Safe Harbor for Service Providers Under the Digital Millennium Copyright Act
CRS Report for Congress
Safe Harbor for Service Providers Under the
Digital Millennium Copyright Act
Updated November 4, 2005
Brian T. Yeh
American Law Division
American Law Division
Congressional Research Service ˜ The Library of Congress
Safe Harbor for Service Providers Under the Digital
Millennium Copyright Act
Congress passed the Digital Millennium Copyright Act (DMCA) in 1998 in an
effort to adapt copyright law to an evolving digital environment. The expansive
legislation is divided into five titles, the second of which is the focus of this report.
Title II of the DMCA amended chapter 5 of the Copyright Act, 17 U.S.C. § 501 et
seq., and created a new § 512 to limit the liability of service providers for claims of
copyright infringement relating to materials on-line. This “safe harbor” immunity is
available only to parties that qualify as a “service provider” as defined by the DMCA,
and only after the provider complies with certain eligibility requirements.
In exchange for immunity from liability, the DMCA requires service providers
to cooperate with copyright owners to address infringing activities conducted by the
providers’ customers. Subsection 512(h) obligates service providers to divulge to
copyright owners the identity of a subscriber suspected of copyright infringement.
The subsection provides a detailed procedure that a copyright owner must follow in
order to obtain a subpoena from a federal court compelling the service provider to
reveal the identity of the suspected infringing user.
This report describes the safe harbor and subpoena provisions, along with the
responsibilities and obligations of service providers under 17 U.S.C. § 512. In
addition to highlighting specific aspects of the statutory text, the report examines case
law to date interpreting and applying the DMCA’s safe harbors and subpoena
procedure. With respect to the latter, the report discusses court decisions, including
the opinion of the D.C. Circuit Court of Appeals in RIAA v. Verizon Internet
Services, which have held that certain types of service providers may not be
subpoenaed under § 512(h) to identify peer-to-peer music file-sharers.
This report will be updated if events warrant.
Safe Harbor Provisions.........................................2
Judicial Interpretation of the Safe Harbors..........................6
Subpoena to Identify Infringer...............................13
Safe Harbor for Service Providers Under the
Digital Millennium Copyright Act
Online service providers (OSPs) and Internet service providers (ISPs) provide
critical infrastructure support to the Internet, allowing millions of people to access
on-line content and electronically communicate and interact with each other. The
potential for computer users to infringe intellectual property copyrights using the
Internet could expose service providers to claims of secondary liability, such as
contributory and vicarious copyright infringement. Concerned about this significant
legal vulnerability of service providers, Congress passed the “Online Copyright
Infringement Liability Limitation Act,” Title II of the Digital Millennium Copyright
Act (DMCA) of 1998,1 which created limitations on the liability of OSPs and ISPs
for copyright infringement arising from their users’ activities on their digital
networks.2 The act’s legislative history indicates that Congress wanted to provide
service providers with “more certainty ... in order to attract the substantial
investments necessary to continue the expansion and upgrading of the Internet.”3 At
the same time, Congress desired to preserve “strong incentives for service providers
and copyright owners to cooperate to detect and deal with copyright infringements4
that take place in the digital networked environment.” The DMCA therefore
includes several conditions that the service provider must satisfy in order to qualify
for liability protection, and requires that the service providers’ activities be
encompassed within one of four specified categories of conduct.5 One federal district
court assessed the “dual purpose and balance” of the DMCA in the following
Congress ... created tradeoffs within the DMCA: service providers would receive
liability protections in exchange for assisting copyright owners in identifying and
dealing with infringers who misuse the service providers’ systems. At the same
time, copyright owners would forgo pursuing service providers for the copyright
1 P.L. 105-304, 112 Stat. 2860 (1998) (codified at 17 U.S.C. § 512).
2 The Digital Millennium Copyright Act of 1998: U.S. Copyright Office Summary, 8 (Dec.
1998) at [http://www.copyright.gov/legislation/dmca.pdf]. [Hereinafter Copyright Office
3 144 CONG. REC. S11,889 (daily ed. Oct. 2, 1998) (statement of Sen. Hatch).
4 H.Rept. 105-796, 105th Cong., 2d Sess. 72 (1998).
5 Id. at 73.
infringement of their users, in exchange for assistance in identifying and acting6
against those infringers.
Safe Harbor Provisions
Limitations on liability, often called “safe harbors,” shelter service providers
from copyright infringement suits. The DMCA’s safe harbor provisions, codified
at 17 U.S.C. § 512, do not confer absolute immunity, but they do greatly limit service
providers’ liability based on the specific functions they perform.7 The safe harbors
correspond to four functional operations of a service provider: 1) transitory digital
network communications, 2) system caching, 3) storage of information on systems
or networks at direction of users, and 4) information location tools.8 Qualification
for any one of these safe harbors is limited to the criteria detailed in each provision,
and qualification under one safe harbor category does not affect the eligibility
determination for any of the other three.9
§ 512 (a) Transitory digital network communications. When a service
provider acts as a data conduit at the request of a third party by “transmitting, routing,
or providing connections for, material through a system or network controlled or
operated by or for the service provider,” it will be shielded from liability for10
copyright infringement. This safe harbor also protects the service provider for any
intermediate and transient storage of the material in the course of conveying the
digital information. However, qualification for this safe harbor is subject to several
!Data transmission occurs through an automated technical process
without selection of the material by the service provider.
!The service provider does not determine the recipients of the
!Intermediate or transient copies stored on the provider’s system or
network must not be accessible to anyone other than the designated
recipients, and such copies must not be retained on the system longer
than is reasonably necessary.
6 In re Verizon Internet Servs., Inc., 240 F. Supp. 2d 24, 37 (D.D.C.2003), rev'd sub nom.
Recording Indus. Ass'n of Am. v. Verizon Internet Servs., Inc., 351 F.3d 1229 (D.C. Cir.
7 Ellison v. Robertson, 189 F. Supp. 2d 1051, 1064 (C.D. Cal. 2002), aff'd in part and rev'd
in part, 357 F.3d 1072 (9th Cir. 2004). Service providers who qualify for safe harbor are
protected from all monetary and most equitable relief that may arise from copyright liability.
In such a situation, "even if a plaintiff can show that a safe harbor-eligible service provider
has violated her copyright, the plaintiff will only be entitled to the limited injunctive relief
set forth in 17 U.S.C. § 512(j)." Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090,
8 17 U.S.C. § 512(a)-(d).
9 17 U.S.C. § 512(n).
10 17 U.S.C. § 512(a).
!The provider must not have modified the content of the transmitted
§ 512 (b) System Caching. The second safe harbor category limits ISP
liability when its engages in “caching” of on-line content for purposes of improving
network performance. Caching12 helps to reduce the service provider’s network
congestion and increase download speeds for subsequent requests for the same data.
For example, subscribers to a service provider may transmit certain material to other
users of the provider’s system or network, at the direction of those users. The service
provider may, via an automated process, retain copies of this material for a limited
time “so that subsequent requests for the same material can be fulfilled by
transmitting the retained copy, rather than retrieving the material from the original13
source on the network.” Immunity for service providers that utilize system caching
is provided on the condition that the ISP complies with the following:14
!The content of cached material that is transmitted to subsequent
users is not modified by the service provider.
!The provider complies with industry standard rules regarding the
refreshing, reloading, or other updating of the cached material.
!The provider does not interfere with the ability of technology that
returns “hit” count information that would otherwise have been
collected had the website not been cached to the person who posted
!The provider must impose the same conditions that the original
poster of the material required for access, such as passwords or
payment of a fee.
!The provider must remove or block access to any material that is
posted without the copyright owner’s authorization, upon being
notified that such material has been previously removed from the
originating site, or that the copyright owner has obtained a court
order for the material to be removed from the originating site or to
have access to the material be disabled.
§ 512 (c) Information residing on systems or networks at direction
of users. This safe harbor protects against copyright infringement claims due to
storage of infringing material at the direction of a user on ISP systems or networks.
Such storage includes “providing server space for a user’s website, for a chat room,
or other forum in which material may be posted at the direction of users.”15 The16
conditions placed on receiving the benefit of this safe harbor are as follows:
12 Caching is defined as "intermediate and temporary storage of material on a system or
network operated by the service provider." 17 U.S.C. § 512(b).
13 Copyright Office Summary, 10.
14 17 U.S.C. § 512(b)(2)(A)-(E).
15 H.Rept. 105-551, pt. 2, 105th Cong. 2d Sess. 53 (1998).
16 17 U.S.C. § 512(c).
!The service provider lacks actual knowledge of the infringing
material hosted or posted on its system or network.
!In the absence of actual knowledge, the service provider is “not
aware of facts or circumstances from which infringing activity is
!Where the provider has the right and ability to control the infringing
activity, it must not derive a financial benefit directly attributable to
!Upon receiving proper notification of claimed infringement, the
service provider must act “expeditiously” to remove or block access
to the material.
!The service provider must designate an agent to receive notifications
of claimed infringement. The contact information for this agent
must be filed with the Register of Copyrights18 and also be displayed
to the public on the service provider’s website.
Copyright owners must adhere to a prescribed procedure to inform the
provider’s designated agent of claimed infringement. To constitute effective
notification, the copyright owner must “comply substantially” with the statutory
requirements of § 512 (c)(3):19
!The notification is in writing, signed physically or electronically by
a person authorized to act on behalf of the owner of the copyright
!The notification identifies the material that is claimed to have been
infringed and provides sufficient information allowing the service
provider to locate the material.
!The complaining party includes a statement, under penalty of
perjury, that the party has a “good faith belief” that the use of the
material is not authorized by the copyright owner, and that the
information in the notification is accurate.
§ 512 (d) Information location tools. The fourth safe harbor classification
immunizes service providers that provide users access to websites that contain
infringing material by using “information location tools” such as hypertext links,
indexes, and directories.20 The conditions attached are substantially similar to those
that apply to the “system storage” safe harbor provision discussed above, § 512 (c),
including lack of actual or constructive knowledge requirements, notice and take-21
down procedures, and absence of direct financial benefit. The rationale for
protecting service providers under this provision is to promote development of the
17 17 U.S.C. § 512(c)(1)(A)(ii).
18 "The Register of Copyrights is directed to maintain a directory of designated agents
available for inspection by the public, both on the website of the Library of Congress, and
in hard copy format on file at the Copyright Office." H.Rept. 105-551, pt. 2 at 55.
19 17 U.S.C. § 512(c)(3)(A)(i)-(vi).
20 17 U.S.C. § 512(d).
21 17 U.S.C. § 512(d)(1)-(3).
search tools that make finding information possible on the Internet.22 Without a safe
harbor for providers of these tools, the human editors and cataloguers compiling
Internet directories might be overly cautious for fear of being held liable for
Notice and Take-down Procedure. One condition common to three of the
four categories is the requirement that upon proper notification by the copyright
owner of on-line material being displayed or transmitted without authorization, a
service provider must “expeditiously” remove or disable access to the allegedly
infringing material.23 This “notice and take-down” obligation does not apply when
the service provider functions as a passive conduit of information under § 512(a), but
is a condition that must be met to obtain shelter under the remaining three safe harbor
provisions. As indicated by the eligibility conditions in each subsection of § 512(b)-
(d), the notice and take-down procedure varies slightly for each.
To prevent abuse of the notice and take-down procedure, § 512(f) provides
damages, costs and attorneys’ fees to any service provider that is injured by a
knowing, material misrepresentation that an item or activity is infringing.24 For
example, any person who sends a “cease and desist” letter to a service provider, with
the knowledge that the claims of copyright infringement are false, may be liable to
the accused infringer for damages.
Eligibility Threshold for Safe Harbor. For protection under any of the
exemptions, a party must first meet the statutory definition of a “service provider.”
The DMCA provides two distinct definitions, one applicable to the first provision
and the second applicable to all of the others. Under § 512(a), the transitory
communications provision, “service provider” is narrowly defined as “an entity
offering the transmission, routing, or providing of connections for digital online
communications, between or among points specified by a user, of material of the
user’s choosing, without modification to the content of the material as sent or25
received.” The remaining three subsections utilize a broader definition of “service
provider,” applicable to “a provider of online services or network access, or the26
operator of facilities therefor.” For example, this definition encompasses providers
offering “Internet access, e-mail, chat room and web page hosting services.”27
22 H.Rept. 105-551, pt. 2 at 58.
23 See 17 U.S.C. § 512(b)(E), (c)(C), and (d)(3).
24 "'Knowingly' means that a party actually knew, should have known if it acted with
reasonable care or diligence, or would have had no substantial doubt had it been acting in
good faith, that it was making misrepresentations. 'Material' means that the
misrepresentation affected the ISP's response to a DMCA letter." Online Policy Group v.
Diebold, Inc., 337 F. Supp. 2d 1195, 1204 (N.D. Cal. 2004) (citations omitted).
25 17 U.S.C. § 512(k)(1)(A).
26 17 U.S.C. § 512(k)(1)(B).
27 H.Rept. 105-551, pt. 2 at 64.
After a party qualifies as a service provider under one of the applicable
definitions, there are still two additional threshold requirements that the provider
!The service provider must have adopted, reasonably implemented,
and informed its users of a policy for the termination of the accounts
of subscribers who are repeat copyright infringers.
!The provider must accommodate and not interfere with “standard
technical measures”29 that are used by copyright owners to identify
or protect their works, such as digital watermarks or digital rights
No affirmative duty to police infringing activity. Pursuant to § 512 (m),
the DMCA safe harbor provisions are not conditioned upon a service provider30
“monitoring its service or affirmatively seeking facts indicating infringing activity.”
One U.S. district court has noted that this provision of § 512 “represents a legislative
determination that copyright owners must themselves bear the burden of policing for
infringing activity — service providers are under no such duty.”31 Yet some legal
commentators suggest that courts have nevertheless created a “back door”
requirement for ISPs to police their systems in search of copyright infringement by
strictly construing the § 512(i) obligation to “implement” a repeat infringer
termination policy as an affirmative duty to actively investigate potential32
infringement. These judicial interpretations of the termination requirements in
section § 512(i)(1)(A), discussed below, arguably may be contrary to Congress’s
intent in § 512(m), as indicated in committee report language accompanying the
[T]he Committee does not intend this [termination] provision to undermine the
principles of new subsection [m] ... by suggesting that a provider must
investigate possible infringements, monitor its service, or make difficult
judgments as to whether conduct is or is not infringing. However, those who
repeatedly or flagrantly abuse their access to the Internet through disrespect for
the intellectual property rights of others should know that there is a realistic33
threat of losing that access.
Judicial Interpretation of the Safe Harbors
Several courts have considered the safe harbor provisions to determine whether
certain service providers met the statutory requirements for protection from copyright
28 17 U.S.C. § 512(i)(1)(A)-(B).
29 "Standard technical measures" is defined at § 512(i)(2).
30 17 U.S.C. § 512(m)(1).
31 In re Aimster Copyright Litigation, 252 F. Supp. 2d 634, 657 (N.D. Ill. 2002), aff’d, 334
F.3d 643 (7th Cir. 2003).
32 See, e.g., Jennifer Bretan, Harboring Doubts About the Efficacy of § 512 Immunity Under
the DMCA, 18 BERKELEY TECH. L.J. 43, 51-54 (2003).
33 H.Rept. 105-551, pt. 2 at 61.
infringement claims. A survey of cases that have examined the safe harbor defense
reveals that courts generally have been cautious in permitting liability limitation to
service providers, closely scrutinizing compliance with the safe harbor eligibility
conditions on the part of both copyright owners and service providers.
Safe harbor denied. In two copyright infringement cases involving peer-to-34
peer file-sharing services, A & M Records, Inc. v. Napster, Inc. and In re Aimster
Copyright Litigation,35 the courts denied safe harbor protection to the companies
Napster and Aimster, on the ground that those companies did not meet the eligibility
requirements specified by the DMCA. Both of these companies operated peer-to-
peer networking services that facilitated sharing over the Internet of music files
stored on their users’ computer hard drives. Using peer-to-peer software offered by36
Napster and Aimster, MP3 song files — the majority of which were unauthorized
for distribution by their copyright owners — were uploaded and downloaded freely
and repeatedly to the alarm of the music recording industry.
Napster asserted that its operations were protected by the § 512(a) safe harbor
provision, claiming that it offered the “transmission, routing, or providing of37
connections for digital online communications.” The district court in Napster
found that the infringing material was exchanged over the Internet, not through
Napster’s servers, and therefore Napster did not provide connections “through” its
system.38 On the basis of this determination, the court ruled that Napster had failed
to demonstrate that it qualified for the § 512(a) safe harbor. In addition, the court
noted that even if Napster had met the criteria in §512(a), it did not satisfy the
threshold eligibility requirements in § 512(i), in particular the termination policy
provision. The court found that the plaintiffs in the case had raised “genuine issues
of material fact about whether Napster ha[d] reasonably implemented a policy of
terminating repeat infringers” when it introduced evidence that Napster had not
adopted a formal termination policy until two months after the filing of the lawsuit
against it.39 This belated attempt to adopt a termination policy would have prevented
Napster from seeking liability protection under any of the four safe harbors.
The U.S. Court of Appeals for the Ninth Circuit in Napster rejected “a blanket
conclusion that § 512 of the [DMCA] will never protect secondary infringers,” but
commented that the “plaintiffs raise serious questions regarding Napster’s ability to
34 239 F.3d 1004 (9th Cir. 2001).
35 252 F. Supp. 2d 634, 648 (N.D. Ill. 2002), aff'd, 334 F.3d 643 (7th Cir. 2003).
36 The Aimster service was renamed the "Madster" in January 2002, after a ruling by a
National Arbitration Forum panel that the Internet domain name "aimster.com" violated the
trademark for America Online's (AOL) instant messaging service. To avoid confusion, this
report will continue to refer to the file-sharing service as "Aimster." See
[http://www.usatoday.com/tech/news/ 2002/02/01/aims ter-now-madster.htm] .
37 A & M Records, Inc. v. Napster, Inc., 2000 WL 573136, at *3 (N.D. Cal. May 12, 2000).
38 Id. at *8. The court stated, "Napster enables or facilitates the initiation of connections,
but these connections do not pass through the system within the meaning of subsection 512
39 Id. at *9-10.
obtain shelter under § 512.”40 The significant questions included whether Napster
would be eligible for safe harbor under § 512(d), the information location tools
provision, whether copyright owners must give service providers “official” notice
pursuant to § 512(c)(3) in order for the provider to have knowledge of infringement
on its system, and whether Napster had in fact complied with the termination policy
requirement of § 512(i)(1)(A).41 Nevertheless, until these issues could be addressed
at trial, the district court’s approval of a preliminary injunction against Napster was
appropriate because the plaintiffs had “demonstrate[d] that the balance of hardships
tips in their favor.”42
In a lawsuit similar to Napster, record company and music publishing plaintiffs
charged the peer-to-peer file-sharing service Aimster with contributory and vicarious
infringement of copyrights held by the plaintiffs. In addition to distributing file-
sharing software, Aimster provided on-line tutorials on its website which
“methodically demonstrated how to transfer and copy copyrighted works over the
Aimster system.”43 In addition, the Aimster software allowed users to encrypt all the
file exchanges, a scheme that effectively prevented Aimster from gaining knowledge
of the type of content being transferred. Unlike Napster, Aimster had adopted a
termination policy for repeat infringers before a lawsuit was filed against it.
However, the district court in Aimster found that the termination policy could not be
implemented in reality because the encryption technology provided by Aimster made
it impossible to determine which users were transferring copyrighted files.44 The
court thus found Aimster ineligible for any safe harbor protections because its repeat
infringer policy did not meet the requirement of § 512(i)(1)(A).45 In upholding the
district court’s preliminary injunction, the U.S. Court of Appeals for the Seventh
The [DMCA] provides a series of safe harbors for Internet service providers and
related entities, but none in which Aimster can moor... The common element of
[the DMCA]’s safe harbors is that the service provider must do what it can
reasonably be asked to do to prevent the use of its service by ‘repeat infringers.’
Far from doing anything to discourage repeat infringers of the plaintiffs’
copyrights, Aimster invited them to do so, showed them how they could do so
with ease using its system, and by teaching its users how to encrypt their
unlawful distribution of copyrighted materials disabled itself from doing46
anything to prevent infringement.
40 Napster, 239 F.3d at 1025.
43 Aimster, 252 F. Supp. 2d at 643.
44 Id. at 659 (emphasis in original).
46 Aimster, 334 F.3d at 655.
Ellison v. Robertson47 is another case that denied safe harbor to the defendant
service provider for failure to meet the threshold eligibility requirements under §
512(i). Stephen Robertson had electronically scanned and converted into digital
binary files48 several science fiction novels written by Harlan Ellison, without
authorization of the copyright owner. Robertson then uploaded and copied the files
onto USENET newsgroups that are carried by several ISPs, including American
Online, Inc. (AOL).49 AOL’s retention policy provided that USENET messages
containing binary files remain stored on the company’s servers for fourteen days.50
Once Ellison learned of the infringing activity, he directed his legal counsel to e-mail
a notice of copyright infringement pursuant to the DMCA notification procedures.
AOL, however, claimed never to have received the notice. Receiving no response,
the plaintiff then filed a copyright infringement suit against AOL and other parties.
The Court of Appeals for the Ninth Circuit in Ellison upheld the district court’s
conclusion that there were triable issues of material fact concerning Ellison’s
contributory copyright infringement claim, on the basis that a reasonable trier of fact
could find that AOL had reason to know of the potentially infringing activity and had
materially contributed to it.51 Although AOL did not have actual knowledge of the
infringement, AOL’s failure to receive the plaintiff’s DMCA notification was due to
its own fault in not promptly updating its designated agent contact e-mail address
with the Copyright Office.52 Due to this error, the e-mail sent by the plaintiff was
routed to a defunct e-mail account. The district court refused to permit AOL to
disclaim knowledge of the infringement53 on account of its own carelessness: If AOL
could avoid the knowledge requirement through this oversight or deliberate action,
47 357 F.3d 1072 (9th Cir. 2004).
48 A file stored in "binary" format is computer-readable but not human-readable. See
[ h t t p : / / www.webopedi a.com/ T ERM/ b / b i n ar y_ f i l e .ht ml ] .
49 "The USENET, an abbreviation of 'User Network,' is an international collection of
organizations and individuals (known as 'peers') whose computers connect to each other and
exchange messages posted by USENET users." Ellison v. Robertson, 189 F. Supp. 2d 1051,th
50 Id. at 1054.
51 Ellison, 357 F.3d at 1077-78.
52 Ellison, 189 F. Supp. 2d at 1058. As discussed earlier in this report, 17 U.S.C. § 512(c)(2)
requires service providers to designate an agent to receive notifications of claimed
infringement and provide the contact information for this agent to the Copyright Office. The
record showed that AOL had changed its contact e-mail address from "firstname.lastname@example.org"
to "aolcopyright@aolcom" in fall 1999, but waited until April 2000 to notify the Copyright
Office of the change.
53 To be held liable for contributory copyright infringement, a court must find that the party,
"with knowledge of the infringing activity, induces, causes or materially contributes to theth
infringing conduct of another." Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9
then it would encourage other ISPs to remain willfully ignorant in order to avoid
contributory copyright infringement liability.54
The Ninth Circuit reversed the district court’s conclusion that AOL qualified for
a safe harbor limitation of liability. The appellate court found “at least a triable issue
of material fact” regarding AOL’s threshold eligibility for safe harbor under §
512(i).55 First, the court explained that § 512(i)(1)(A) has three separate
requirements for a service provider to fulfill:
!Adopt a policy that provides for the termination of service access for
repeat copyright infringers in appropriate circumstances;
!Inform users of the service policy; and
!Implement the policy in a reasonable manner.
The court determined that there was “ample evidence in the record” to suggest that
AOL failed to satisfy the last of these requirements. Because AOL had changed the
e-mail address to which infringement notifications were being sent and did not close
the old e-mail account or forward the messages to the new address, “AOL allowed
notices of potential copyright infringement to fall into a vacuum and to go
unheeded.”56 This fact alone provides a basis for a reasonable jury to find that AOL
did not “reasonably implement” a policy against repeat infringers.57 Thus, the
appellate court remanded the case for trial on Ellison’s contributory infringement
claim, and if AOL is found liable, on AOL’s eligibility under § 512(i) to assert the
safe harbor defense.58
In ALS Scan, Inc. v. RemarQ Communities, Inc., the U.S. Court of Appeals for
the Fourth Circuit considered whether an ISP is eligible for protection when it is
alerted to infringing activity by “imperfect notice” that does not strictly comply with
the notification procedures specified in § 512(c)(3).59 ALS Scan holds the copyrights
to over 10,000 “adult” photographs which were posted on newsgroups60 that were
operated by the service provider RemarQ Communities. Upon discovering that
RemarQ’s servers contained infringing material, ALS Scan sent a “cease and desist”
letter to RemarQ, requesting deletion of two specific newsgroups that contained the
photographs. However, the district court in ALS Scan found that the notice was
“fatally defective” in complying with § 512(c)(3) because ALS Scan never provided
54 Ellison, 189 F. Supp. 2d at 1058.
55 Ellison, 357 F.3d at 1080.
58 Id. at 1082.
59 239 F.3d 619, 620 (4th Cir. 2001)
60 Newsgroups are on-line discussion groups covering thousands of subjects, such as
politics, social issues, sports, and entertainment. A news reader program is required to
connect to the news servers on the Internet, and allows the computer user to read and post
messages to the newsgroup forum.
RemarQ with a “representative list” of the infringing photographs. Nor did it identify
the pornographic photographs with “sufficient detail” to enable RemarQ to locate and
disable access to them.61 In reversing the district court’s ruling granting summary
judgment in favor of RemarQ, the court of appeals held that ALS Scan had
“substantially complied” with DMCA notification requirements because its notice
letter identified by name the two RemarQ newsgroup sites “created solely for the
purpose of publishing and exchanging ALS Scan’s copyrighted images” and also
referred RemarQ to website addresses where RemarQ could find pictures and names
of ALS Scan’s adult models.62 Thus, the court of appeals held that since RemarQ
was provided with a notice that substantially complied with the DMCA, the service
provider could not rely on a claim of defective notice to maintain the safe harbor
Safe harbor allowed. In contrast to the ALS Scan court’s determination of64
the consequences of “imperfect notice,” the court in Hendrickson v. eBay, Inc.
found that the defective notice supplied by the plaintiff in its case failed to comply
substantially with § 512(c)(3)’s notification requirement. In Hendrickson, the
Internet auction service eBay was allegedly offering for sale pirated DVD copies of
a documentary about the life of Charles Manson called “Manson.” Prior to filing
suit, plaintiff Robert Hendrickson sent a letter to eBay demanding that the auction
site cease and desist “from any and all further conduct considered an infringement(s)
of [plaintiff’s] right.”65 eBay responded promptly to this letter, informing
Hendrickson of its termination policy for repeat infringers and requesting that the
plaintiff submit proper notice under the DMCA by providing more detailed
information regarding the alleged infringing items, including identifying the specific
eBay item numbers corresponding to the copies of “Manson” for sale.66 The plaintiff
refused to provide this information and proceeded to file copyright infringement suits
At trial, Hendrickson did “not dispute that he ha[d] not strictly complied with67
Section 512(c)(3).” The U.S. district court instead considered whether the
plaintiff’s imperfect notice satisfied the DMCA’s “substantial” compliance
requirement. The court noted that Hendrickson did not include in his notice a written
statement attesting to the good faith and accuracy of his infringement claim, as68
required by § 512(c)(3)(A)(v)-(vi). In addition, the plaintiff failed to provide eBay
with sufficient information to allow the service provider to identify the auction
61 ALS Scan, 239 F.3d at 624.
62 Id. at 624-25. The court further explained, "[W]hen a letter provides notice equivalent to
a list of representative works that can be easily identified by the service provider, the notice
substantially complies with the notification requirements." Id. at 625.
63 Id. at 620 (emphasis in original).
64 165 F. Supp. 2d 1082 (C.D. Cal. 2001).
65 Id. at 1085.
67 Id. at 1089.
68 Id. at 1089-90.
listings that allegedly offered pirated copies of “Manson” for sale. This failure
further rendered Hendrickson’s notice improper under the DMCA.69 Therefore, the
court ruled, eBay was under no obligation to remove the allegedly infringing material
on its system.70 The court went on to consider eBay’s eligibility for safe harbor under
§ 512(c) and determined that it satisfied all the statutory conditions. The DMCA thus
having shielded eBay from liability, the court granted eBay summary judgment on
the copyright infringement claim.71
In Corbis Corp. v. Amazon.com, Inc.,72 the court determined that the electronic
commerce company Amazon.com had qualified for safe harbor with regard to
infringing activity allegedly occurring in its zShops third-party vendor service.73
Corbis, a company that licenses art images and celebrity photographs, had sued
Amazon, claiming that several hundred images in which it had a “copyright interest”
were being copied, displayed, and sold through Amazon’s zShops sites.74 Amazon
sought liability protection under § 512(c), the “information residing on systems or
networks at the direction of users” safe harbor.
The Corbis court first examined whether Amazon satisfied the DMCA’s
threshold conditions for safe harbor. After finding that Amazon met the statutory
definition of service provider,75 the court applied § 512(i)’s three-part test as it was
set forth in Ellison v. Robertson.76 The court ruled that Amazon had adopted a
termination policy for repeat infringers and communicated that policy to its users.77
In regard to the third Ellison prong, the court found evidence that Amazon had
reasonably implemented procedures for addressing copyright infringement
complaints.78 After satisfying these threshold conditions for safe harbor, Amazon
still had to meet the requirements for liability protection under § 512(c). The court
69 Id. at 1090-92.
70 "[T]he service provider's duty to act is triggered only upon receipt of proper notice." Id.
71 Id. at 1094.
72 351 F. Supp. 2d 1090 (W.D. Wash. 2004).
73 "The zShops platform allows individuals and retailers (referred to as 'vendors') to
showcase their products and sell them directly to online consumers. Amazon, however, does
not sell any of its own inventory on the zShops platform." Id. at 1094.
74 Id. at 1096-97.
75 Id. at 1100.
76 See discussion of this case, supra pages 8-10.
77 Corbis, 351 F.Supp.2d at 1100-02.
78 Amazon informs the listing vendor via e-mail that 'your listing may have violated the
intellectual property rights of others and the Community Rules that govern our Auction,
zShops, and Amazon Marketplace sites.' The e-mail also provides the vendor with the
complaining party's contact information. Finally, as with other cancellations, Amazon warns
vendors that repeated violations may result in permanent suspension from the Amazon site."
Id. at 1103 (citations omitted).
found that Amazon did not have actual79 or apparent knowledge80 that material on its
network is infringing. The court also found that Amazon did not have the right and
ability to control the infringing material on zShops vendor webpages.81 Thus, the
court concluded that Amazon is entitled to safe harbor protection under § 512(c) for
any copyright infringement committed by zShops vendors on the Amazon site.
The court in Perfect 10, Inc. v. CCBill, LLC, et al.82 expanded the array of
service providers eligible for safe harbor to include Internet businesses that provide
age-verification and on-line payment services to websites that restrict user access to
adult content. Perfect 10, a copyright owner of adult-oriented photographic images,
had sued several age-verification and billing companies for infringement. These
businesses claimed liability protection under DMCA safe harbors §§ 512(a) and
512(d). The plaintiff argued that § 512(a), the “transitory digital network
communications” safe harbor, protects only ISPs that transmit infringing material,
not other material such as credit card information for on-line payment purposes.83
Perfect 10 also argued that § 512(d), the “information location tools” safe harbor, is
limited to service providers such as Yahoo! and Google that provide links to millions
of websites, and does not cover a service provider that links to “a relatively small”
number of websites with whom the ISP has a contractual relationship.84
The Perfect 10 court dismissed the plaintiff’s arguments as being “without
merit,” noting that § 512(a) includes ISPs that provide a “connection” to infringing
material. Also, nothing in § 512(d) limits its applicability only to ISPs that provide
links to millions of websites with which the service provider lacks contractual
relationships.85 Thus, the court allowed the defendant third-party billing and age-
verification service providers to seek shelter under the DMCA safe harbors.
Subpoena to Identify Infringer. The subpoena provision contained in Title
II of the DMCA, codified at 17 U.S.C. § 512(h), has received increased attention as
a result of the Recording Industry Association of America's (RIAA) highly publicized
efforts to take legal action against individual computer users who use peer-to-peer
79 Cobis, prior to filing the lawsuit, had never attempted to notify Amazon about the alleged
infringing conduct of zShop vendors. Thus, Corbis missed its opportunity to provide "the
most powerful evidence of a service provider's knowledge–actual notice of infringement
from the copyright holder." Id. at 1107.
80 The court stated, "[Corbis] provides no evidence from which to infer that Amazon was
aware of, but chose to ignore, red flags of blatant copyright infringement on specific zShops
sites." Id. at 1109.
81 Id. at 1110. Since Amazon failed to meet the first part of § 512(c)'s third requirement, it
was unnecessary for the court to determine whether Amazon receives a direct financial
benefit from the allegedly infringing conduct. Id.
82 340 F. Supp. 2d 1077 (C.D. Cal. 2004).
83 Id. at 1091.
84 Id. at 1097-98.
85 Id. at 1091, 1098.
(P2P) software to share copyrighted music files.86 A critical component of these
actions is identification of the computer user. Upon request by a copyright owner,
the clerk of any U.S. district court “shall expeditiously issue” a subpoena to a service
provider for disclosure of “information sufficient to identify the alleged infringer of
the [copyrighted] material.”87 The clerk’s issuance of the subpoena depends on the
filing of the specified information in the subpoena request:88
!A copy of the notification of claimed infringement sent to the service
provider. This notification must comply substantially with the
notice requirement described in § 512(c)(3)(A).
!A proposed subpoena indicating the information that is sought.
!“A sworn declaration” that the subpoena is sought solely to obtain
information revealing the identity of the alleged infringer and that
the information will only be used to protect rights under the
Upon receiving the subpoena, a service provider “shall expeditiously disclose”
to the copyright holder the information required by the subpoena.89 Congress
intended this rapid subpoena process to be “a ministerial function performed quickly”
by the clerk of a court in order to identify copyright infringers and stop the infringing
activities.90 Indeed, Congress’s intent is expressly reflected in the statutory language
itself, where the word “expeditiously” appears twice in the subpoena procedure
In re Verizon Internet Services. In two court proceedings occurring within
months of each other, the RIAA sought to enforce DMCA subpoenas served on91
Verizon Internet Services after Verizon refused to comply with them. These
subpoenas requested the identities of subscribers to Verizon’s Internet access service
who were allegedly sharing hundreds of copyrighted songs using peer-to-peer file
transfer software. Verizon argued in the first case that the subpoena was inapplicable
because the allegedly infringing material was not stored on Verizon-owned servers,
86 For more background on peer-to-peer software and copyright infringement issues, see
CRS Report RL31998, File-Sharing Software and Copyright Infringement: Metro-Goldwyn-
Mayer Studios, Inc. v. Grokster, Ltd, by Brian Yeh and Robin Jeweler.
87 17 U.S.C. § 512(h)(3)-(4).
88 17 U.S.C. § 512(h)(2)(A)-(C). In addition to these conditions placed on obtaining a
subpoena, 17 U.S.C. § 512(h)(6) provides another safeguard against abuse of subpoena
power: subpoenas are subject to the provisions of the Federal Rules of Civil Procedure that
govern the issuance, service, and enforcement of subpoenas. For example, under
FED.R.CIV.P. 45, service providers or their Internet users may object to, modify, or move
to quash a subpoena.
89 17 U.S.C. § 512(h)(5).
90 H.Rept. 105-551, pt. 2, at 61.
91 In re Verizon Internet Servs., Inc., 240 F. Supp. 2d 24, 37 (D.D.C.2003) ("Verizon I"); In
re Verizon Internet Servs., Inc., 257 F. Supp. 2d 244 (D.D.C.) ("Verizon II").
but rather on its subscribers’ computers.92 In the second, Verizon moved to quash the
subpoena, challenging the DMCA subpoena authority as a violation of its
subscribers’ First Amendment right to anonymous speech.93 The U.S. district court
ruled against Verizon in both cases, finding that subpoena authority extended to all
types of service providers within the scope of the DMCA, not just providers that
stored information on a system or network,94 and that the DMCA subpoena power
was constitutional.95 Verizon requested a stay of the lower court’s order pending
appeal, but the U.S. Court of Appeals for the District of Columbia denied the
request.96 A day later, Verizon revealed the names of four subscribers suspected of
The federal district court in In re Verizon Internet Services, Inc. determined that
the § 512(h) subpoena process “provide[s] substantial protection to service providers
and their customers against overly aggressive copyright owners and unwarranted
subpoenas.”98 In particular, it noted that the DMCA “provides disincentives for false
representations under the act, making it costly for anyone to seek a subpoena on the
basis of intentional misrepresentations, and thereby further ensuring that subpoenas
will only be used in circumstances of good faith allegations of copyright
infringement.”99 Three months later, the court upheld the constitutionality of the
DMCA’s subpoena provision in another proceeding against Verizon, stating that the
“DMCA contains adequate safeguards to ensure that the First Amendment rights of
Internet users will not be curtailed.”100 The court, in dicta, claimed that owing to
built-in safeguards, “it is unlikely that § 512(h) will require disclosure, to any
significant degree, of the identity of individuals engaged in protected anonymous
speech, as opposed to those engaged in unprotected copyright infringement.”101 The
court explained that “[w]hatever marginal impact the DMCA subpoena authority may
have on the expressive or anonymity rights of Internet users ... is vastly outweighed
by the extent of copyright infringement over the Internet through peer-to-peer file
sharing, which is the context of the legitimate sweep of § 512(h).”102
92 Verizon, 240 F. Supp. 2d at 28-29.
93 Verizon, 257 F. Supp. 2d at 247.
94 Verizon, 240 F. Supp. 2d at 26.
95 Verizon, 257 F. Supp. 2d at 275.
96 2003 WL 21384617 (D.C. Cir. June 4, 2003)(No. 03-7015, 03-7053).
97 See Christopher Stern, Verizon Identifies Download Suspects, WASH. POST, June 6, 2003,
98 240 F. Supp. 2d at 40-41.
99 Id., at 41 n.14. See also 17 U.S.C. § 512(f)("Any person who knowingly misrepresents
...that material or activity is infringing...shall be liable for any damages, including costs and
100 Verizon, 257 F. Supp. 2d at 260-61.
101 Id. at 263.
102 Id. at 265-66.
Following the district court’s determination of the DMCA subpoena power’s
legality, the RIAA obtained over 800 subpoenas compelling several major ISPs and
some universities to provide the names of computer users suspected of swapping
copyrighted music files, with approximately 75 new subpoenas being approved every
day.103 Armed with this information, the RIAA promised to file what could be
thousands of lawsuits against particularly egregious P2P swappers of copyrighted
music.104 In many cases, however, these enforcement efforts have been met with
resistance. SBC, an ISP subsidiary of Pacific Bell, challenged the validity and
legality of subpoenas,105 as did several universities that were recipients of RIAA
subpoenas.106 Smaller ISPs, through an organization called NetCoalition.com,
expressed their concerns that RIAA’s enforcement campaign seeks “to achieve in
court what the association has not yet been able to accomplish in Congress — to
make Internet companies legally responsible for the conduct of individuals who use
their systems, forcing these companies to become not only the police of the Internet
but also permanent and constant watchdogs of the substance of all email traffic,
instant messaging, and file sharing.” 107 Congress had expressed interest and concern
over the issue as well. Several hearings were held.108
RIAA v. Verizon. On December 19, 2003, the U.S. Court of Appeals for the
D.C. Circuit handed down its opinion reversing the district court’s decisions
103 See Ted Bridis, RIAA's Subpoena Onslaught Aimed at Illegal File Sharing, WASH. POST,
July 19, 2003, at E01.
104 See generally, [http://www.riaa.com/news/newsletter/062503.asp].
105 See ISP Claim Subpoenas for Subscriber Info Not Authorized by DMCA,
Unconstitutional, 66 BNA PAT., TRADEMARK & COPYRIGHT J. 436 (Aug. 8, 2003).
106 On August 7, 2003, the U.S. District Court for the District of Massachusetts issued an
order quashing subpoenas issued in the District of Columbia against two Boston
universities, MIT and Boston University. The court held that the subpoenas violate federal
rules of civil procedure which limit the geographical reach of subpoenas issued by a federal
court. The RIAA has indicated that, although it believes the subpoenas were properly
issued, it will file them in the appropriate courts. District of Columbia Court Lacks
Authority To Issue DMCA Subpoenas to Boston Schools, 66 BNA PAT., TRADEMARK &
COPYRIGHT J. 458 (Aug. 15, 2003).
107 Letter from Kevin S. McGuiness, Exec. Director of NetCoaliton.com to Cary Sherman,
Pres., RIAA (Aug. 11, 2003) at [http://www.netcoalition.com/vertical/Sites/
108 Privacy & Piracy: The Paradox of Illegal File Sharing on Peer-to-Peer Networks and
the Impact of Technology on the Entertainment Industry: Hearing Before the Permanentth
Subcommittee on Investigations of the Senate Committee on Governmental Affairs, 108st
Cong., 1 Sess. (2003); Consumer Privacy and Government Technology Mandates in the
Digital Media Marketplace: Hearing Before the Senate Committee on Commerce, Science,th
and Transportation, 108thCong., 1st Sess. (2003). See also S. 1621, 108 Cong., 1st Sess.
(2003), the "Consumers, Schools, and Libraries Digital Rights Management Awareness Act
of 2003" which would require, among other things, that the DMCA subpoenas be issued
only in connection with pending lawsuits.
upholding the RIAA subpoenas.109 The reversal was predicated on the appellate
court’s findings that under § 512, a subpoena may be issued only to an ISP engaged
in storing material that is infringing or the subject of infringing activity on its servers
— not to an ISP acting as a passive conduit for data transferred between two Internet
users. And, an ISP acting as a conduit for P2P file sharing does not involve the
storage of infringing material on the ISP’s server.
The court rested its decision on a technical interpretation of § 512(h) and the
overall structure of § 512. Examining closely the cross-references of subsection (h),
it noted that one of the required elements in the subpoena application is that the
copyright owner identifies “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[.]”110 The court agreed with Verizon that it is impossible to
comply with this requirement when an ISP is acting as a mere conduit because
[n]o matter what information the copyright owner may provide, the ISP can
neither “remove”’ nor “disable access to” the infringing material because that
material is not stored on the ISP’s servers. Verizon can not remove or disable
one user’s access to infringing material resident on another user’s computer
because Verizon does not control the content on its subscriber’s computers.111
The court rejected the RIAA’s contention that an ISP could “disable access” by
terminating the infringer’s account with the ISP. Blocking access to infringing
material and terminating an ISP’s user account are separate remedies elsewhere under
§ 512.112 “Notice and take-down” requirements of § 512(b)-(d), that is, disabling
access to infringing material, apply to ISPs when they are storing infringing material
— either as a temporary cache of a web page, as a website stored in the ISP’s server,113
or as an information locating tool hosted by an ISP, but not when it is routing
infringing material to or from a personal computer owned and used by a subscriber.114
The court reasoned that the reference to “disabling access” for purposes of issuing
a subpoena is distinct from terminating service. Thus, because the ISP does not have
access to material residing on a user’s computer, it cannot disable access to it by
others. Examining the overall structure of the statute, the court concluded that “[t]he
presence in § 512(h) of three separate references to § 512(c) and the absence of any
reference to § 512(a) suggests the subpoena power of § 512(h) applies only to ISPs
109 Recording Indus. Ass’n of Am.v. Verizon Internet Servs., Inc., 351 F.3d 1229 (D.C. Cir.
110 17 U.S.C. § 512(c)(3)(A)(iii) as referred to in subsection (h)(2)(A) (emphasis added).
111 Verizon, 351 F. 3d at 1235.
112 Cf. 17 U.S.C. § 512(j)(1)(A)(i) with (j)(1)(A)(ii). These provisions set forth separate
remedies available under an injunction to remedy copyright infringement. Specifically,
blocking access to infringing material and terminating a subscribe's account.
113 17 U.S.C. § 512(b)-(d).
114 17 U.S.C. § 512(a).
engaged in storing copyrighted material and not to those engaged solely in
transmitting it on behalf of others.”115
The court was sympathetic to the RIAA’s concerns regarding the widespread
infringement of its members’ copyrights and their need for legal tools to combat it.
But it would not “rewrite” the DMCA to address those concerns. That prerogative
rests squarely with the Congress.
In re Charter Communications. On January 4, 2005, a divided panel of the
U.S. Court of Appeals for the Eighth Circuit reached the same conclusion regarding116
the DMCA subpoena power as the Verizon appellate court. At issue was Charter
Communications’ motion to quash the RIAA’s subpoenas requesting that the internet
service provider produce the names, physical addresses, telephone numbers, and e-
mail addresses of 200 Charter customers. The Eighth Circuit ruled that § 512(h) does
not authorize a copyright owner to request a subpoena for an ISP that only acts as a
conduit for copyrighted material transferred between two users.117 In dicta, the court
acknowledged the difficulties that copyright owners face in deterring unlawful P2P
file-sharing without first learning of the identities of persons engaged in the activity.
However, the court pointed out that this information could be discovered through
alternative means such as “John Doe” lawsuits,118 a legal device that the RIAA has119
been using in the aftermath of Verizon in order to obtain court-ordered subpoenas.
Among the DMCA’s significant changes to the Copyright Act is the creation of
§ 512 to protect service providers from copyright liability arising from the infringing
conduct of their users. This section represents Congress’s attempt to address the
liability concerns of service providers that operate the infrastructure of the Internet,
115 Verizon, 351 F. 3d at 1236-37.
116 In re Charter Communications, Inc., Subpoena Enforcement Matter, 393 F.3d 771 (8th
117 Id. at 777. The dissenting opinion in Charter argued that the right to request a subpoena
pursuant to § 512(h) is not limited by the type or function of the service provider. Since a
subpoena may be issued to "a service provider," and the statutory definition of "service
provider" expressly includes conduit service providers, then the RIAA's subpoena to Charter
should be enforced. Id. at 778-80 (Murphy, J., dissenting).
118 Id. at 775 n.3. The dissenting judge complained that John Doe lawsuits were insufficient
to help copyright holders in their efforts to stop the “massive piracy” of their works over
P2P networks, since such legal actions are costly and time consuming. Relegating copyright
owners to using John Doe lawsuits to protect themselves from infringement by subscribers
of conduit ISPs, is contrary to legislative intent because the purpose of the DMCA subpoena
power was “to obtain the assistance of ISPs in an expeditious process to stop infringement.”
Id. at 782 (Murphy, J., dissenting).
119 See, e.g., John Schwartz, Music Industry Returns to Court, Altering Tactics On File
Sharing, N.Y. TIMES, Jan. 22, 2004, at C1 (explaining how John Doe lawsuits are used by
plaintiffs to sue persons whose identities are not known. The suits "identify the suspected
file traders only by a numerical tag, known as an Internet protocol number, assigned to them
by their Internet service provider.")
as well as specify means by which service providers can cooperate with copyright
owners to identify and deal with infringing users.
The general purposes and goals of the safe harbor statute are clear. The
subpoena issue, however, is believed by many to be an excellent example of the
widely-acknowledged difficulty of enacting legislation tailored to evolving
technologies. Both the U.S. district court and the U.S. court of appeals in Verizon
noted that peer-to-peer file-sharing technology was nowhere on the horizon when
Congress considered and enacted the DMCA. And, as P2P technology utilizing more
encryption evolves, the issues are likely to become even more complex.
Server-based Napster-like music file sharing, though very popular, was arguably
not legally complicated. Traditional copyright law principles and balancing
copyright owners’ property interests against consumer desires for access to
entertainment media clearly favored copyright owners.120 But P2P file-sharing
technology developments raise far more serious privacy issues with a much wider
120 See A & M Records, Inc. v. Napster, Inc., 284 F.3d 1091 (9th Cir. 2002); A & M Records,
Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001).