Is a Listserv Moderator Liable for Subscriber Infringements?

Dear Rich, I created a listserv on my account at google groups. Someone on the list has been posting not only links to online newspapers but, without permission, the entire contents of the link as well. This includes New York Times and Newsweek. Who is legally liable for these copyright infringements: the platform (google groups), me (the group's creator/owner/manager), or the poster of the copyrighted material?

In cases involving infringing postings at Google listservs, a copyright owner (such as the New York Times or Newsweek) would likely pursue the poster and Google.

Safe harbor. Google will likely be shielded from a lawsuit by claiming the "safe harbor" benefits of the Digital Millenium Copyright Act (DMCA). Section 512 of the DMCA allows an Internet Service Provider (ISP) such as Google to avoid liability for infringement provided that the ISP promptly removed the material upon request and provided that the ISP has met other requirements. In other words, if Newsweek or the Times request removal, Google will issue a take-down notice, and if the poster fights the notice -- for example, the poster claims a fair use defense -- the copyright owner can sue the poster in federal court and sort out the matter, there.

What about you? It's possible (though unlikely) that you, as manager of the listserv, could be drawn into the line of fire. In one case, a federal appeals court indicated that if a moderator (under the supervision of an ISP employee) reviews and approves all postings, the ISP could be liable. We doubt whether you'll be named in a lawsuit. Still, because you're aware of a potential problem, you should provide your copyright policy to all subscribers, notify the poster that only links should be posted, and seek guidance from Google for the issue if the poster doesn't correct behavior.

Does Coronavirus Trigger Copyright Exemption?

Dear Rich: I am writing on behalf of a large group of film professors whose colleges and universities are contemplating moving instruction online due to Coronavirus concerns. Can we temporarily move our face-to-face screenings online without violating copyright law? Does the 2018 "Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies" allow us to rip DVDs for this purpose?
The coronavirus creates unchartered territory for copyright lawyers. Fortunately, an assortment of college, university, and public librarians have issued a Public Statement of Library Copyright Specialists: Fair Use & Emergency Remote Teaching & Research. Although the statement did not address face-to-face screenings directly, it did provide some guidance for fair use and circumvention.
Fair use.  As for fair use, the librarians wrote:

"While there are no fair use cases squarely addressing copying to help minimize a public health crisis, the other wide variety of public benefits cited by courts leads us to believe that this purpose would weigh extremely heavily in favor of fair use."

We agree and suggest that your adherence to the statement's principles, including documentation of your efforts will go a long way to heading off potential litigation. We would also suggest that you follow the standards presented in 17 U.S. Code Sec. 110 (2) regarding the prevention of unauthorized copying or dissemination.
Circumvention. As for ripping CDs, the statement concludes:

"[T]he current exemptions [to DMCA circumvention rules] extend only to copying “short portions” of motion pictures for use in certain types of teaching, not to copying entire works, even when doing so is clearly fair use. Courts disagree on whether circumvention violates the DMCA when the underlying use is non-infringing (for example, because of fair use) and on what constitutes circumvention."

What Should My Cease and Desist Letter Say?

From the PDR's Decayed Daguerreotypes
Collection (Portrait of Emma Bostwick)

Dear Rich — I just stumbled across a commercial venture’s Web site that uses my photograph at the top of their main page and their about page, without permission or credit. I registered the image with the Copyright Office long ago. I don’t want to be a hard ass — I’d be happy to license the image for my regular fee or see it taken down. Do you have language you recommend for when I first email the firm? 
The communication you send to an infringer -- commonly referred to as a cease and desist letter -- should convey proof of your ownership, a summary of the rip-off, a demand that the infringer stop its activity, a proposed resolution, and request for a response within a fixed time period.
To threaten or not to threaten? Although many cease and desist letters threaten legal action, you’re probably wiser not to do so at this stage. As attorney Stephen Fishman writes in the Copyright Handbook, "The specter of imminent legal action is likely to make the other person paranoid, defensive, and unwilling to cooperate. It may also send him straight to a lawyer." (Also a letter that threatens a lawsuit may enable the infringer to justify what's known as a declaratory action.)
The right tone. The tone of the letter is up to you (and your lawyer if using one) but we recommend remaining dispassionate rather than being angry, sarcastic, or using legalese. Keep in mind that if the matter escalates, your letter could become an exhibit in a court battle. So don't say anything that you wouldn't want a judge or jury to see, as well.
Sample cease and desist letter. Here's a suggested opening salvo:

Dear Sir or Madam: I recently became aware that your website has published two of my copyrighted photographic images: "Title of photo 1" (URL for infringing material) and Title of photo 2" (URL for infringing material). I created these images in June 2005 and subsequently registered them with the U.S. Copyright Office (a digital scan of the Certificate of Registration is attached). I own all of the rights in these photographs. Because I never authorized you to reproduce these images, it appears that you have infringed my copyright.

I am hopeful that we can resolve this matter in a nonlitigious manner and am prepared to grant you a license for your past and future use based on my standard fees. If I don't receive a response within ten days of receipt of this correspondence, or if you disagree with my assessment, I will pursue my legal rights. As your attorney can advise you, I would be entitled to reasonable compensation in the form of statutory damages as provided under federal law. I look forward to speaking with you.

Ideally, cease and desist letters should be sent by some method that guarantees proof of delivery.
P.S. Dept. If the website refuses to respond or own up to the infringement, you can consider filing a DMCA notice.

Etsy Removed My Miniature Horse Figurines

our version of Superhorse

Dear Rich: I opened a small shop on Etsy that sells miniature horse figurines painted in popular culture themes (TV, anime, comics, etc). In the first 24 hours, I received a DMCA notice from Valve Software and Etsy removed one of my listings. Besides being stunned that they found me so fast, I was confused as to what intellectual property I was violating as Etsy is full of similar shops. Are my horses treading on trademarked names, designs, or all of the above and is there anything I can do to express my art without getting my entire shop closed down (or worse, getting sued)?
Valve Software is a video game maker (Half-Life, Portal, Counter Strike) and we assume that one of your figurines referred to one of their copyright-protected games or characters. Most likely Valve uses software that routinely searches Etsy and similar sites for references to its games. Once it finds them, it issues take-down notices (possibly without considering fair use). You can push back if you feel like the notice is improper -- that is you don't believe your figurine infringes or is excused under fair use principles -- by filing a counter-notice. Etsy simplifies the counter-notice procedure and would be obligated to re-list your item once you file it. After that, Valve Software's only other recourse is to sue you. Considering the vast number of bunk DMCA notices, it is always possible that Valve made an error targeting your store.
What can you do? Unfortunately there's not much you can do to avoid takedown notices. You could remove the text references to copyright and trademarked characters in the product blurbs -- the marketing equivalent of shooting oneself in the foot. It's probably best to deal with these notices on a case-by-case basis.

Amazon Seller Counter-Notice

Dear Rich: I am an Amazon seller and received a notice that I was infringing another seller’s rights and that my seller page had been taken down. I’m pretty sure this was a bogus strategy done by one of my competitors. I have rights to sell and post what I’m selling. My attempts at contacting Amazon have been useless because they just send the same email back. 
We're not sure whether the notice you received constitutes a DMCA takedown notice but to hedge your bets, we would suggest sending a DMCA counter notice to the seller performance team (even if you don't think it will do anything) and send a copy to copyright@amazon.com. At least you will have it on file with them in the event that this is part of a DMCA procedure. You must be sure of what you're claiming in the takedown notice because you're making this statement under penalty of perjury. You can read more about counter-notices, here.
If the counter-notice doesn't work ...  If that doesn’t work, and Amazon isn't responding in a meaningful way, you can try moving up the food chain and sending letters and emails to Amazon’s legal department (Amazon.com Legal Department, P.O. Box 81226, Seattle, WA 98108). If that doesn't get a response, you can file for arbitration under Amazon’s participation agreement.  This is a last resort, of course, and there are risks because if you lose and the arbitrator determines your claims are frivolous, you will have to pay Amazon's legal fees and costs resulting from arbitration.

Counter Notice 

Material that was removed: (describe Amazon advertising material taken down)
Location of where the material was located (URL): (list the URL for your Amazon seller page)

This letter is a formal response to a claim of rights infringement against material that I uploaded to Amazon. Please consider it as a DMCA counter notification as defined in 17 USC 512(g)(3).
I believe the claims of rights infringement are inaccurate and should be rejected for the following reasons: I either own all rights in the material posted or I have acquired permission from the rights holder. Further, I do not believe that the complainant has provided any credible claim of rights. All of my attempts to reach the complainant have been futile. In summary, any allegations of rights violation are unsupported.
I declare under penalty of perjury that I have a good faith belief that the complaint of rights infringement is either based on mistaken information or is an intentional misuse of the law (and violation of the Amazon Participation Agreement).
I ask that Amazon restore the material in dispute unless the complainant files suit against me within ten (10) days, pursuant to 17 USC(g)(2)(b). I further consent to the jurisdiction of federal district court for the judicial district in which I reside. I agree to accept service of process from the complainant.
Sincerely [Electronic of actual signature]
Full Name: (provide name)
Address: Phone Number: (provide address and phone number)

Who Do I Have to Sue to Get a Cup of Coffee?

Dear Rich: The Keurig company sells coffee brewers equipped with DRM technology. The next model will discontinue the DRM as Keurig cited poor sales and consumer complaints. Another coffee company has been selling a little plastic device that allows consumers to circumvent Keurig. Are these devices grounds for a lawsuit?
Digital rights management systems (DRMs) may be used to limit access to Java®, but we don't think they'll work for java. For legal and customer relations reasons, we don't think Keurig will pursue those who circumvent their technology.
Keurig's system. Keurig's coffee machines won't make coffee if a non-authorized coffee-filled pod is inserted (unless consumers jerry-rig a workaround). As a result of declining sales, Keurig is reintroducing its re-useable pods (permitting users to choose their own brew) but it's not clear whether Keurig will ditch its scanner/DRM entirely.
Is Keurig's system a DRM? DRM (or digital rights management) refers to methods for restricting post-sale usage of (or access to) a copyrighted work such as music at the iTunes store or books sold via Kindle. Cracking, reproducing, or tampering with DRM technologies violates the Digital Millennium Copyright Act (DMCA). This all works out well for movie studios seeking to protect copyrightable content but not so well for manufacturers seeking to limit access to non copyrightable works like garage door openers and printers (and we assume coffeemakers). As one commentator put it:

In cases involving manufactured products, where the products are part of an interoperable system, courts have found that DRM controls must be closely linked to the underlying copyright interest in order to have DMCA protection. 

So, we don't think Keurig will have much luck claiming a DMCA violation. In addition, the DRM-ing of coffee makers may also lead to antitrust problems.
P.S. #1 The Keurig consumer fiasco is part of a growing consumer rebellion (sometimes known as the "right to repair" movement) involving farmers, car customizers and other angry consumers blocked by software from modifying and fixing products.
P.S. We're going to assume the last sentence of your question was either an unintended pun or the product of an over-caffeinated mind.

MyBookez Stole My Book

Do I have any recourse against an almost invisible entity, muebooks.com, which is offering a free download of a book for which I co-own the copyright? Alas, there's probably not much you can do about the activity occurring at muebooks.com aka MyBookez. According to Network Solutions Whois, the site is based in China and owned by Xin Net Technology Corporation. We doubt that a DMCA notice to the ISP owner would  have much effect and we didn't find any previous notices at the Chilling Effects repository, either. In any case, here's an explanation of the DMCA procedures and here's a DMCA template. You can also send a copy to Google (here's where to start) which may result in your MyBookez page disappearing from Adsense or Google Search results. You can also try a company like DMCA.com (although we can't vouch for the effectiveness or reliability of fee-based third-party DMCA notifiers).

Does Our Website Need a DMCA Agent?

Dear Rich: We have a website for families to upload pictures and events dealing with heritage and ancestry. We have a new investor who wants us to designate an agent to register with the Copyright Office for DMCA notices. We've been in business for three years without any problems. Is there a benefit to registering an agent? Your investor is probably concerned about liability resulting from user generated content. The Digital Millenium Copyright Act shields your site from liability if you follow certain requirements and meet certain qualifications (including designating an agent for receipt of notices). Assuming that your website qualifies as an online service provider (it probably does), the protection applies only for user generated content – that is the material is made available by a person other than your company and it's posted without your modification. Also your company can’t profit directly from the uploaded material -- so the safe harbor won't apply if your company makes money selling reproductions or gets a payment for downloads of user content. Although we think that designating an agent is a good idea, on a practical level, it’s been our experience that DMCA notices are rarely sent to the designated agent but instead are sent to email addresses designated for such purposes by the company. So we'd recommend that you post a link on the bottom of the homepage for such purposes. If your company complies with the takedown request, the matter is usually closed.
Designating an agent. You can use the Copyright Office form to designate an agent and you can read more about agents at the Copyright Office site. For more on the DMCA, check out this Nolo article, this Citizen Media article, and this previous DMCA post. .

Does the VEOH Case Affect My Website?

Dear Rich: We're a web startup (a pre-startup, actually).  Can you explain the effect of the recent VEOH ruling regarding website infringement? Wow, a pre-startup! That sounds hopeful!
The case you're referring to -- UMG Recordings v. Shelter Capital, Partners -- has to do with the level of policing required by a website when users post infringing content. Veoh, a site that permits users to upload video content, was sued by Universal Music, after infringing videos were discovered on the site. Veoh had complied with all requests to remove content and had used software to seek out and identify infringing content, but some infringing music videos still made it on to the site.
DMCA as a shield. Universal argued that Veoh (our source for the kitty video) must have known of the "apparent" infringements and should not be able to use the Digital Millenium Copyright Act (scroll down) as a shield. The 9th Circuit Court of Appeals -- the first appeals court to rule on this issue -- held that the burden was on Universal to report the infringements to Veoh, stating,"Copyright holders know precisely what materials they own, and thus are better able to identify infringing copies than service providers like Veoh." The ruling doesn't shield websites from liability for infringement but it does permit websites to use the DMCA as a shield when the website has anti-infringement policies and has otherwise responded to all requests for takedowns.

Publishing Personal Stories: What Permission is Needed?

Dear Rich: I am creating an online platform for people to share their personal stories that I am going to publish. What kind of legal document do I need to put together? Personal stories? We have a personal story we'd like to post. It's about a blogger who ordered some T-shirts but there was a problem making the registered symbol -- ® -- appear properly on the back (we're not assessing blame just yet) and so the blogger spent a lot of money on shirts with a misplaced ®. It started as a sad story but after some exchanges with customer service, we're starting to think that it will have a happy ending.
Right, you had a question. The good news is that your site can avoid most liability by abiding by the Digital Millenium Copyright Act (which shields you from claims of copyright infringement) and the rules set forth in Section 230 of the Communications Decency Act (which shields you from liability for statements published by others). Keep in mind, you must follow the rules for the shields to work. In general, your concerns for posting personal stories are outlined below:

• Copyright: You should obtain an assurance that the work is original to the author and that the author has the right to permit publication and that the author grants you the limited right to post it online. If you want more rights -- say to publish a collection of stories in eBook format -- you should acquire those rights now. The same is true if you want the option for more rights. You should learn more about acquiring publishing rights 
• Invasion of Privacy and Trade Secrets: Personal stories involve personal details. You need an assurance that the posting won't reveal any personal or trade secrets that will cause you to get sued.
• Children's Privacy: We would suggest avoiding taking any materials from children under 13.  (You can seek an assurance that person submitting the story is 13 or older.) If you start taking information from children under that age, you'll need to deal with a law known as COPPA and that may not be worth the effort.
• Defamation: Personal stories that include untrue statements about others could lead to defamation suits. You need an assurance there's nothing defamatory.

So, in summary, you need permission to publish and assurances that the publications don't violate any laws. These assurances and permissions can be bundled in a click-to-accept statement that the user must agree to before uploading the information. Any electronic method of assent that can be verified -- checking a box, clicking to accept, etc. --  will suffice.

Can You Be Sued Over What's in Your Digital Music Locker?

Dear Rich: Can a music service like Amazon's Cloud delete tunes that I upload? Cloud services or "music locker" services can (and are obligated) to delete infringing copies of music if requested to do so by a copyright owner. At least that's the position taken recently by the district court in Capitol Records v. MP3Tunes LLC.
Backstory. MP3Tunes offered a cloud based service in which people could purchase songs and place them in their digital music lockers, or they could upload songs they owned, or they could search for versions of the songs they owned online (including unauthorized versions).
MP3Tunes received DMCA notices from record labels and removed user links to the infringing songs but the company failed to delete the infringing copies from the user's music locker.
Here comes da' judge. The district court ruled against MP3Tunes for failing to remove the infringing content from user's music lockers, although that ruling was considered a "hollow victory" for the labels because the judge refused to grant the label's request to remove "MP3Tunes' safe harbor exemption. As long as MP3Tunes removed links to infringing material and deleted infringing content as requested by the copyright owner, the company could take advantage of the DMCA's so-called safe harbor.
Rock Me Amadeus. We hope you're not downloading unauthorized Falco recordings. We got in a nostalgic mood the other day and Spotified some great Falco tunes. Funny thing, Falco doesn't sound nostalgic at all. So sad he's gone. (And don't forget one of our favorite-ist Falco lyrics.)

Is Coffee Shop an ISP for Purposes of DMCA?

Dear Rich: A friend of mine runs a coffee shop and just received a DMCA notice — apparently someone in his shop has been bit-torrenting a TV show. Does my friend have any liability? Can he be considered an ISP? What should he do next?  A DMCA takedown notice is sent because a copyright owner believes someone has posted an infringement and they want it removed without the hassle of filing an infringement lawsuit. For example, the Dear Rich Staff periodically finds infringing copies of its eBooks posted at websites or blogs. Instead of writing to the individual user, we send a DMCA notice to the company that owns the blogging service or the web provider that hosts the site (the Internet Service Provider or ISP). The ISP (assuming they're not in Rumania, China, or some other country where the locals don't fear U.S. copyright lawyers) typically removes whatever is complained about -- for example, an infringing picture at a blog, an infringing movie at YouTube, etc. By promptly removing the material, the ISP is given a "safe harbor" meaning that the ISP can't be sued for infringement. The ISP then may write to the individual user who maintains the blog, website, or YouTube account and inform them about the Notice to explain why the music, movie or eBook is now missing. The individual user then has the right to file a counter-notice. (We explain the procedural aspects here.)
What's an ISP? We believe that if the copyright owner sent the notice to your friend's coffee shop, then your friend's coffee shop is beng considered as an ISP. An Internet Service Provider (ISP) also sometimes referred to as an Online Service Provider (OSP) is any business that provides access to the Internet. That includes big access providers like AOL, Yahoo! and Google, or it can refer to companies that provide website hosting, commercial wi-fi services, or file-transferring (FTP) services.
What's confusing about your friend's notice ... A DMCA takedown notice is intended to direct the recipient to take something down from the Internet (or disable access). This is obviously something within the ISP's control. We're not clear how that would work in the case of a wifi coffee shop. If there are standalone computers at the coffee house, perhaps the notice is requesting deletion of bit-torrent files -- for example, if the in-shop computers are serving as bit-torrent clients. But if the customers bring their own computers to the coffee shop, we're not sure what can be "taken down."  More information is needed. (BTW, if this answer seems disjointed, it's because we stopped mid-answer to make ourselves a cup of coffee. We've fallen pretty hard for the Blue Bottle party line and we can't seem to free ourselves).

Photo Credits: Can You Remove Them?

no shoes, no shirt;
no fair use defense

Dear Rich: Please discuss Murphy v. Millennium Radio Group, a recent case that deals with nudity, defamation and copyright law. Okay, here goes: A photographer's copyrighted picture of two nude radio "shock jocks" was published in the New Jersey Monthly. The radio station that employed the men scanned and posted the photo online (after removing the photo credit that ran alongside the photo -- known in the trade as a "gutter credit"). The station then encouraged listeners to download the photo, modify it and resubmit the photos to the station for posting. When the photographer's lawyer complained to the station, the jocks did what is expected from men who pose nude to promote radio shows -- they insulted the photographer, advised others not to do business with him, and made crude comments about his sexuality. The photographer sued for defamation, copyright infringement, and for violation of the Digital Millennium Copyright Act (DMCA). The district court ruled in a summary judgment against the photographer on all counts.
The Court of Appeals Decision. On appeal, the Third Circuit reversed. More discovery was needed to decide the defamation claims (the tapes of the show had been destroyed). The Third Circuit also blew off any fair use defense. Posting the original photo and encouraging listener modifications was a purely commercial use and carried no additional transformative message. For those keeping score, all four fair use factors weighed against the station.
Removal of the credit. The most interesting claim was the argument that the DMCA prohibited the removal of copyright management information (CMI), which includes digital identifying information such as the name of the author. The Third Circuit ruled that the "gutter credit" qualified as CMI and cutting it off the photo violated the DMCA.
Takeaway Dept. In this case, someone physically cut off the photo credit, scanned the photo and posted the digital result, something not many people anticipated would trigger a DMCA claim. Does this mean that you must always include a photo credit when you reproduce a photo? Not necessarily; it just means you cannot remove an existing credit. This issue may become more confusing if the credit is not adjacent on the printed page, perhaps something that other cases will decide. For now, gutter credits qualify as CMI, at least in the Third Circuit.

Facebook Group Copied My Photograph

Dear Rich: I recently uploaded a picture I designed for a Facebook group. Someone has taken this picture and used it in another group but slightly modified it. Would this be copyright infringement? Probably. Assuming your photo qualifies for copyright protection (most do) and assuming the copy doesn't qualify as a fair use (most don't), then the unauthorized taking of your photo is an infringement. What do you want to do about it? If you want it taken down,  a simple solution would be to use Facebook's DMCA Notice policy. Fill out this online form and unless the other party objects to the notice, the photo will be removed and that will be that. If the other Facebook group disagrees with you and files a counter notice, then the photo will stay up unless you file a copyright lawsuit. That's expensive, time-consuming and probably a financial loss for you, even if you win, (unless you can prove that you suffered serious financial damages). If you don't want to be confrontational, you can always try writing to the other Facebook group, explain that you have a copyright in the photo and ask them to remove the photo voluntarily.