‘Tis the Season: Make Certain That You Renew Your DMCA Designated Agent with The US Copyright Office or Say Goodbye to Your Potential Safe Harbor from Copyright Liability

By Linda Zirkelbach and Danae Tinelli

Have you renewed your DMCA Designated Agent designation with the Copyright Office yet? (If you are unfamiliar with a DMCA Designated Agent, read below for an explanation.) Any company that may have previously qualified for the safe harbor from liability for copyright infringement under Section 512 of the DMCA will lose any ability to claim this safe harbor if the company does not renew its designation of agent within three years of the last online filing (or amendment), assuming you did this correctly between December 1, 2016 and December 31, 2017.

In late 2016, the Copyright Office issued a rule that everyone needed to file new online Digital Millennium Copyright Act “DMCA” agent designations between December 1, 2016 and December 31, 2017. Any DMCA agent designations that were filed at the Copyright Office prior to December 31, 2016 expired on December 31, 2017 if not renewed online. If you did not file any new DMCA agent designation online between December 1, 2016 and December 31, 2017, then your designation has expired and your company would not qualify for the safe harbor under the DMCA. If applicable to you, your company should file one immediately and hope that you had no copyright liability exposure during the intervening time.

If you did file a new online designation of your DMCA agent between December 1, 2016 and December 31, 2017, then you are required to file a renewal within three years of the date you filed your original online designation (unless you already amended in the meantime, in which case your three-year clock runs again from the date you amended it). This means that many companies have these renewals due between December 1, 2019 and December 31, 2020, depending on when they filed the original online designation. Simply put, if you filed your online designation of agent December 15, 2016, then your renewal is due no later than December 15, 2019. If filed your designation of agent December 15, 2016, but then amended your online designation in the meantime on January 1, 2018, then your renewal is not due until January 1, 2021.

In case you are unfamiliar with these issues, here are the key points:

Explanation of the Digital Millennium Copyright Act (“DMCA”) “Safe Harbor”

Under the U.S. copyright law, if a third party uploads or posts copyrighted material to your website, and the third party did not have authorization to do so from the copyright owner/exclusive licensee, your company can be held strictly liable for copyright infringement. Even if your company did not affirmatively place the material on your website, or know it was infringing.

However, if you comply with the statutory requirements of Section 512(c) of the DMCA, your company may qualify for a “safe harbor” from this strict liability for the infringing material posted or uploaded by another party to your website, subject to some specific limitations. But, your company must do several things in an effort to qualify. And there is a critical impending deadline with regard to item number 2 below.

(1) Designate, on your website in a publicly available location, an agent to receive notifications from third parties of claimed copyright infringement and include the name of the service provider, and the name, address, phone, fax, and email of the specific designated agent you have selected to receive notifications. (Practice tip: we recommend that you create a special email address that funnels to multiple personnel within your organization to increase the chances notifications are not missed in an otherwise full email box).

(2) Provide the U.S. Copyright Office with the required information for the designated agent. A number of court decisions have held that if you do not directly provide the U.S. Copyright Office with the required information about your designated agent, this is fatal to your request for a safe harbor from liability — period. This is the step that we find clients most often overlook.

(3) Adopt, communicate to users, and implement a repeat infringer policy, terminating repeat infringers in appropriate circumstances.

(4) Respond expeditiously to any effective notifications, or “take down” notices you receive, as required by the statute. Because some notifications, and your response thereto, can be nuanced, we recommend you discuss with copyright counsel your own protocol for responding to these notifications.

What Action Should You Take?

First, we recommend you check the Copyright Office website and/or your records to make sure you filed your online designation in the first place. If not, do so immediately.

Second, check the date you filed your last online designation of DMCA agent, or amendment (note: this must have been done online as any previously filed paper designations are long expired). Make sure that you file a renewal within three years of that date. If you do not, your previous designation will expire and you will lose your ability to seek a safe harbor from liability.

Third, make sure you are following the steps enumerated above and that you educate your internal teams responsible for this function.