Don’t Lose Your Designated DMCA Agent

On December 1, 2016, the U.S. Copyright Office went live with its new DMCA Agent database, and revamped the procedures for designating an agent for receipt of copyright infringement notices. For any reader who does not know about the benefits of designating a DMCA Agent, or which sites should take advantage of this procedure, the author’s previous article covering those topics can be found here: http://www.firstamendment.com/dmca-agent/. This article focuses on the recent changes to the procedures and the consequences of failing to comply with the new requirements for designating a DMCA Agent.

First, and most importantly, all website operators or online service providers (“Service Providers”) who might want to claim DMCA safe harbor defenses relating to user-generated content must designate a DMCA Agent using the new automated filing system (“New System”) by December 31, 2017. This includes anyone who has already designated a DMCA Agent in the old, manual filing system (“Old System”) which ceased accepting new filings as of December 1, 2016. Failure to designate an agent in the New System by the deadline (even if you already filed a Designation in the Old System) means your business is left without a DMCA Agent, and without any legal basis for claiming safe harbor protection in response to a copyright infringement claim. Instructions about how to use the New System, and the phasing out of the Old System, can be found here: https://www.copyright.gov/dmca-directory/

Why are they doing this? Supposedly, it comes down to efficiency and accuracy of the database records. The new automated, online agent designation system is superior to the Old System, since submission of the DMCA Agent information to the Copyright Office, and payment of the fee, now take place electronically – and rather quickly. Requiring updated information and renewals will keep the information contained in the Designations more current and accurate – more about that later.

With the Old System, anyone seeking to designate an agent would need to fill out a .pdf form containing all the contact information and associated domain names, which would be sent to the Copyright Office – along with a paper check – and then scanned into the database by a human being who would then manually associate the Service Provider’s corporate name with any and all domains, mobile applications, or other “alternative names” used by the Service Provider in business. That information would be uploaded into an antiquated database with limited search capabilities.

Filing a Designation in the Old System would often take weeks, and the online database was littered with errors given its reliance on human data input. Domains would often be misspelled, overlooked, and/or duplicated. Each posting would need to be carefully reviewed by the Service Provider (or its attorney) for quality control, and errors would often take weeks (or months) to fix. In fairness to the governmental employee previously responsible for overseeing the Old System, she was given a virtually impossible task, with outdated technology and minimal support staff. That person is no longer with the U.S. Copyright Office, and given the automated nature of the New System, it appears that no individual will be responsible for overseeing it.

The Old System was actually being phased out months before the New System went online in December, 2016. Widespread reports have indicated that Designations of Agent sent to the U.S. Copyright Office in the months leading up to the launch of the New System have been uniformly ignored, and not posted in any database. Notably, the filing fee checks were cashed by the government, but many Designations have not been processed or posted online. This may result in some dramatic consequences for any Service Providers who believe they have submitted valid Designations during this ‘doughnut hole’ between the end of the Old System, and the launch of the New System. If you recently filed a Designation in the Old System database, but it does not appear in this database: https://www.copyright.gov/onlinesp/list/a_agents.html, it may be gone for good. The best solution is to immediately file a fresh Designation in the New System, and confirm that the information is posted here; https://dmca.copyright.gov/osp/search.html?key=exposedonth.net&action=search. Any Designation submitted to the Old System will become invalid anyway, as of December 31, 2017, so a new Designation submitted in the automated system will be required by the end of the year for all Service Providers. Instead of wasting time trying to track down the status of a Designation filed in the Old System, simply file one in the New System and move on.

The one piece of good news in all of this chaos is that the filing fee for submitting Designations has gone down from a minimum fee of $135 to a flat fee of $6. That’s a substantial drop, but reflects the lack of any real human involvement in the process. The bad news is that Designations are no longer permanent like they were in the Old System. Again, all Old System Designations will expire on December 31, 2017. All New System Designations must be renewed every 3 years by filing a renewed Designation. If you amend a Designation on file in the New System, the 3 year renewal period starts over. Apparently, the U.S. Copyright Office will send out reminders of any impending renewal deadline to the email address of record, but separate calendaring of this filing deadline by the Service Provider (or its attorney) is highly recommended. It is difficult to predict how the system will work in 3 years.

One other change in the procedures is the requirement that Service Providers submit a telephone number and email address when submitting a Designation. Previously, that information was not required. Notably, the telephone number and email address will not be posted in the database, but will be maintained in the internal records of the Copyright Office.
Some practical problems are bound to arise from this transition. As noted above, some Service Providers will understandably believe that they have a current Designation on file, but that Designation may never be posted if it was submitted in the latter part of 2016. Individuals trying to locate a Service Provider’s DMCA Agent may not understand the obligation to check two independent DMCA Agent databases – either of which could have relevant information about a Service Provider’s agent. Some Service Providers will have conflicting Designations filed in each database directory. Filing a Designation in the New System may not override or cancel out the Designations filed in the Old System. Some websites may have more than one Service Provider associated with them, according to one or the other databases. Some domains may be overlooked and not included in the new Designations, and will thus lose any safe harbor protection.

Ultimately, the confusion and inconsistencies will be corrected due to the passage of time, and the elimination of the Old System at the end of 2017. For now, it is essential for Service Providers to carefully review their Designations for accuracy and continued validity. Multiple calendaring systems should be implemented to ensure that renewal Designations are filed on a timely basis. Given the importance of correctly filing and maintaining a DMCA Agent Designation, many Service Providers chose to have an attorney act as their DMCA Agent, and oversee the process. While filing the Designation of Agent in the New System is not rocket science, attorneys tend to be meticulous with filing procedures and deadlines. Moreover, since a website’s DMCA contact form or email address is often used by third parties for a wide variety of legal notices, claims, subpoenas, search warrants, and preservation notices, a licensed attorney will be able to quickly escalate any non-routine legal correspondence, and ensure timely compliance with legal obligations. Regardless of your choice of DMCA Agent, it is essential to remain up to date on the changing legal requirements for filing and renewal of DMCA Agent Designations with the U.S. Copyright Office.

Stolen Moments – The Legal Options to Address Pirated Online Content

Updated August 27, 2020

Content creators are experiencing a wave of content being copied and re-shared on third party websites. Often, this stolen content is monetized by the pirate, and the original content creator receives no compensation for their hard work. This can result in drastic economic losses for mainstream social media influencers and adult entertainers alike. Some content creators are shocked to learn that intimate content intended only for specific subscribers has been widely shared and viewed by friends, family, and employers. All content creators are susceptible to piracy, whether they sell recorded content a la carte on tube and clip sites, stream live on cam sites, or offer subscriptions on fan sites.

In early 2020, more than 1.6 terabytes of images and video were illegally scraped from OnlyFans and Patreon and released to the public for free. While originally misreported as a hack or leak, there was no breach of the sites’ security systems. Instead, numerous individuals subscribed to OnlyFans and Patreon accounts, illegally screen captured the material on those accounts, and redistributed it on third party websites and social media applications. Someone then compiled those stolen materials from the third-party websites and social media applications and sorted the content by username, before releasing it all for free in one mega trove of pirated material.

This illicit business model is disturbingly simple. A pirate purchases recorded content, records a live webcam stream, or subscribes to a fan site. Using current screen capture technology, the pirate records the performance and redistributes it on a file locker, cloud drive, or social media account. Typically, these troves of pirated material are hosted in remote jurisdictions and use remote proxy servers that make it harder to track and stop the piracy. The pirate then sells access to the trove of stolen performances at a discounted rate, to incentivize users to choose the pirated content over the original source. In some cases, the pirate will even give some content away for free as a teaser to encourage further sales. Such activities are criminal under copyright law.

Piracy is not a victimless crime. The content creator is victimized when his or her content is stolen and resold without proper compensation, and the user-generated content site is victimized when potential users access the pirated content on third-party websites rather than on its paid content service. Often, both parties will also be the victim of trademark infringement, since the username of the content creator and the site’s brand name are often included in the pirate site’s URL or content titles and descriptions.

So, what can be done about this piracy? The first step is to sort out who owns what. A site’s Terms of Use or Model Agreement typically state which party retains the copyright to the recorded content and live performances. Most often those rights remain with the content creator, who will provide some sort of license permitting the site to publish the material. Thus, the content creator is the party that possesses the legal right to take action against the pirate, pirate site, cloud drive, or social media account for stealing and/or redistributing his or her content.

The most common initial response to this type of copyright infringement is transmission of a notification of infringement under the Digital Millennium Copyright Act (“DMCA”). Importantly, the DMCA puts the onus on the content creator to protect his or her work; not the site where the content was originally posted by the content creator, nor the site where the content was illegally posted by the pirate. Sites have no affirmative duty to proactively monitor for infringement; sites only have a duty to respond to properly filed reports of infringement. That means the content creator must take an active role in patrolling for pirates and reporting stolen content to the site where the content is reposted through the DMCA takedown procedures. A DMCA notice is only legally effective when it contains all the necessary information and is sent to a third party that provides services to the infringer. DMCA notices are not complicated, and various forms can be found online including the author’s QuickDMCA mobile app.

While user-generated content sites are under no obligation to monitor for infringement, many take active measures to prevent infringement on their services. All reputable sites will include a prohibition on copyright infringing activities in their Terms of Use Agreement. Many sites now implement anti-screen capturing technology to prevent copying in the first place. Adult sites often allow content creators to “location-gate” content which prevents users in selected geographic regions from accessing the content. Some adult sites even seek authorization from content creators to enforce their copyrights through in-house teams or third-party services that track copyright infringing activities and send out DMCA notices on the content creator’s behalf. Some of these services also fingerprint the performer’s content so the original leaker can be identified and pursued.

DMCA notices should not be sent directly to the infringing party. When pursuing the infringing party directly, the proper legal vehicle is known as a cease and desist or demand letter.  A demand letter is designed to put the infringer on notice that they have been caught, and to demand that the infringing content be removed from circulation. Typically, a demand letter reserves the right to sue for damages or seek other remedies, even if the material is promptly taken down.

Both DMCA notices and demand letters are relatively inexpensive and generally effective. While pirates frequently hide in jurisdictions with lax copyright enforcement policies, the operators of pirate sites and accounts often choose to respond to formal legal notices (sent by proper parties) rather than risk a potential lawsuit. From the pirate’s perspective, there is plenty of other content to be stolen, so discretion is the better part of valor when faced with a valid infringement notice.

Naturally, some pirates refuse to respond to legal notices and call the copyright holder’s bluff. While this can be frustrating, claimants should make sure they have identified all possible service providers for purposes of DMCA notices, including hosts, domain privacy service providers, cloud drives and file lockers, billing companies, proxy service providers, content delivery networks, etc. Loss of essential services can result in quick compliance. Equally important is thorough investigation into all relevant contact points and addresses. A legal notice sent to the correct physical address frequently gets an infringer’s attention.

For some copyright or trademark holders, the filing of a lawsuit for intellectual property theft will be the final solution. While litigation is expensive and uncertain, permitting rampant theft of copyrighted performances is likewise unacceptable.

From a content creator’s standpoint, it is essential to establish a reputation for enforcing copyrights. Pirating stolen content is a volume business, and dealing with infringement demands consumes resources that would otherwise be devoted to furthering the pirates’ illegal enterprise. Content creators can make themselves a less attractive target for pirates by holding infringers accountable.

As the content creation continues to become a more profitable enterprise, so does the interest in pirating content. Intellectual property holders are encouraged to consider their available options when addressing the newest flavor of online piracy.

Lawrence Walters heads up Walters Law Group and has advocated for the interests of the adult entertainment community for over 30 years. Nothing in this article is intended as legal advice. Mr. Walters can be reached at www.firstamendment.com, or on social media @walterslawgroup.