The most recent decision in the Lenz saga (the YouTube video takedown of baby dancing to Prince’s “Let’s Get Crazy”) is really the first to discuss the types of damages available when a copyright owner sends a takedown notice for no reason. Specifically, Lenz alleges that Universal violated 17 U.S.C. 512(f) which says that a copyright owner who “knowingly materially misrepresents” that the material is infringing or was removed by mistake in a takedown notice “shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer . . . .”
In an opinion by Judge Jeremy Fogel, the federal district court for the Northern District of California determined that “any damages” are not limited to substantial economic damages (monetary loss) – for example they may be available for First Amendment harms from loss of speech. But, to recover damages they must have been proximately caused by the misrepresentation to the service provider and the service provider’s reliance on that misrepresentation. Proximate causation, as opposed to “but-for” causation (i.e. when the driver was not speeding immediately preceding the accident but would not have been at the accident site at that moment but for his prior speeding), requires a more direct relation between the harm and the alleged harm-doer’s act and imposes a higher burden on the plaintiff.
With respect to recovering costs and attorneys’ fees the court stated those incurred (even if the work is performed on a pro bono basis like it is in Lenz by the EFF) “prior to the institution of suit under § 512(f)” are recoverable. For example, the costs of drafting and issuing the counter notice fall here.
On the contrary, Judge Fogel determined that attorneys’ fees incurred after filing the 512(f) suit are excluded and governed by 17 U.S.C. § 505 which is the Copyright Act’s fee-shifting provision that allows courts to use discretion in awarding reasonable attorneys’ fees to the prevailing party. According to Sam Bayard, “this ruling may drain much of the force out of 512(f) as a practical deterrent to abusive takedowns because automatic, post-suit attorneys’ fees are the only item of damages that could foreseeably get big enough to make big content owners uncomfortable.”
So, while the portion of the decision noting that losses do not have to be substantial and economic to be recoverable as damages seems helpful to plaintiffs, when it is coupled with the uncertainty in recoverable attorney’s fees, requirement of showing proximate cause, and the already present requirement of showing the copyright owner acted with bad faith realistically make 512(f) actions difficult for plaintiffs like Lenz.
Other blogs addressing this topic include:
Copyrights and Campaign by Ben Sheffner,
Citizen Media Law Project,
Technology and Marketing Law Blob by Eric Goldman, http://blog.ericgoldman.org/archives/2010/02/standards_for_5.htm