Disney Enterprises, Inc. et al v. Hotfile Corp. et al

Filing 315

MOTION for Leave to File Amicus Curiae Brief in Support of Hotfile's Opposition to Summary Judgment on its Counterclaim by Electronic Frontier Foundation. (Attachments: # 1 Exhibit Proposed Amicus Brief)(Wasylik, Dineen)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
CASE NO. 1:11-cv-20427 WILLIAMS/TURNOFF
DISNEY ENTERPRISES, INC.,
TWENTIETH CENTURY FOX FILM CORPORATION,
UNIVERSAL CITY STUDIOS PRODUCTIONS LLLP,
COLUMBIA PICTURES INDUSTRIES, INC., and
WARNER BROS. ENTERTAINMENT INC.,
Plaintiffs,
v.
HOTFILE CORP., ANTON TITOV, and
DOES 1-10,
Defendants.
_____________________________________________/
HOTFILE CORP.,
Counterclaimant,
v.
WARNER BROS. ENTERTAINMENT INC.,
Counterdefendant.
_____________________________________________/

BRIEF OF AMICUS CURIAE ELECTRONIC FRONTIER FOUNDATION IN
SUPPORT OF HOTFILE’S OPPOSITION TO SUMMARY JUDGMENT ON ITS
COUNTERCLAIM

TABLE OF CONTENTS
INTRODUCTION ........................................................................................................................... 1
ARGUMENT................................................................................................................................... 1
I.

Interest of Amicus ................................................................................................... 1

II.

Section 512(f) Cannot Be Reconciled With Automated Takedowns ...................... 2
A.
B.

DMCA Takedown Abuse Is a Serious Problem for Online Free
Speech .......................................................................................................... 4

C.

An Automated System Cannot Provide A Sufficient Basis for a Good
Faith Belief That Material Is Infringing ...................................................... 5

D.
III.

Section 512(f) Is An Essential Part of the DMCA’s Statutory Scheme ...... 2

Section 512(f) Liability Does Not Require a Deliberate Lie ....................... 9

The Counter-notice Procedure of Section 512(g) Does Not Obviate the Need for
Section 512(f) Deterrence .......................................................................... 10

CONCLUSION ............................................................................................................................. 12

i

TABLE OF AUTHORITIES
Federal Cases
Am. Can Co. v. Mansukhani,
742 F.2d 314 (7th Cir.1984) ................................................................................................ 4
Batzel v. Smith,
333 F.3d 1018 (9th Cir. 2003) ............................................................................................. 3
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .......................................................................................................... 11
Design Furnishings, Inc. v. Zen Path, LLC,
No. CIV. 2:10-CV-2765-WB, 2010 WL 5418893 (E.D. Cal. Dec. 23, 2010) .................. 11
Dudnikov v. MGA Entm’t, Inc.,
410 F. Supp. 2d 1010 (D. Colo. 2005) ............................................................................ 6, 7
Epic Games, Inc. v. Altmeyer,
08-CV-0764-MJR, 2008 WL 4853634 (S.D. Ill. Nov. 5, 2008) ..................................... 3, 4
Harte-Hanks Commc’ns, Inc. v. Connaughton,
491 U.S. 657 (1989) ............................................................................................................ 9
Hunt v. Liberty Lobby,
720 F.2d 631 (11th Cir 1983) ............................................................................................ 10
In re Aimster Copyright Litig.,
334 F.3d 643 (7th Cir. 2003) ............................................................................................... 9
In re Barboza,
545 F.3d 702 (9th Cir. 2008) ............................................................................................... 9
Lenz v. Universal Music Corp.,
572 F. Supp. 2d 1150 (N.D. Cal. 2008) ......................................................................... 7, 11
New York Times Co. v. Sullivan,
376 U.S. 254 (1964) ............................................................................................................ 9
Peer Int’l v. Pausa Records,
909 F.2d 1332 (9th Cir. 1990) ............................................................................................. 9
Perfect 10 v. CCBill,
488 F.3d 1102 (9th Cir. 2007) ......................................................................................... 3, 7

ii

Rossi v. Motion Picture Ass'n of Am. Inc.,
391 F.3d 1000 (9th Cir. 2004) ..................................................................................... 5, 6, 7
Shropshire v. Canning,
809 F. Supp. 2d 1139 (N.D. Cal. 2011) ............................................................................... 7
Smith v. Summit Entm’t LLC,
2011 WL 2200599 (N.D. Ohio June 6, 2011) ..................................................................... 8
St. Amant v. Thompson,
390 U.S. 727 (1968) ............................................................................................................ 9
U.S. v. Real Prop. at 2659 Roundhill Dr., Alamo, Cal.,
194 F.3d 1020 (9th Cir. 1999) ............................................................................................. 9
Federal Statute
17 U.S.C. § 512 ...................................................................................................................... passim
Federal Rule
Federal Rule of Civil Procedure 65 ................................................................................................. 3
Legislative Material
Sen. Rep. No. 105-190..................................................................................................................... 3
Other Authorities
3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright (1989) ........................................ 9
Black’s Law Dictionary (7th ed.1999) ............................................................................................ 6
Jennifer Urban & Laura Quilter, Efficient Process or “Chilling Effects”? Takedown Notices
under Section 512 of the Digital Millennium Copyright Act,
22 Santa Clara Computer & High Tech. L.J. 621, 651 (2006) ................................................... 5
Wendy Seltzer, Free Speech Unmoored in Copyright’s Safe Harbor: Chilling Effects of the
DMCA on the First Amendment, 24 Harv. J.L. & Tech. 171 (2010) .......................................... 4

iii

INTRODUCTION
Amicus curiae Electronic Frontier Foundation (EFF) files this brief because Hotfile’s
counterclaim raises an issues of crucial importance to Internet users: whether the Digital
Millennium Copyright Act authorizes copyright owners to send takedown notices based on the
conclusions of a computer program.
Much of the record in this case is under seal. Nonetheless, the crucial facts do not seem
to be in dispute. Warner sent notices pursuant to Section 512(c), which requires both 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,” and a
“statement that the information in the notification is accurate.” 17 U.S.C. § 512(c)(3)(A)(v &
vi). In many instances, these statements were incorrect. Warner knew its system would result in
false positives, but sent the notices anyway.
Warner claims that these were simple “mistakes,” and that it cannot be held accountable
for its misrepresentations because, in essence, its system design does not allow for a deliberate
lie. Warner gets it exactly backwards: the problem is that it does not appear that its system could
have provided a sufficient basis for Warner to form the requisite good faith belief.
Warner’s theories run contrary to well-established judicial authority, clear congressional
intent, and the public interest. If accepted, they could render Section 512(f) a virtual dead letter
and encourage the abuse of the “notice and takedown” process that already interferes with the
legitimate uses of Internet sites that store user-uploaded materials.
EFF urges the Court to firmly reject Warner’s strained analyses and hold it accountable
for its improper takedowns.
ARGUMENT
I.

Interest of Amicus
The Electronic Frontier Foundation (EFF) is a nonprofit civil liberties organization that

has worked for more than 20 years to protect consumer interests, innovation, and free expression
in the digital world. EFF and its members have a strong interest in assisting the courts and
1

policymakers to help ensure that copyright law balances the interests of creators, innovators and
the general public.
EFF represents the interests of Internet users, who are not directly represented in disputes
such as this one between Internet-based businesses and copyright owners. EFF has particular
interest in the rule of law at issue in Hotfile’s counterclaim, Section 512(f) of the Digital
Millennium Copyright Act of 1998, 17 U.S.C. § 512(f). EFF has represented numerous plaintiffs
in Section 512(f) cases. See e.g., Sapient v. Uri Geller and Explorologist Ltd., 3:07-cv-02478
VRW (N.D. Cal.); Showing Animals Respect and Kindness v. Professional Rodeo Cowboys
Ass’n, 1:08-cv-03314 (N.D. Ill). In particular, it represents Stephanie Lenz in Lenz v. Universal
Music Corp., 5:07-cv-03783 JF (N.D. Cal.). A central issue in that case, as in this one, is whether
the defendant formed the requisite good faith belief that material on a website was not authorized
by law before sending a takedown notice under the Digital Millennium Copyright Act.
II.

Section 512(f) Cannot Be Reconciled With Automated Takedowns
Warner’s defense appears to be based on two fundamentally flawed premises: (1) that

Section 512(f) countenances automated takedowns because while the operator of the system
knows there will be errors, by design it can never know, in advance, which notices will be
erroneous; and (2) that Section 512(f) liability cannot attach absent a showing of deliberate,
intentional falsehood. As explained below, Warner could not be more wrong. In fact, Warner’s
approach would render Section 512(f) a virtual nullity, contrary to clear judicial authority and
legislative intent.
A.

Section 512(f) Is An Essential Part of the DMCA’s Statutory Scheme

When Congress took up the issue of online copyright infringement in the mid-1990s, it
sought to resolve a difficult challenge: How to allow copyright owners to quickly and efficiently
police online infringement without impairing lawful uses of copyrighted works. Its answer was
Section 512’s expedited “notice and takedown” provisions, which gave copyright owners new
tools to cause service providers to expeditiously take down infringing content without advance
judicial review.
2

To ensure that expedited process was not abused, Congress also included an important
and powerful deterrent, Section 512(f), that allows lawful users of copyrighted works to hold
copyright owners accountable if they send a takedown notice in bad faith. As the Senate Report
on Section 512(f) explained,
The Committee was acutely concerned that it provide all end-users . . . with
appropriate procedural protections to ensure that material is not disabled without
proper justification. The provisions in the bill balance the need for rapid response
to potential infringement with the end-users legitimate interests in not having
material re-moved without recourse.
Sen. Rep. No. 105-190 at 21 (1998).
Numerous courts have recognized the harm to free speech that could be caused by
indiscriminate takedowns under Section 512, and the importance of mitigating that harm by
requiring copyright owners to take the notice requirements seriously. Admonishing one
copyright owners for its failure to send compliant notice, for example, the Ninth Circuit Court of
Appeals noted:
The DMCA requires a complainant to declare, under penalty of perjury, that he is
authorized to represent the copyright holder, and that he has a good-faith belief
that the use is infringing. This requirement is not superfluous. Accusations of
alleged infringement have drastic consequences: A user could have content
removed, or may have his access terminated entirely. If the content infringes,
justice has been done. But if it does not, speech protected under the First
Amendment could be removed. We therefore do not require a service provider to
start potentially invasive proceedings if the complainant is unwilling to state
under penalty of perjury that he is an authorized representative of the copyright
owner, and that he has a good-faith belief that the material is unlicensed.
Perfect 10 v. CCBill, 488 F.3d 1102, 1112 (9th Cir. 2007). Thus, Section 512(f) was crucial to
accomplishing the DMCA’s goal of “carefully balanc[ing] the First Amendment rights of users
with the rights of a potentially injured copyright holder.” Batzel v. Smith, 333 F.3d 1018, 1031
n.19 (9th Cir. 2003) (dictum).
By way of comparison, consider the procedure copyright owners might have used before
the DMCA was enacted: a temporary restraining order under Federal Rule of Civil Procedure
65(b). Epic Games, Inc. v. Altmeyer, 08-CV-0764-MJR, 2008 WL 4853634, at *3 (S.D. Ill.
Nov. 5, 2008). A TRO granted before the opposing party has an opportunity to be heard is

3

subject to “stringent restrictions,” acknowledging that “our entire jurisprudence runs counter to
the notion of court action taken before reasonable notice and an opportunity to be heard has been
granted both sides of a dispute. Id. at *5 (quoting Am. Can Co. v. Mansukhani, 742 F.2d 314,
321 (7th Cir.1984)).
Like a TRO, takedowns under Section 512(c) can result in expressive material being
taken down from the Internet sites through which they are communicated, without prior notice to
the person who posted the material or a prior opportunity to contest the removal. Unlike a TRO,
removal can occur, and is indeed expected to occur, without any prior judicial scrutiny. In the
statutory scheme of the DMCA, the availability of actions for knowing misrepresentation under
Section 512(f) help compensate for the lack of prior judicial approval to protect the “end-users
legitimate interests” recognized by Congress.
B.

DMCA Takedown Abuse Is a Serious Problem for Online Free Speech

Since 1998, it has become abundantly clear that Congress’s concerns were not misplaced.
Attacks on free speech through Section 512 misuse are well-documented.1 To offer just one of
many examples, in 2003 the Recording Industry Association of America sent a takedown notice
to Penn State University because it decided that an mp3 file of an astrophysicist named Peter
Usher singing to a satellite might infringe copyrighted works by R&B star Usher.2 Indeed, an
academic study of the Chilling Effects database of takedown notices found numerous abuses,
1

See e.g., Landmark Education, at http://www.eff.org/cases/landmark-and-internetarchive (last visited March 3, 2012) (controversial education foundation sent DMCA takedown
against critical six-hour documentary that showed two pages of its manual for a few seconds);
Sapient v. Geller, supra; Malkin v. Universal at https://www.eff.org/deeplinks/2007/05/malkinfights-back-against-copyright-law-misuse-universal-music-group (last visited March 3, 2012)
(Universal sent DMCA notice for criticism of Akon using short clips of videos for purposes of
criticism); Diehl v. Crook at https://www.eff.org/cases/diehl-v-crook (Last visited March 3,
2012) (interviewee sent DMCA takedown notice claiming copyright in Fox News’ broadcast of
interview). See generally Wendy Seltzer, Free Speech Unmoored in Copyright’s Safe Harbor:
Chilling Effects of the DMCA on the First Amendment, 24 Harv. J.L. & Tech. 171 (2010)
(documenting use of DMCA takedown process to chill protected speech).
2
See Declan McCullach, RIAA Apologizes for threatening letter, CNET, May 12, 2003,
available at http://news.cnet.com/2100-1025_3-1001095.html.

4

including that over half of the takedowns sent to Google were by apparent competitors. See
Jennifer Urban & Laura Quilter, Efficient Process or “Chilling Effects”? Takedown Notices
under Section 512 of the Digital Millennium Copyright Act, 22 Santa Clara Computer & High
Tech. L.J. 621, 651 (2006). Google has stated that over 37% of the DMCA takedown notices it
receives are invalid.3
All too often, the source of the problem is an automated (or semi-automated) takedown
process. For example, two bloggers recently discovered that posts they had written (ironically,
regarding copyright issues) had been removed from Google search results as a result of improper
DMCA notices generated by an automated program.4 A ruling that automated takedown systems
are immune from Section 512(f) would open the door for further abuse.
Improper takedown notices are already a serious problem for online speech. Without the
restraints Congress mandated in Section 512(f), this problem will only get worse.
C.

An Automated System Cannot Provide A Sufficient Basis for a Good Faith
Belief That Material Is Infringing

Warner concedes that it knew that it was issuing takedown requests for files that did not
contain any infringing copies of Warner’s works. Warner Br. at 10. Nevertheless, it asks the
court to excuse the improper takedowns as simple “errors” and “mistakes,” relying particularly
on Rossi v. Motion Picture Ass’n of Am. Inc., 391 F.3d 1000 (9th Cir. 2004).
Warner’s reliance is misplaced: Rossi specifically distinguished automated systems. Id.
3

T. Gibbons, Google Submission Hammer Section 92A, PC World, Mar. 16 2009,
available at
http://pcworld.co.nz/pcworld/pcw.nsf/feature/93FEDCEF6636CF90CC25757A0072B4B7. As it
happens, Warner itself has a sorry track record when it comes to overbroad takedowns. In 2009,
it was widely criticized for using YouTube’s “Content I.D.” system to block thousands of videos
at once, including clear fair uses. See Fred von Lohmann, YouTube's January Fair Use
Massacre, (Feb. 3, 2009), available at https://www.eff.org/deeplinks/2009/01/youtubes-januaryfair-use-massacre.
4
See Drew Wilson, TorrentFreak, TechDirt Reinstated, Armovore Apologizes, Zeropaid,
Feb 28, 2012, available at http://www.zeropaid.com/news/99310/torrentfreak-techdirt-reinstatedarmovore-apologizes/.

5

at 1005 n.7. In fact, the MPAA’s review process, while imperfect, was significantly more
rigorous than Warner’s appears to be. In that case, the plaintiff’s website contained statements
such as “Full Length Downloadable Movies” and “Join to download full length movies online.”
Id. at 1002. An employee of the Motion Picture Association of America reviewed the site, and
erroneously concluded that “motion pictures owned by MPAA members were available for
immediate downloading,” and issued a takedown notice to the plaintiff’s ISP.5 Id. at 1005.
The court held that Section 512(c) and (f), read together, created a subjective good faith
test that adopted the “subjective standard traditionally associated with a good faith requirement.”
Id. at 1004. The court defined good faith as “‘[a] state of mind consisting [of] ... honesty in
belief or purpose.’ Black’s Law Dictionary, 701 (7th ed.1999).” Id. at 1004 n.5. The Court
concluded that while the MPAA had made a mistake, it had still done enough to form a good
faith belief in infringement because the text pervading the site “not only suggests that
conclusion, but virtually compels it.” Id. On that basis, the Court ruled that the MPAA did not
make a knowing misrepresentation. Id. at 1005-06.
Under Rossi, an automated conclusion that a given file might possibly infringe a given
owner’s content, without more, would still fall well short of what was needed to form a good
faith belief that the targeted material infringed the sender’s copyrights. Id. Indeed, the Ninth
Circuit’s conclusion was based, in part, on an examination of “the information residing on
Rossi's website, and MPAA’s actions in response to the discovery of that information.” Id. at
1005. If Warner were right, there would have been no need for the Court to review that evidence.
Likewise, in Dudnikov v. MGA Entm’t, Inc., 410 F. Supp. 2d 1010 (D. Colo. 2005), the
court found that “MGA was required to show that it had a sufficient basis to form the required
good faith belief that the Plaintiffs’ auction infringed on its rights, and that its actions therefore

5

In Rossi, the MPAA used the “Ranger” automated computer “program to initially
identify potentially infringing websites [however,] the MPAA employs three to four employees
who actually review the identified sites. It is these employees, rather than ‘Ranger,’ who
ultimately decide whether a website contains infringing material.” Rossi, 391 F.3d at 1005 n.7.

6

complied with the notice and takedown requirements under the DMCA.” Id. at 1013.
Thus, Rossi (and every other Section 512(f) decision of which EFF is aware) is clear that
while mistaken conclusions won’t always lead to Section 512(f) liability, a party must still do
what is necessary to form the requisite good faith belief that material is infringing. Id. See also,
e.g., Perfect 10, 488 F.3d at 1112. An automated process, particularly one known to result in
errors, cannot suffice.
Relevant persuasive authority can also be found in one of the leading Section 512(f)
decisions interpreting Rossi, Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150 (N.D. Cal.
2008). In that case, Judge Jeremy Fogel firmly rejected the defendants’ claim that they were not
required to even consider whether a given video was authorized by the fair use doctrine. Noting
that the DMCA “requires copyright owners to make an initial review of the potentially infringing
material prior to sending a takedown notice . . . .” id. at 1155, Judge Fogel concluded that part of
that review must be a consideration of whether the material in question is sheltered by the fair
use doctrine:
An allegation that a copyright owner acted in bad faith by issuing a takedown
notice without proper consideration of the fair use doctrine thus is sufficient to
state a misrepresentation claim pursuant to Section 512(f) of the DMCA.
Id.; accord Shropshire v. Canning, 809 F. Supp. 2d 1139, 1148 n.3 (N.D. Cal. 2011) (“in order . .
. to proceed under the DMCA . . . , the [copyright] owner must evaluate whether the material
makes fair use of the copyright.” (quoting Lenz, 809 F. Supp. 2d at 1154)).
On the public facts, Warner could not have considered fair use—or license, or any other
legal protections—because it based its takedowns on the results of a computer algorithm.
Indeed, it appears that this algorithm only considered the title of the work—necessarily meaning
that no good faith belief could have been formed about the lawfulness of the work’s content.
Moreover, while a human may well be able to recognize a fair use quickly and easily, we are
aware of no computer program that can adequately provide that service.6 Accordingly, if Warner
6

This is not to say that computers have no role to play. Certainly an automated computer

7

is following a common industry practice, Br. at 10, that practice flatly contradicts existing
precedent.
That precedent includes Smith v. Summit Entm’t LLC, in which the defendant movie
studio sent takedown notices based on nothing more than the words of a title, just as Warner
admits to doing in this case. 2011 WL 2200599, at *1 (N.D. Ohio June 6, 2011). The plaintiff, a
recording artist, distributed his music on Youtube.com and other websites with cover art that
included the words “inspired by the twilight saga,” referencing a book series that was made into
films distributed by the defendant. The court found, on the allegations of the complaint, that the
studio’s claim of copyright infringement was made in bad faith, where it was based only on the
use of the words “twilight saga,” with no evidence or suggestion of any copying of copyrighted
material. Id. at *3.
Indeed, if Warner were correct, which it is not, Section 512(f) would become largely
superfluous. Any company could sidestep accountability for improper takedowns by simply
outsourcing the process to a computer. What is worse, copyright owners would have a perverse
incentive to dumb-down the process, removing human review so as to avoid the possibility of
any form of subjective belief. The tragic consequences for lawful uses are obvious: untold
numbers of legal videos would be taken down, whether or not the uses were fair or even
licensed.
Imagine the potential for mischief: Let’s say that Warner does not like competition from
Universal. It could set a computer to search through Universal’s online presence, with the
loosest possible settings, and issue takedown after takedown to Universal’s ISP for spurious
claims. Nor is this scenario far-fetched: as noted above, supra at 4-5, anticompetitive uses of the
DMCA takedown process are commonplace.

review could provide Warner with a list of files that contained possible matches, providing
trained human reviewers with a more efficient and cost effective process to establish the requisite
good faith belief.

8

D.

Section 512(f) Liability Does Not Require a Deliberate Lie

After sending takedown notices without acquiring a good faith belief, Warner seeks
escape liability by asking this Court to heighten the standard for Section 512(f) liability to an
intentional, “deliberate falsehood.” Br. at 9. In effect, Warner argues that it can arrange to be
willfully blind to its improper takedowns, without consequence.
Again, Warner is wrong. Under the DMCA, as with any other body of law,7 proof of
willful blindness and reckless disregard suffice to establish knowledge. “Willful blindness is
knowledge, in copyright law . . . as it is in the law generally.” In re Aimster Copyright Litig.,
334 F.3d 643, 650 (7th Cir. 2003). For example, to prove willful infringement, a plaintiff must
show that the infringer acted “with knowledge that [its] conduct constitutes copyright
infringement.” See Peer Int’l v. Pausa Records, 909 F.2d 1332, 1335 n.3 (9th Cir. 1990)
(quoting 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1404[B], at 14-40.2.3 (1989)). Willfulness can be based “on either ‘intentional’ behavior, or merely ‘reckless’
behavior.” In re Barboza, 545 F.3d 702, 707-08 (9th Cir. 2008) (collecting cases from multiple
circuits).
Even under what may well be the most rigorous knowledge standard in U.S. law, the
“actual malice” standard applicable to defamation claims against public figures, New York Times
Co. v. Sullivan, 376 U.S. 254, 280 (1964), knowledge may be inferred from circumstance. See
St. Amant v. Thompson, 390 U.S. 727, 732 (1968) (“recklessness may be found where there are
obvious reasons to doubt the veracity of the informant or the accuracy of his reports”). Thus, for
example, “the purposeful avoidance of the truth” can establish actual malice. See Harte-Hanks
Commc’ns, Inc. v. Connaughton, 491 U.S. 657, 692 (1989) (jury finding that “it is likely that the
newspaper’s inaction was a product of a deliberate decision not to acquire knowledge of facts
that might confirm the probable falsity” of facts in its story supports a finding of actual malice).

7

See, e.g., U.S. v. Real Prop. at 2659 Roundhill Dr., Alamo, Cal., 194 F.3d 1020, 1028 (9th Cir.
1999) (“An owner cannot deliberately avoid actual knowledge through ‘willful blindness’”).

9

In a similar vein, the Eleventh Circuit Court of Appeals has held that malice may be shown by
evidence of a grossly inadequate investigation. Hunt v. Liberty Lobby, 720 F.2d 631, 643-44
(11th Cir 1983) (“evidence which shows that the statement was inherently implausible or that
there were obvious reasons to doubt the veracity of the informant is relevant to establishing
actual malice.” (citing cases)).
These lines of authority recognize the injustice of absolving malfeasors who took steps to
avoid gaining actual knowledge of their improper acts, as Warner did in implementing a system
it admits “is bound to produce some errors.” Warner Br. at 10. Such injustice would be
particularly improper here, given that a central purpose of Section 512, including Section 512(f),
was to facilitate the growth of the Internet as a platform for free speech. If a defendant can
establish subjective good faith through willful blindness to law or fact, this would eviscerate the
protections Congress created in Section 512(f).
Warner apparently chose to be deliberately indifferent to whether its DMCA takedown
notices would include misrepresentations. The Court should not permit it to avoid the
consequences of that choice.
III.

The Counter-notice Procedure of Section 512(g) Does Not Obviate the Need for
Section 512(f) Deterrence.
Section 512 contains another provision that protects those who post material: the “notice

and put-back” procedure of Section 512(g). Under that provision, a user whose content has been
removed pursuant to a takedown notice can declare under penalty of perjury that the material is
non-infringing, and consent to the jurisdiction of an appropriate court, whereupon the online
service provider must restore the content to preserve its immunity from liability from a suit by
that user. However, the availability of the put-back procedure does not diminish the purpose and
importance of Section 512(f) as an effective deterrent to overbroad takedowns, for at least three
reasons.
First, users who post non-infringing materials that are taken down may not be aware of
their ability to send a counter-notice, and/or may be afraid to exercise that right. Individuals may

10

not understand their rights under copyright law, such as the right to use copyrighted works for
purposes of parody, Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), or for personal
back-up. Moreover, no matter how confident the user is that her material is lawful, if she does
know something about copyright law she may be afraid to counter-notice give the significant
downside risk of statutory damages if a court disagrees. Further, some users may be concerned
about giving identifying information to the sender of the takedown notice.
Second, user-posted material can be time-critical, such as videos that comment on
political debates or other current events,8 or sales listings for which removal means lost sales.
See, e.g., Design Furnishings, Inc. v. Zen Path, LLC, No. CIV. 2:10-CV-2765-WB, 2010 WL
5418893, at *7 (E.D. Cal. Dec. 23, 2010); see also Lenz, 572 F. Supp. 2d at 1156 (“the
unnecessary removal of non-infringing material causes significant injury to the public where
time-sensitive or controversial subjects are involved and the counter-notification remedy does
not sufficiently address these harms.”). Even if the user counter-notices, lawful non-infringing
materials may not be restored for many days, diminishing their relevance, purpose, and/or
commercial value. See 17 U.S.C. § 512(g) (restoration need not occur until ten days after a
counter-notice is received).
Finally, because Section 512 requires service providers to have a repeat infringer policy
that provides for terminating accounts of repeat infringers in appropriate circumstances, repeated
takedowns can also lead to termination of a user’s account. See e.g., Design Furnishings, 2010
WL 5418893, at *7 (granting injunction barring further DMCA takedown notices and finding
likelihood of success as to Section 512(f) claim). In 2008, for example, a non-profit organization
that videotapes and photographs rodeos in order to expose animal abuse, had its YouTube
account terminated as a result of multiple takedown notices sent by the Professional Rodeo

8

See e.g. NPR Forces Takedown of Political Ad Weeks Before Critical Vote,
https://www.eff.org/takedowns/npr-forces-takedown-political-ad-weeks-critical-vote; see also
Corynne McSherry, Olympic Committee Takedown Shows Risks of Ill-timed Takedowns,
https://www.eff.org/deeplinks/2008/08/olympic-committee-takedown-shows-risks-ill-timed-t.

11

Cowboys Association (PRCA). Those notices were utterly baseless, as the PRCA cannot claim
copyright in live rodeo events filmed by other.9
Thus, the counter-notice procedure alone is not enough to protect lawful online speech.
Congress intended Section 512(f) to impose a meaningful deterrent, ensuring that copyright
holders have the requisite good faith basis before initiating an extra-judicial process that would
potentially take protected expression offline.
CONCLUSION
Warner’s automated dragnet technique, done with admitted knowledge that it would
inevitably cause a substantial amount of lawful content to disappear from Hotfile, resulted in
numerous takedowns that were not based on a good faith belief that the identified files infringed
its copyrights. Warner should not be permitted to escape Section 512(f) liability through willful
blindness. EFF urges the Court to deny Warner’s motion.
Dated: March 5, 2012

ELECTRONIC FRONTIER FOUNDATION
/s/ Dineen Pashoukos Wasylik
DINEEN PASHOUKOS WASYLIK
Florida State Bar No. 191620
CONWELL KIRKPATRICK, PA
2701 N. Rocky Point Drive
Suite 1030
Tampa, Florida 33607
Telephone: [phone]
Facsimile: 813-282-8800
[e-mail]
MITCHELL L. STOLTZ (pro hac vice pending)
[e-mail]
KURT OPSAHL
[e-mail]
CORYNNE MCSHERRY
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
454 Shotwell Street

9

See SHARK v. PRCA, https://www.eff.org/cases/shark-v-prca.

12

San Francisco, CA 94110
Telephone: [phone]
Facsimile: [phone]
Attorneys for Amicus Curiae

13

CERTIFICATE OF SERVICE
Disney Enterprises, Inc., et al. v. Hotfile Corp. et al.
Case No.: 1:11-cv-20427-KMW (Williams/Turnoff)
I HEREBY CERTIFY that a true and correct copy of the foregoing BRIEF OF AMICUS
CURIAE ELECTRONIC FRONTIER FOUNDATION IN SUPPORT OF HOTFILE’S
OPPOSITION TO SUMMARY JUDGMENT ON ITS COUNTERCLAIM was served by the
Court’s ECF system on March 5, 2012, on all counsel or parties of record on the service list.
Dated: March 5, 2012
/s/ Dineen Pashoukos Wasylik
DINEEN PASHOUKOS WASYLIK

1

Disney Enterprises, Inc., et al. v. Hotfile Corp. et al.
Case No.: 1:11-cv-20427-KMW (Williams/Turnoff)
SERVICE LIST
Steven B. Fabrizio
Duane C. Pozza
Jennifer V. Yeh
Luke C. Platzer
JENNER & BLOCK
1099 New York Avenue, N.W., Suite 900
Washington, DC 10022
202-639-6094
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]

Anthony P. Schoenberg
Deepak Gupta
Janel Thamkul
N. Andrew Leibnitz
Roderick M. Thompson
FARELLA BRAUN & MARTEL, LLP
235 Montgomery Street, 17th Floor
San Francisco, CA 94104
415-954-4400
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]

Karen R. Thorland
Senior Content Protection Counsel
MOTION PICTURE ASSOCIATION OF
AMERICA, INC.
15301 Ventura Boulevard, Building E
Sherman Oaks, CA 91403
818-935-5812
Email: [e-mail]

Janet T. Munn
RASCO KLOCK REININGER PEREZ
ESQUENAZI VIGIL & NIETO
283 Catalonia Avenue, Suite 200
Coral Gables, FL 33134
305-476-7101
Fax: [phone]
Email: [e-mail]

Karen Linda Stetson
GRAYROBINSON P.A.
1221 Brickell Avenue, Suite 1650
Miami, FL 33131
305-416-6880
Fax: [phone]
Email: [e-mail]

Valentin Gurvits
BOSTON LAW GROUP, PC
825 Beacon Street, Suite 20
Newton Centre, MA 02459
617-928-1804
Email: [e-mail]

Attorneys for Plaintiffs/Counter-Defendants
Disney Enterprises, Inc.,
20th Century Fox Film Corporation,
Universal City Studios Productions,
Columbia Pictures Industries, Inc., and
Warner Brothers Entertainment, Inc.

Attorneys for Defendants/CounterClaimants
Hotfile Corp., Anton Titov, Does 1-10, and
Lemuria Communications, Inc.

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