If your hosting service or other online service provider receives a DMCA takedown notice regarding your content, it ordinarily will respond by removing the complained-of material, and it will do this automatically without making any judgment about whether your content actually is infringing. However, the DMCA notice-and-takedown procedures provide you with protection from a wrongful claim of copyright infringement. The DMCA requires your service provider to notify you promptly when it removes any of your content because of a takedown notice, and you have the right to submit a counter-notice asking that the material be put back up. There is no specific time limit for submitting a counter-notice, but you should not delay unreasonably in doing so. If you send a counter-notice, your online service provider is required to replace the disputed content unless the complaining party sues you within fourteen business days of your sending the counter-notice. (Your service provider may replace the disputed material after ten business days if the complaining party has not filed a lawsuit, but it is required to replace it within fourteen business days.)
Before you send a counter-notice, you should consider carefully whether you are in fact infringing the complaining party's copyright. There are two reasons for you to consider this carefully. First, the counter-notice requires you to state, under penalty of perjury, that you have a good faith belief that your material was wrongly removed. You do not want to make this claim lightly because it might come back to haunt you. Second, if the complaining party has a good infringement claim, sending a counter-notice may trigger a lawsuit. If you are not prepared to stand up for your use of the copyright owner's work in a lawsuit, you should think twice about firing back a counter-notice. That said, copyright owners sometimes send bogus takedown notices that have no basis in law or fact, which are meant solely to intimidate the target. A prompt counter-notice can make these empty threats go away for good.
Some common bases for sending a counter-notice are that the complaining party does not own copyright in the work in question -- either because it is not covered by copyright or because someone else owns the copyright to it -- and that your use of the copyrighted work is a fair use. You should be extra careful when relying on a claim of fair use to justify sending a counter-notice. Determining whether something is a fair use often requires a complex, fact-specific analysis, and even lawyers have difficulty predicting what a court will say about fair use ahead of time. If you believe fair use might protect you, you should examine the four fair use factors carefully and consider contacting an intellectual property attorney.
To work effectively, your counter-notice must contain the following items:
- your physical or electronic signature;
- your name, address, and phone number;
- identification of the material and its location before it was removed;
- a statement under penalty of perjury that the material was removed by mistake or misidentification;
- your consent to the jurisdiction of a federal court in the district where you live (if you are in the U.S.), or your consent to the jurisdiction of a federal court in the district where your service provider is located (if you are not in the U.S.); and
- your consent to accept service of process from the party who submitted the takedown notice.
If you are not a U.S. resident, you must consent to the jurisdiction of a U.S. court in your counter-notice. If you never come to the United States and have no assets there, then this may not be a significant concession because a plaintiff would not be able to enforce a judgment against you in the U.S. Nevertheless, a plaintiff might be able to convince a court in your country to enforce a foreign (U.S.) judgment, and this proceeding might not give you the opportunity to make out your case. In any event, sending a counter-notice makes non-U.S. residents give up a powerful argument they would otherwise have -- namely, that a U.S. court does not have the authority to render a judgment against them. For these reasons, non-U.S. residents may not want to send a counter-notice unless they are willing to fight a copyright infringement claim in the U.S.
Section 512(f) of the DMCA creates liability for knowingly making false claims in a DMCA takedown notice or counter-notice. See 17 U.S.C. § 512(f). So, if you claim in a counter-notice that your content does not infringe the complaining party's copyrighted work while knowing this to be false, then the copyright owner can win damages from you, including court costs and attorneys' fees stemming from your wrongful counter-notice. Note, however, that this provision also works against a person or company sending a wrongful takedown notice. If someone claims in a takedown notice that you are infringing their copyrighted material while knowing this to be false, then you can win damages from them in a lawsuit. In recent years, the targets of wrongful takedowns have fought back and won damages and favorable settlements from individuals and companies sending bogus takedown notices. For instance, in Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195 (N.D. Cal. 2004), two students and their ISP sued voting machine manufacturer Diebold after it tried to use DMCA takedown notices to disable access to Internet postings of the company's leaked internal email archive. The court granted summary judgment to the students and ISP on their claim, finding that portions of the email archive were so clearly subject to the fair use defense that "[n]o reasonable copyright holder could have believed that [they] were protected by copyright." According to the EFF, Diebold subsequently agreed to pay $125,000 in damages and fees to settle the lawsuit. For another example, see Crook v. 10 Zen Monkeys in our legal threats database. Someone who has sent a baseless takedown notice about your content may be more inclined to back off if you remind him or her about section 512(f) of the DMCA, in addition to sending a counter-notice.