So, you have been accused of copyright infringement via a Digital Millennium Copyright Act ("DMCA") claim and your work has been removed from the online venue where you posted it. Now what? Let's check out some of your DIY options and dig deeper into the DMCA counterclaim process. (Note I said "DIY" options. Of course contacting an attorney and letting them deal with it is always on the table if it is worth it and within your budget).
You Have Been Accused of Infringement, What are Your Options?
If you receive a DMCA takedown notice and your item is removed from an online venue, you have a handful of options.
Your first option is - you could do nothing. Yes, nothing. If you know you copied and simply got caught or you just did not know your work was too similar to some other protected work but you accept that it was, your best bet is to leave it alone. Assuming you still have selling or posting privileges on whatever venue you are on (and you have not been kicked off), take it as a lesson learned and count yourself lucky.
Additionally, you may have no choice but to do nothing if your takedown was based on trademark law and not copyright. Trademark infringement stems from a different set of laws than copyright infringement and those laws do not provide a method for takedowns or counterclaims. Because of this, some websites, Etsy comes to mind immediately, do not allow those accused of trademark infringement to submit counternotices at all. So, if your notice was for trademark infringement, depending on the venue, there may not be anything that can be done about that.
Your second option is to contact the person who filed the takedown and try to negotiate directly with them. The individual's contact information is required to be included with the original takedown. What might this accomplish for you? Well, if you can convince them to retract their takedown then the venue you are on may not count that as a strike against your account. See, the DMCA requires venues and service providers to keep track of and shut down accounts that repeatedly violate copyright so, negotiating a retraction could keep you from being removed as a repeat infringer if you were to ever get dinged again.
However, in reality, there are only a small number of circumstances where this second option would even be worthwhile. Understand that the person who issued the takedown has no obligation to retract it, no matter what you say to them. So, you have to have some leverage to even consider this option. If there are any concerns regarding who actually did the copying (for example, you have proof that your work was created first) or any other potential legal issues that can be leveraged against the original filer, this choice may work for you.
Your third option is to go ahead and file a DMCA counterclaim. A counterclaim is a legal document that can be submitted (under penalty of perjury) if you have a good faith belief that your work/item does not actually violate the Copyright Act. If you have identified a viable and applicable defense to the infringement claim, as we discussed in a previous post, then you should have enough to demonstrate the good faith belief necessary to support a counterclaim.
You do want to make sure that your defense and the basis for your counterclaim is solid though because the DMCA process is like a tennis match; the serve is the initial takedown and you return serve by filing a counternotice. If the accuser wants to continue pursuing the matter, the ball is then in their court and they would need to file a lawsuit against you for infringement; that is the next move as outlined in the DMCA. You have to consider that going in because part of filing a counterclaim is agreeing to submit to the jurisdiction of the federal court that serves your address (if you live in the U.S.). If you do not live in the U.S., you must agree to submit to jurisdiction of any United States Federal Court where the service provider (the venue) is located. You also must agree to accept service of any lawsuit.
What does all of this mean? Well - in the event that a lawsuit is filed it just means you have already agreed to the location where it can be filed and that you will allow the lawsuit to be given to you ("you've been served") without trying to dodge it. This step also removes the venue as the middleman in the dispute. In other words, after the claim and counterclaim process, the issue needs to move to a courtroom and off of Etsy, Amazon or whatever the venue may be. That being said, filing a counterclaim does not mean that you will automatically be sued nor does it necessarily increase the likelihood of a lawsuit being filed.
How Do You File a DMCA Counterclaim?
If you decide to file the counternotice under the DMCA, most venues will provide a form for you to fill out which makes the process pretty straight forward. How to access the form should have been stated in the notice of infringement you received. However, even with the form, it is still a good idea to know what information is required to be present in a proper DMCA counterclaim. This information is outlined in the DMCA itself and includes the following:
(1) Identification of the material that was removed and the location where that material appeared before it was removed;
(2) A statement (under penalty of perjury) that you have a good faith belief that the material was removed or disabled as a result of mistake or misidentification (this is where the defense(s) you identified should be delineated);
(3) Your name, address, and telephone number;
(4) A statement that the you consent to the jurisdiction of the Federal District Court for the judicial district in which your address is located, or if your address is outside of the United States, you agree to submit to the jurisdiction for a Federal District Court in any judicial district where the service provider can be found;
(5) A statement that you agree to accept service of any lawsuit from the person who filed the original DMCA notice (or their representation) and;
(6) Your physical or electronic signature of the subscriber. [1]
If you were to write your own DMCA counterclaim letter, it would need to include all of the above information and should be sent to the venue's legal agent. This person, or the office where this person can be found, should be identified in the original DMCA takedown notice. But, don't think you need to re-invent the wheel; if there is a provided form, using that works just fine.
What to Expect After Filing a DMCA Counterclaim
After you file a counterclaim under the DMCA, it then becomes a waiting game. The venue will forward the counternotice to the accuser and they will have to review it and determine whether to pursue the matter further. At the time of this writing, their only options are to file a federal lawsuit (which is expensive and difficult to navigate for a non-attorney) or do nothing. If no lawsuit is filed by the original accuser within ten business days after your counterclaim is submitted, generally your item can and will be placed back up and/or enabled again by the venue.
*Note that the CASE Act, once it is fully enacted, will provide a small claims venue that the accuser can theoretically take advantage of in lieu of filing in federal court.
[1] 17 U.S.C. §512(g)(3).
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