Orange County Breeze received a takedown demand under the 1998 Digital Millenium Copyright Act (DMCA) regarding a low-resolution photo used to illustrate an article published here at oc-breeze.com years ago.
Following prior experience and guidelines for the DMCA, we immediately removed the photograph.
However, the demand also asserted a right to payment of a $300 retroactive license for use of the photograph. This was new in our experience.
We consulted a local attorney knowledgeable in copyright law. That attorney gave us similar analysis as that from three attorneys in 2010:
- ignore the demand for payment;
- pay the demanded retroactive license;
- hire an attorney and dispute the demand.
The local attorney recommended that we pay the retroactive license but emphasized that we should get a written settlement in return, in order to extinguish the possibility of future demands against that photograph.
In weighing what to do, we also researched “retroactive copyright licensing” — and found that things get complicated and murky fast.
For instance, a December 18, 2007 article published by Morrison Foerster describes a ruling in the Second Circuit Court of Appeals (covering the northeastern United States) that said ”all retroactive copyright transfers and licenses are invalid.” Muddying the situation, the Ninth Circuit Court of Appeals (that includes California) held “that a third party may sue for accrued infringement claims only where the same entity purchased both the copyright and the accrued claims.”
So that’s kind of sort of a Circuit split resolvable only through a ruling by the U.S. Supreme Court.
What is a publisher to do?
What happens to a publisher that unintentionally infringed a copyright (allegedly)?
Title II of the original DMCA (pdf, beginning on page 8) talks about “limitations on the liability of online service providers for copyright infringement” but those limitations apply to entities like YouTube or your friendly neighborhood Internet Service Provider. (Orange County Breeze uses DreamHost.)
Copyright protection usually looks at infringement only from the viewpoint of the content creator. Proposed new laws, such as the CASE Act, continue this one-sided handling. Currently under consideration for approval by the United States Senate (after it finishes the impeachment trial of President Trump), the Copyright Alternatives in Small-Claims Enforcement Act (CASE Act) is opposed by the Electronic Frontier Foundation (EFF) for many good reasons. One of those reasons:
Second of all, a system that puts regular Internet users at risk is fertile ground for copyright trolls. Trolls can file complaints and then contact people asking for less money than the CASE Act empowers to Copyright Office to force you to pay (it can go up to $30,000 per proceeding), and fear of bankruptcy will encourage people to accept the settlement offer, regardless of the actual merits of the case.
Which leads us to…
Another worry for us is whether the entity issuing the DMCA takedown and demand for retroactive licensing is legitimately the owner of the copyright of the photograph in question or the owner’s legal agent.
We have no quick and straightforward way to determine the legitimacy of the complaining entity independent of the documentation that they provided.
One small defensive piece is determining whether the photograph in question is registered with the United States Copyright Office. According to an article by Steve Vondran, a copyright infringement lawsuit cannot be filed if the photograph is not registered. That clarifying article also provides a description of how to request documentation that the photo in question has indeed been registered.
The situation of a publisher will worsen if the CASE Act becomes law. According to the EFF:
This could be read as permission for the Copyright Office to dispense with even the meager procedural protections provided elsewhere in the bill when a rightsholder asks for $5000 or less. In essence, what this means is any Internet user who uploads a copyrighted work could find themselves subject to a largely unappealable $5,000 penalty without anything resembling a trial or evidentiary hearing. Ever share a meme, share a photo that isn’t yours, or download a photo you didn’t create? Under this legislation, you could easily find yourself stuck with a $5,000 judgment debt following the most trivial nod towards due process.
Analyzing the situation for Orange County Breeze, we were looking at the possibility of ten years’ worth of daily articles, each with at least one photo or other graphic, that had been deemed an asset to Orange County Breeze and now towers over us as a daunting liability. As of the writing of this article, the software that implements oc-breeze.com tells us that we have 29,414 articles. Multiply that number by $300 — that’s an estimated $8,824,200 in possible retroactive licensing fees and would bankrupt the company.
Of course, that back-of-the-envelope estimate leaves out a lot. We have consistently used a stock graphics company out of New York City to create many of the illustrations for our articles, for instance. Those graphics are licensed. We have often illustrated articles with photographs taken by our own people. Those are already owned by Orange County Breeze.
But we also receive many, many photographs and graphics accompanying submitted articles. Usually these are from local groups but have no special copyright information embedded in the photograph itself. We have blithely published them with no copyright information, labeled as “courtesy photographs”. That may leave us open to future copyright demands. We may have to begin to explicitly require photo/graphic releases in order to use such photos.
Orange County Breeze is developing a licensing form for our own use.
In the meantime, we must somehow manage that enormous liability — or close the entire operation down.
Consequently, we have begun a comprehensive review of all articles published at oc-breeze.com for possible questionable copyright material. As part of that review, we have suspended publication of all articles prior to January 1, 2019 until each one can be reviewed and cleared. The articles also have been scrubbed from the cache of our load-leveling service provider, Cloudflare.
This is a huge undertaking, but the only realistic alternative is shuttering the company.
Copyright infringement considerations for our readers
You may think that you are in the clear regarding copyright — but maybe not.
Especially if the CASE Act becomes law.
Even without the CASE Act, any person or business with a photo-filled social media feed needs to consider the possibility that they could receive a DMCA takedown notice and demand for a retroactive licensing fee for any photo in the feed that is not clearly attributed to a source that has granted a license to use the photo. (Your own photos are in the clear, as long as you can prove that they are your photos!)
Same for other graphics.
Meantime: be careful out there! The trolls are hungry…