement is willful, it can go up to $150,000 per work. To get statutory damages, you have to register your copyright within three months of first publication or before your work was infringed. The court also has discretion on awarding attorney’s fees and court costs.
Instead of statutory damages, you can ask for actual damages.
But there are some practical things to think through when suing a copyright infringer. IP litigators are expensive. They also don’t usually take copyright cases on a contingency fee basis. Often, the infringer doesn’t have money to pay the actual or statutory damages. An award of $100M means nothing if the infringer has just $100 in their bank account. Lastly, a copyright lawsuit can last many years. You might want to move on with your life before the lawsuit even goes to trial.
Or you might not win the lawsuit.
So, what else can you do if you think someone has stolen your work?
Sometimes, You Can File a DMCA Takedown Notice
Sometimes, to get rid of the infringing material, you can file a Digital Millennium Copyright Act (DMCA) takedown notice.
What is a DMCA Takedown Notice?
A DMCA takedown notice is a quick way for a copyright owner to get infringing material off the internet.
DMCA stands for the Digital Millennium Copyright Act. It was passed in 1998 to modernize some parts of the US Copyright Act.
There are some unique technology issues when a copyright owner places copyrighted works on the internet. For example, if a website hosting service or content platform hosts content that might infringe, the service might be accused of copyright infringement. The DMCA gives the hosting services and content platforms a safe harbor. To be safe from copyright claims, they must take down allegedly infringing materials when a copyright owner notifies them of a possible infringement.
You can send DMCA takedown notices to content platforms like YouTube, Instagram, Pinterest, and similar. For individual websites, you need to file the notice with the website’s hosting service. Other types of businesses that honor takedown notices include ISPs and search engines.
The DMCA is applicable only for US businesses. The European Union has a similar take-down law, but other countries in other parts of the world may or may not have similar laws. The platforms or hosting companies in these countries might still honor your takedown notice. But if there is no law requiring them to, then they don’t have to.
The DMCA Takedown Process
The DMCA take down provisions are found in Sec. 512(c) of the Copyright Act. To start the DMCA takedown process, the copyright owner has to send a notice to the hosting company or platform. The notice has to contain some very specific information. Then, the hosting company or platform takes down the material but also gives the alleged infringer a chance to respond. This way, if the accusation is not justified, the alleged infringer can put the material back up.
Sending the Notice
The procedure for a takedown is described in the DMCA itself.
Each hosting service or content platform has to designate an agent for receiving DMCA notices for copyright claims. They also have to provide a way—an email, for example—to receive the notice.
The notices need to collect the following information:
- Physical or electronic signature of the person who is authorized to act for the copyright owner (owner is authorized to act for themselves).
- Identification of the work or works that are infringed.
- Identification of the work or works that infringe and that have to be removed. The identification has to be specific enough for the service provider to locate the material.
- Contact information of the complaining party.
- A statement that the complaining party has a good faith believe that the material to be removed is infringing.
- A statement that the notification is accurate and the complaining party is authorized to act on behalf of the copyright owner.
Once the hosting service or platform receives this notice, they have to remove or disable the material that allegedly infringes.
Sending a Counternotice
After the service or platform removes the allegedly infringing material, they have to notify the person who posted the material (let’s call them the subscriber). The subscriber can then send a counternotice to put the material back up.
The counternotice has to include the following:
- A physical or electronic signature of the subscriber.
- Identification of the material that was removed or disabled and the location it was at before the material was removed or disabled.
- A statement from the subscriber that they have a good faith believe that the material was removed because of mistake or misidentification.
- The subscriber’s name, address, and phone number, plus a consent that the subscriber will agree to be served with a lawsuit at the federal district court for the district where the address is located, if the copyright owner chooses to sue.
Once the service or platform receives the counternotice, it will have between 10 to 14 days to put the material back up. But this can be prevented if the copyright owner notifies the agent that they’ve filed a lawsuit seeking an injunction against the subscriber.
In essence, the service or platform just acts as a go-between. It doesn’t make any decisions on whether the material taken down is truly infringing.
And, if you’re the copyright owner and you received a counternotice, then, to make the takedown stick, your only choice is to sue. This might not be an appealing choice to you.
So, you have a third choice if you find something that you think infringes your original work.
You Can File a Claim at the Copyright Claims Board
The Copyright Claims Board (CCB) is a relatively new way for copyright holders and alleged infringers to settle their dispute. It’s basically a small claims court for copyright matters. The money it can award is capped, and it can’t issue an injunction.
The CCB Handles Only a Few Types of Copyright Claims
The CCB can only decide a few things related to a copyright dispute. These are:
- Copyright infringement
- Declaration of copyright noninfringement (this can be a defensive move if an alleged copyright holder has been harassing you)
- Claims of misrepresentation by either side during a DMCA takedown notice
- Counterclaims or contract claims (i.e. a valid license) related to the initial copyright claim
The CCB has the ability to turn down a case if the facts of the case get too complex.
Using the CCB instead of a federal court is voluntary on both sides. If someone sues you under the CCB, you have 60 days to tell the CCB that you want to opt out. If you opt out, the copyright owner can still sue you in federal court.
CCB Claims are Capped
As the copyright owner, when you sue someone for infringement, you can ask for damages. If you file a lawsuit in a regular court, your damages can potentially be unlimited. At the CCB, however, your damages are capped.
With CCB claims, the most you can get for damages is $30,000 total. The most you can get for statutory damages is $15,000 per work. This means if someone infringes 3 of your works, instead of $45,000, you can only recover $30,000.
Do You Need an Attorney to File or Defend a CCB Claim?
You don’t need an attorney to file or defend a copyright claim at the CCB. The whole process is designed so you can represent yourself. A lot of the procedures and paperwork are simplified to different forms that you can fill out yourself. The forms even have some prepared wording for various common claims and defenses that you can just check to select.
You can recover up to $5,000 in attorney’s fees, but if the losing side didn’t have an attorney, the most you can get is $2,500.
What’s the CCB Claims Process?
Before you file a claim at the CCB, you have to have a copyright registration or at least have filed a copyright application.
CCB procedures follow some concepts like a standard federal court lawsuit, but the CCB procedures are vastly simplified. Instead of plaintiff and defendant, the parties are called claimant and respondent, respectively.
For every copyright claim, there’s a timetable on when things are due. For example, the timetable can give a deadline for the parties to exchange documents that they think prove or disprove infringement. This timetable is called a Scheduling Order. Having a Scheduling Order is pretty standard for every federal lawsuit.
CCB claims have a limited and streamlined discovery process. Mostly, you exchange written questions and documents. There are no depositions. Expert witnesses will be allowed only under very limited circumstances.
How are CCB Claims Decided?
CCB decisions are made by a panel of three Officers. Sometimes—and again this is voluntary—you can make the process go even faster by agreeing to an even Smaller Claims procedure. Each Smaller Claims is decided by one Officer. The damages are capped at $5,000. The procedure is even more streamlined than the normal CCB process.
Some CCB claims will be decided based only on paper submissions. There might be hearings, but they’re only by video conference.
If you don’t like a decision by the CCB, you can appeal only under extremely limited circumstances. Once the copyright question is decided by the CCB, the same question can’t be heard by a federal court. So, if you’re the copyright owner, this is something to think through. If you lose the dispute, there’s almost no way to complain further.
If you’ve filed a DMCA takedown notice and you’ve received a counternotice, your next step is to decide whether or not to file a lawsuit to keep the material off the internet. We don’t think you can file a CCB claim instead of a standard district court lawsuit. This is because the DMCA specifically says you have to file the lawsuit in a federal district court. The CCB is not a federal district court.
Think Things Through Before Filing a Copyright Claim or Lawsuit
Most people get very angry if they think someone has stolen their copyrighted work. They also get angry when they’ve been wrongfully accused of stealing other people’s work. Wanting to file a lawsuit is almost a knee-jerk reaction.
But a lawsuit can be a very long and expensive process. Not only that, lawsuits can interrupt both your work and personal life. Sometimes, they can take over. In our experience as a former lawyer and IP litigator, even when you win a lawsuit, you may not win overall.
If you truly feel wronged, then maybe filing a lawsuit is the way to go. Otherwise, maybe consider a CCB claim. Unless you’re ready to file a lawsuit, a DMCA takedown might not be useful under many circumstances.
Don’t forget—the easiest way to resolve a dispute is to go talk to the other person. See if you can find a solution you both can be happy with. It’s quite possible that the other person simply didn’t understand that what they’re doing is technically copyright infringement.
So, our advice is: take a deep breath, think things through, talk to an IP litigator to understand all that’ll be involved in filing and winning a lawsuit. Think things through again. And then make your decision.
DISCLAIMER: This article does not constitute legal or accounting advice. Instead, it contains general information. The information gives you the background you’ll need to hit the ground running when you do go get advice from a lawyer or accountant. Only lawyers and accountants properly licensed in your state/country are qualified to give you legal or accounting advice.
Questions? Comments?
