We have discussed what to do if you find your original work is being copied online. But, what if you are the one accused of doing the copying? If you have been hit with a Digital Millennium Copyright Act ("DMCA") notice of copyright infringement you should read on. First we will discuss several defenses to a claim of copyright infringement and in a separate post will walk though the steps of submitting a DMCA counternotice. O.K. Onward.
Common Defenses to Copyright Infringement
A counternotice under the DMCA is essentially a denial of a claim of copyright infringement. In order to properly submit such a denial you would need a good faith belief that the conduct or work in question is permitted under the law and/or that the basis of the original DMCA notice is legally and/or factually wrong. To that end, let's take a look at some common defenses to a claim of copyright infringement.
Independent Creation
This defense is pretty much what it sounds like - it applies when two people create the same or similar works completely independent of one another. Works eligible for copyright do not have to be novel or new to the world. All that is required is that the work was not copied from anywhere else and that it has a modicum of creativity. [1] Of course, this defense is less plausible when the two works are highly creative and very similar. It is super unlikely that two novels would be identical to one another without copying - there are just far too many creative choices required when writing a novel to believe that two people made the exact same choices independent of one another. However, it is easier to believe that a plot point or a character from that novel could be developed independently.
If you know that you did not copy your work from anyone else or you are positive that you have never seen the accuser's work, this may be a defense that you can rely upon. While a DMCA counterclaim does not require that evidence be attached, it is always a good idea to compile and maintain any records or evidence that may establish when and how the work in question was created. The DMCA process is legal in nature and a counterclaim is submitted under penalty of perjury so you want to have your ducks in a row before you respond.
Fair Use
If relying upon the fair use doctrine, you are admitting that you copied the work in question but are claiming that you were allowed to copy it because your use qualifies as fair. Some examples of fair use are commentary, research, parody, educational/ classroom uses, news reporting and search engines. Read in detail about fair use here and find a fair use case summary here.
Not Eligible for Copyright
Not everything is eligible for copyright protection. In fact, there is a long list of things that simply cannot be owned by one person. So, even if you did copy from someone else, if the thing you copied is not protectible under copyright laws then that would be a valid basis for a counterclaim.
For instance, recently I was reading a post on social media about a crafter who'd had their work copied and wanted to know what they could do about it. Without any indication of what they person had made, dozens of people chimed in and told them about the DMCA process and how they could get the other work removed. But, eventually, the person mentioned that they were selling planters with cute (but simple) smiley faces on them. Like two circles for the eyes and a semi-circle for the mouth sort of deal. Such a simplistic design would not qualify for copyright protection. Similarly, simple, straight forward planters would likewise not be eligible for copyright as they are considered useful articles. Any DMCA takedown issued based on an unprotectible underlying work would be subject to a counterclaim. Check out this link and this one too for more information on works that are not eligible for copyright protection.
The Merger Doctrine
Merger is a subset of the "not copyrightable" defense. The idea of merger in copyright has to do with the fact that ideas are not protectible, only the expression. For example, Daniel Tiger and Tony the Tiger, shown here, are both cartoon tigers but no one would think that one is a copy of the other. The idea (cartoon tigers) is different from the expression (Daniel and Tony respectively). The idea cannot be owned - anyone can come up with their own cartoon tiger - but the specific expressions depicted by Daniel and Tony can and are owned and cannot be copied.
The idea of merger comes into play when there are only limited ways in which to express an idea, then it is said that the idea and expression have "merged." When merger has occurred, either the work is not copyright eligible at all or the copyright is "thin" which means any copying has to be close to identical before it would be considered infringing. [2] An example of this is photos of useful articles or monuments. For instance, if I take a picture of the Statue of Liberty (monument) or a spoon (useful article), I cannot claim that any similar photo is infringing as there are only so many ways to depict such items.
If you are in a situation where you know you did not copy from the person accusing you and there are only so many ways in which to express the idea in the work at issue, this defense may be applicable.
First Sale Doctrine
The first sale doctrine, written into the Copyright Act, limits the right of distribution. Normally, only a copyright holder would have the right to sell or distribute their work to the public but the first sale doctrine limits this right. This doctrine is what allows all of us to sell our used books, artwork, DVDs, old records, etc. If you have legally obtained a copyrighted item, you are generally allowed to sell that item.
So, if you have received a copyright notice that is related to an item that you are simply reselling with no alterations, the first sale doctrine may cover that use.
De Minimus Use
De minimus is latin for "of minimum importance" or "trifling." In the copyright realm, it refers to copying that is so minor that the law offers no remedy for it. So, even if copying is admitted, in order to be actionable, that copying has to be substantial. If the "average audience would not recognize the appropriation" then it may de minimus. [3] For instance, this defense has been used successfully in situations where three notes of a song were copied [4] and where artwork appeared without permission on television shows but were not shown for very long or were barely observable. [5]
I discuss a few more defenses in my book but these are the main ones. To have a defensible reason to file a counterclaim to a DMCA notice, you have to have a good faith belief that one of these defenses applies to your situation.
[1] Feist Publications, Inc. v. Rural Telephone Service Company, Inc., 499 U.S. 340, 345 (1991).
[2] Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000).
[4] Id.
[5] Gayle v. Home Box Office, Inc., No. 1:17-cv-05867, mem. op. (S.D.N.Y., May 1, 2018); Sandoval v. New Line Cinema Corp., 147 F. 3d 215 (2nd Cir. 1998); Gottlieb Development LLC v. Paramount Pictures, 590 F. Supp. 2d 625 (S.D.N.Y. 2008).
Comments