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Retail Law Advisor

Copyright Compliance: (Re-)Register Your DMCA Agent in 2017 to Keep Your Website Docked in the Safe Harbor

Posted in Intellectual Property, Retail, Technology

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The Digital Millennium Copyright Act (DMCA) “safe harbor” provisions shield certain online service providers from copyright infringement liability arising from content posted by users on their website. Provided that the service provider registers its DMCA agent and complies with the other statutory requirements, the service provider may encourage user interaction with its website with peace of mind that the activities of its users will not expose the service provider to a heightened risk of liability for copyright infringement.

While the statutory requirements of the safe harbor remain unchanged, a recent change to the designated DMCA agent registration requirement requires action by all online service providers that wish to retain the protections of the safe harbor. In order to qualify for the DMCA safe harbor going forward, all online service providers – including service providers that registered before the new electronic registration platform went into effect on December 1, 2016 – must register their designated agent with the U.S. Copyright Office in the new electronic DMCA Designated Agent Directory. The deadline to register on the new electronic platform is December 31, 2017. With the cost of registering at only $6 and the entire process to be completed online, the new registration process is inexpensive and relatively simple to complete.

Despite the relative simplicity of the new electronic registration requirement, there are two new features of the DMCA registration process that will require additional administrative upkeep by online service providers. The first new feature is that online service providers must include in their registration a list of all alternate names that the public might use to look up such service provider’s designated agent. The search tool on the Copyright Office’s new DMCA Designated Agent Directory does not allow users to browse the names of service providers but instead requires users to type in the name of the service provider in order to search for the designated agent. Therefore, given the format of the search tool, the service provider is obligated to inform the Copyright Office of alternate names that users might use when searching on the database. Secondly, the DMCA registration now has a three-year expiration period, which means service providers must docket a reminder to renew their DMCA registration.

Retailers that allow users to interact with their websites by posting or submitting content should consider registering their designated agent with the U.S. Copyright Office as a layer of defense from copyright infringement liability in the event that user content contains infringing material. A common form of user interaction with websites is leaving reviews for products purchased from the retailer. However, given the rise and influence of social media on the retail industry, the mediums for user interaction with websites have become more numerous, and exposure to copyright infringement risk by online retail service providers may become a more relevant issue than before. For example, retail websites that enabled customers to re-post Instagram photos of the customer wearing a product to accompany a review may be at risk of copyright infringement if the Instagram photo contains something proprietary, such as artwork. Similarly, retailers that encourage customers to submit YouTube videos with product reviews for reposting on the retailer’s website could potentially be liable for copyright infringement in the event that a song or other content used in the video is proprietary.

Although not every retail business with an on-line presence may currently feel the need to secure DMCA safe harbor protection, such protection will likely become more relevant as customer engagement increases. With the move in retail marketing towards encouraging greater user interaction with retail websites, the likelihood of retailers inadvertently committing copyright infringement becomes greater. New online retail marketing techniques are prime to be exploited by copyright trolls who mine the Internet for copyright infringement. Registering with the DMCA Designated Agent Directory may allow retailers to optimize their websites to use unique forms of marketing, such as social media marketing, while still limiting their exposure to liability for inadvertent copyright infringement.

Although the DMCA safe harbor requires strict adherence to the registration process and other statutory requirements, a service provider’s compliance with all such requirements will be rewarded with a defense against online copyright infringement liability. Online retailers that registered their DMCA agent under the former registration platform should comply with the U.S. Copyright Office’s new procedures before their protection expires later this year. Online retailers who have not previously registered a DMCA agent and satisfied the other safe harbor requirements may want to take a fresh look at this opportunity.