Avoid online copyright infringement liability.

A new law may limit liability - If online service providers, including associations, meet certain requirements.

The Digital Millennium Copyright Act, made effective October 28, 1998, is quite technical. Among its provisions are components concerning limiting copyright infringement liability for service providers, streamlining the procedure by which copyright owners may require service providers to disclose the identity, of alleged copyright infringers, and allowing copying of computer programs for purposes of maintenance or repairs under certain circumstances. In this column, Mark Suri explains the new law and its importance for associations.

- Jerald A. Jacobs, ASAE General Counsel

Among the several provisions of the Digital Millennium Copyright Act, two features should be of particular interest to associations:

1. the limitation on copyright infringement liability for service providers such as associations that provide online services, and

2. the procedures to identify alleged copyright infringers in cases, for example, where associations find material they own appearing on others' Web sites.

Four specific categories of conduct in which copyright infringement liability may be limited for providers of online services are

1. information storage at the direction of users; 2. information location tools; 3. transitory communications; and 4. caching.

Under certain conditions, in each of these safe harbor categories, a copyright owner is barred from obtaining monetary relief from qualifying service providers. Certain injunctive relief may be barred as well. Of course, even if a service provider fails to meet the requirements for any one of these limitations, it is not automatically subject to copyright infringement liability. Rather, the copyright owner still must prove copyright infringement by the service provider. Any defenses, such as fair use, that the service provider may otherwise have, continue to be available and will need to be dealt with by the copyright owner.

Meeting the requirements

In short, the act imposes new and additional obstacles for challengers to overcome before an Internet service provider may be liable for copyright infringement. At the same time, numerous requirements are built into the act that must be met in order to be eligible for its protections:

* The accused entity must meet the definition of a service provider. There are two definitions of service providers, depending on the particular safe harbor. For three of the safe harbors, a service provider is defined as "a provider of online services or network access, or the operator of the facilities therefor." This definition may be interpreted broadly to include not only pure online service providers but entities providing services such as Internet access, e-mail, chat room and Web page hosting as well. It does not, however, include content providers who post material, such as the typical association is likely to do. The definition is designed to provide protection to the parties who clearly have no control over the content that may be infringing on material secured by copyright.

For the fourth safe harbor, transitory communications, a service provider is defined more narrowly to include only pure online service providers who are acting as a genuine conduit for information - that is, automatically transmitting the information from one server to another and ultimately to the user.

* The service provider must have a policy in place for terminating the accounts of subscribers who are repeat copyright infringers.

* The service provider must accommodate "standard technical measures" that copyright owners may use to protect copyrighted works. The service provider is not required to monitor the postings to be eligible for the safe harbors; nor is the service provider required to violate the law, such as the Electronic Communications Privacy Act, to be eligible for the protection.

Using safe harbors

The service provider must take various actions to benefit from each of the act's safe harbor protections.

* Information storage at the direction of users. This provision relates to information that is stored on the provider's system, such as the contents of the user's Web site or other information that infringes a copyright. It requires a notification from a copyright owner or its agent to the service provider's designated agent (these are listed on the Copyright Office's Web site at lcweb.loc.gov/copyright) explaining the alleged infringement. The accused infringer can provide a counter-notification explaining why it is a mistake to remove the material. Both notice and counternotice are to be made under penalty of perjury and any knowing misrepresentations about the infringing or non-infringing nature of the work may subject one to damages and attorneys' fees. The service provider is to inform the complaining party of the counternotice, and unless the complaining party sues the alleged infringer for copyright infringement, the material is to be reposted in 10-14 days from receipt of the counternotice. The service provider does not need to make an independent judgment about whether there is actual copyright infringement; it need only follow the rules.

* Information location tools. This category gives service providers protection for links, search engines, online directories, and the like, where the link or referred-to site contains infringing material. Notification is again required by the same procedures as above.

* Transitory communications. This harbor is relevant to the service provider acting as an information pipeline. In every communication transmitted across the Internet, service providers at some point must make copies of the information to allow the ultimate intended recipient access to the information.

Some requirements for using this safe harbor include that the information transmission is initiated by someone other than the provider; the service provider may not select or make any modification to the material; the transmission or copying must be done automatically; and the copy may not be retained longer than necessary.

* Caching. Caching refers to the storing of Web pages on the provider's servers for subsequent retrieval by users. This saves time compared to repeatedly visiting the original Web site, and is also used because too many requests can overwhelm many Web site servers.

Some requirements for using this safe harbor include the provider's limiting access to information as required by the Web site operator; not interfering with certain technology that returns "hit" information to the Web site operator; and refraining from modifying content.

Taking action

The new law makes it easier and less formalized for the association as copyright owner to learn the identity of alleged copyright infringers. While in the past, to uncover such identity, the copyright owner had to initiate a lawsuit and obtain a special court order, a copyright owner or its agent can now have a subpoena issued ordering a service provider to disclose the identity of a subscriber who may be engaged in copyright infringement activities. As with all provisions of the act, this only applies to alleged copyright infringers.

In summary, the Digital Millennium Copyright Act gives certain protections from copyright infringement liability to service providers if they meet certain requirements. This can be a benefit to associations that provide online services and meet the other qualifications of a service provider as defined in the act. The act also allows copyright owners, including associations, the chance to have infringing material removed by another service provider, without the copyright owner seeking a court order, if the service provider desires a safe harbor to preclude liability for copyright infringement. Likewise, the copyright owner can learn the identity of the alleged infringer without litigation. This should prove to be a benefit for association copyright owners as well.

Mark K. Suri is a partner in Jenner & Block's Chicago office. Jerald A. Jacobs is a partner in Jenner & Block's Washington, D.C., office and edits this column.