The Next Steps When DMCA Takedowns Fail

January 3, 2024
By: Lawrence G. Walters

Introduction on DMCA Notices

Most responsible and successful content creators recognize that their content will be leaked on a variety of pirate sites, forums, and file lockers, and have therefore implemented a strategy to protect their valuable intellectual property. Often this effort involves hiring a DMCA company to send takedown notices (“DMCA Notices”) to websites and hosts involved in the publication of infringing material. DMCA service providers can also scan the web for infringing content and follow up on ignored takedown demands. Accordingly, these services can be a valuable first step in combatting piracy.

But what happens when pirate sites or their hosts ignore DMCA Notices? After all, pirates are in the business of publishing and monetizing infringing content, not removing it. We frequently encounter sites that blatantly ignore DMCA Notices or immediately allow infringing content to be re-uploaded to a different URL after the content is taken down. Evaluation of the next steps requires an understanding of copyright / trademark law and some practical limitations inherent in the legal system. 

The Importance of Copyright Registration

Initially, to even consider taking further legal action, a U.S. copyright holder must obtain a copyright registration from the U.S. Copyright Office. The United States Supreme Court made clear in 2019 that in all but a few narrow instances, copyright holders must obtain a registration before commencing a copyright infringement lawsuit. The registration process is fairly straightforward and can be done online at copyright.gov for a filing fee averaging $65.00. However, this requirement can pose some issues for creators as it currently takes about 8 months from application for a registration to issue, and in some cases up to a few years. If an urgent registration is desired, the applicant can pay a $800 fee for expedited examination and registration of the application. In such instances, the Copyright Office will seek to process the application within five (5) working days. 

Consider the common scenario where a content creator finds mass infringement on a tube site or file locker which is publishing unregistered works. Registration of each image or video could cost thousands of dollars (even more if expedited applications are filed). Moreover, if the application was not filed before the infringement occurred, or within three (3) months of the first publication of the content, the copyright owner is limited to recovery of actual damages and must pay his or her own attorneys fees. However, if the creator obtains a registration before the infringement (or within three (3) months of first publication) the creator can recover statutory damages and attorneys fees from the infringer. Statutory damages can amount to $150,000 per infringement if the creator shows the infringing activity was willful. Since all copyright lawsuits must be filed in federal court, and given the cost of federal litigation, the right to recover attorneys fees is critical in determining whether a case is worth pursuing. In practical terms, a creator is much more likely to locate an attorney who is willing to take a copyright case on a contingency fee basis if the creator has obtained timely registrations. In such instances, the losing party will be required to pay attorneys fees and the creator will be entitled to recover statutory damages without the need to show any actual losses. In cases where the creator has not obtained timely registrations, and is limited to claiming actual damages, the recovery may be dwarfed by the attorneys fees paid to the creator’s attorney, resulting in a net loss for the creator. 

In light of the above, it is important for all creators to develop a comprehensive copyright registration strategy before any content is published. Doing so will allow the creator to have significant leverage in threatening or pursuing litigation or administrative claims against infringers. Likewise, infringers are more likely to respond to cease and desist demands sent by the creator when the demands are supported by timely registrations. Having registrations in hand is like waving a loaded gun. The infringers will understand that you have the immediate ability to pull the trigger. 

Grouping Content for Registration

Some creators are intimidated by the idea of registering all their content, in light of the potential time, costs, and attorneys fees that might be required to do so. However, there are various strategies that might be pursued to allow a creator to group content together, so each image or video is not required to be registered separately. While this approach is less costly on the front end, having fewer registrations also means recovery on fewer infringements in any enforcement action. For example, if a gallery of 100 images was registered together, theft of 50 images from that gallery would constitute 1 infringement. Whereas if each image was registered separately, the creator could claim a total of 50 infringements. 

Setting a Trap

One strategy that can be considered when DMCA Notices fail to produce the desired result, is the concept of setting a “honey pot”. If a creator’s content is routinely leaked after publication, the creator might consider registering a batch of content immediately upon release (or at a minimum within 3 months of publication), knowing that the content will be infringed. Upon receiving the necessary copyright registrations, the creator will be poised to assert an effective infringement claim seeking statutory damages and attorneys fees. Keep in mind that well over 90% of legal actions are settled before trial, and many before any formal action is filed. By collecting evidence of infringement and obtaining prior registrations, creators are in a strong position to force a settlement of their claims in this instance. Settlement can include monetary damages and a wide variety of non-monetary elements such as pro-active filtering of future content, expedited handling of takedown demands, or agreed damages for future instances of infringement. \

CASE Act Claims

Note also, not every copyright claim must be asserted in federal court. As a result of passage of the CASE Act in 2020, creators can pursue a form of “small claims” action at the U.S. Copyright Office as an alternative to federal court litigation. Damages are capped at $30,000 and defendants have the right to opt out of the procedure. However, CASE Act claims provide for a viable alternative to expensive federal court proceedings and creators do not need to hire legal counsel to pursue these actions. More information about CASE Act claims can be found in our post, here: https://www.firstamendment.com/case-act-claims/.

Watermarking Content

Another tool that can be considered to ward off infringement is trademark registration and watermarking content. When content is copied and republished without authorization, copyright infringement occurs. If the copied content contains a registered trademark describing the source of the content, trademark infringement occurs. Creators can register a trademark for the brand name that they use to sell content – which is usually their stage name. Pirates have “DMCA safe harbor” protection from copyright infringement claims based on content uploaded by third party users, assuming certain conditions are met. But no safe harbor exists for trademark infringement claims. Beefing up potential claims by watermarking content with a registered trademark can make pirates think twice about ignoring takedown demands. 

Practical Limitations 

Before gearing up to start taking down pirates with lawsuits or administrative claims, some practical limitations must be considered. First, many infringers are difficult to find or are located outside the United States. Some pirates will go to great lengths to obfuscate their identity through a web of domain privacy services, proxy host services, fake names, or shell corporations. Identifying a potential defendant that would be subject to the jurisdiction of U.S. courts or administrative actions can be a significant undertaking on its own. Generally, a defendant must be engaging in substantial business activities targeting the U.S., or a particular state, to be able to assert a claim against that defendant. This is a complicated area of the law, and many battles are fought over whether a particular court has “personal jurisdiction” over an individual or company. Due diligence must be performed in advance to determine whether a defendant can be required to participate in a U.S. legal proceeding. 

Another important consideration in evaluating any potential legal action is the financial condition of the defendant. A judgment awarding $1 million in damages and attorneys fees is not worth the paper it is printed on if the creator cannot collect the money. Some infringers are well aware of this consideration and hide their ill-gotten gains in offshore accounts, crypto, or precious metals to make it difficult for claimants to collect any judgment. Again, significant efforts must be expended to evaluate whether a defendant has the ability to pay before a creator expends time and effort pursuing formal legal action for copyright or trademark infringement. 

Conclusion

DMCA Notices play an important role in policing creator content for infringement. Significant amounts of infringing content are taken down in response to DMCA Notices on a daily basis. However, as with all legal tools, there are limits to the effectiveness of DMCA Notices. Creators who are serious about protecting their intellectual property should consider the next steps that can be taken when pirates ignore takedown demands. Copyright and trademark laws provide powerful tools that can be used in the right circumstances. Evaluating all the options is a prudent effort for creators on their path to success. 

Lawrence Walters heads up Walters Law Group and has represented adult content creators, producers, and publishers for over 30 years. He can be reached through the firm’s website, firstamendment.com, or on social media @walterslawgroup.