You have a business that sells its goods by listing them on an Internet Service Provider (“ISP”) website such as Amazon® or Ebay®. One day, you receive a “Take-Down Notice” informing you that the ISP has removed your listings because someone has demanded that the ISP delist or “take down” your goods from the website pursuant to the Digital Millennium Copyright Act (“DMCA”). The Take-Down Notice informs you that the demander claims that your goods infringe her copyrights. However, after looking into the matter, you believe that that no valid claim of infringement exists, or that the person demanding the Take Down has no copyrights. Further, you suspect that the claims against you were made to gain an unfair competitive advantage, or to extort you into paying money in exchange for the withdrawal of the demand. You are not alone.
Fraudulent takedown demands have become a widespread problem for merchants who offer their wares on the Internet. Studies have shown that many Take-Down demands were made even where the requester does not own any copyrights. Google’s Transparency Reports state that approximately 40 percent of Take-Down demands are based on invalid copyright claims. Indeed, abuses of the DMCA process include claims to copyrights in public domain works. To make matters worse, some Take Down demands are spread throughout the Internet by bots.

The DMCA Take Down Process.

The Take-Down. In general, the DMCA gives ISPs immunity from infringement suits provided they comply with certain procedures. An ISP does not have to decide the merits of a Take Down demand’s infringement claim. The ISP need only comply with DMCA information systems’ requirements, ensure that demands contain certain specified information, and make prompt notification of the demands to the pertinent sellers. 17 U.S.C. § 512. Once a demand is made with the required information, the ISP will delist your goods and notify you of that fact, together with information identifying the demander. 17 U.S.C. § 512 (c)(3).

What You Can Do To Reverse The Take-Down.

The Counter-Notice. However, the DMCA also provides a very useful tool for getting your goods back on line – the Counter-Notice. 17 U.S.C. § 512 (g). After the ISP informs you that your goods have been taken down, you can send the ISP your Counter-Notice showing that you have a good faith belief that your goods were removed from the site “as a result of mistake or misidentification.” 17 U.S.C. § 512 (g)(3). Your Counter-Notice will be forwarded to the demander with a notice that your goods will be re-listed within 10 days, unless the demander provides notice that she has filed an infringement lawsuit seeking a restraining order from a court which enjoins you from selling infringing goods on the ISP’s site. If no lawsuit is filed, the ISP must put your goods’ listing back on the site “not less than 10, nor more than 14 business days, following” the receipt of the Counter-Notice. 17 U.S.C. § 512 (g)(2)(c).

Additional Remedies Available To You. The following actions can also aid you in protecting your rights against the Take-Down abuse directed against you:

    1. Consult an IP attorney who can assist you as to:
      1. DMCA procedures;
      2. The validity of the infringement claim;
      3. Whether the Take Down is false or fraudulent;
      4. What exposure your business may face, for example, if litigation is filed;
      5. How to pursue monetary damages against the demander for violation of the DMCA fraud provisions, the ISP’s policies regarding false Take-Down demands, as well as unfair competition claims you may have against the demander. See, e.g., 17 U.S.C. §§ 506(c) and (e) and 512(f).
    2. Request that the demander prove to you that it has valid copyrights.
    3. Research whether the demander has made false claims against others.
    4. Find out the identity, location, and place of incorporation and business of the demander, and where it can be sued.
    5. Reach out to others in your line of business to see if claims against them have also been made.

In addition, once the time period for the demander’s filing of a lawsuit has passed and no suit is filed, it is good to reach out to copyright professional(s) working for the ISP and assist them with respect to the prompt re-listing of your goods. The ISP copyright professionals will probably not provide you with legal advice, but they can help you with procedural matters that will speed up the re-listing of your goods.

If you would like additional information, please contact:

Joseph M. Manak, Partner
New York
(917) 597-2667
joseph.manak@fisherbroyles.com

1See, generally, 17 U.S.C. § 512.
2See False Copyright Claims Are More Common Than You Think, http://www.publicdomainsherpa.com/false-copyright-claims.html (“Modern reprints of public domain works include copyright notices, probably in the hope that people will be intimidated enough to seek licenses and pay fees to reproduce these works.”).
3See https://www.google.com/transparencyreport/removals/copyright/.
4See, for example, http://arstechnica.com/science/2013/02/site-plagiarizes-blog-posts-then-files-dmca-takedown-on-originals.
5See EFF Report re bot take downs at https://www.eff.org/deeplinks/2015/02/absurd-automated-notices-illustrate-abuse-dmca-takedown-process.