Copyright DMCA law – The Subpoena under 512(h)!

Contact us if you need help filing a DMCA subpoena under section 512(h) in California.

Introduction

Sometimes you want to know the identity of an infringer but you don't know it due to the use of a fake handle name or social media account name.  In these circumstances, you may need to serve a "DMCA subpoena" on a social media platform to unmask the identity of the infringer.  

In one IP infringement case from the Central District of California (DOES 1-4 vs. Arnett), a Party sought a 512(H) DMCA subpoena to try to unmask the identity of someone alleged to have infringed a copyrighted photo (using the party in a photo without consent - a practice that could also trigger a California right of publicity lawsuit). 

The host took down the photo – which lead to a withdrawal of the subpoena.  But then the DOES pursued the case (a “right to forget” case) by filing a Declaratory Action motion as well as a 512(f) misrepresentation case (discussed below).  The case settled so it is not clear how it ended, but needless to say, the DMCA subpoena is a very powerful tool in the social media litigators toolbox.

Watch Attorney Steve explain a subpoena

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17 U.S.C. 512(h) - DMCA subpoena process

Here is the text of this section of the law that deals with seeking a subpoena under the Digital Millennium Copyright Act ("DMCA Subpoena"):

(h)Subpoena To Identify Infringer.—

(1) Request.— A copyright owner or a person authorized to act on the owner's behalf may request the clerk of any United States District Court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this subsection.

2)  Contents of request.— The request may be made by filing with the clerk— (A)  a copy of a notification described in subsection (c)(3)(A) [ See sample letter below);

(B) a proposed subpoena; and

(C) a sworn declaration to the effect that the purpose for which the subpoena is sought is to obtain the identity of an alleged infringer and that such information will only be used for the purpose of protecting rights under this title.

(3) Contents of subpoena.— The subpoena shall authorize and order the service provider receiving the notification and the subpoena to expeditiously disclose to the copyright owner or person authorized by the copyright owner information sufficient to identify the alleged infringer of the material described in the notification to the extent such information is available to the service provider.

(4)  Basis for granting subpoena.— If the notification filed satisfies the provisions of subsection (c)(3)(A), the proposed subpoena is in proper form, and the accompanying declaration is properly executed, the clerk shall expeditiously issue and sign the proposed subpoena and return it to the requester for delivery to the  service provider.

(5) Actions of service provider receiving subpoena.—  Upon receipt of the issued subpoena, either accompanying or subsequent to the receipt of a notification described in subsection (c)(3)(A), the service provider shall expeditiously disclose to the copyright owner or person authorized by the copyright owner the information required by the subpoena, notwithstanding any other provision of law and regardless of whether the service provider responds to the notification.

(6)  Rules applicable to subpoena.—  Unless otherwise provided by this section or by applicable rules of the court, the procedure for issuance and delivery of the subpoena, and the remedies for noncompliance with the subpoena, shall be governed to the greatest extent practicable by those provisions of the Federal Rules of Civil Procedure governing the issuance, service, and enforcement of a subpoena duces tecum.

Sample Notification Letter

Here is one letter I received from a major software organization:

Sample petition for DMCA subpoena - cover letter to Court Clerk.

17 U.S.C. 512(c)(3)(A)

(3)Elements of notification.—

A)To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii)  Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi)  A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

Social Media Platforms where you may need to "unmask" infringers of your copyrights, trademarks, and rights of publicity:

1. Facebook
2. YouTube
3. Instagram
4. Redditt
5. Amazon
6. Etsy
7. Shopify
8. eBay
9. Other sites that allow "user-generated content" (UGC)

Beware of DMCA “bad faith” takedown (by misrepresentation)

It is always important to understand that although you need to file a "takedown" notice prior to initiating a DMCA subpoena, you should not do so in BAD FAITH, and you should consider legal defenses such as "fair use defense."  If not, you could be sued for improper takedown procedures and be held liable under this section:

17 U.S.C. 512(f) addresses this situation:

(f) Misrepresentations.—Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys' fees, incurred by the alleged infringer, by any copyright owner or copyright owner's authorized licensee, or by a  service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

Thus, when dealing with online copyright infringement, it is usually wise to speak with experienced copyright counsel to discuss your case.

Contact a DMCA lawyer

If you need help protecting and enforcing your copyrights or issuing a DMCA subpoena in California (some companies like facebook may require) or issuing or responding to a copyright infringement demand letter, software audit, contact us at (877) 276-5084. 

We can help draft and respond to "cease and desist letters" and handle both transactional and complex copyright litigation issues.