In recent days, the press has been full of stories about Axl Rose from the band Guns N’ Roses sending take-down notices to websites, including Google affiliated sites, that feature a picture taken of him from one of his concerts making him look to be overweight (see, e.g. stories available here, here and here). The photos are often accompanied by captions, reinterpreting Guns N’ Roses songs by modifying the lyrics to include references to food or overeating or otherwise making light of the picture. The take down notice is premised on Rose’s alleged ownership of the underlying photo. According to the press reports, Rose requires all professional photographers taking photos at his concerts to sign releases, giving Rose ownership of all copyrights in the images taken. The legal issues raised by the take down notice are many – including reflecting on the recent calls for reform of the “safe harbor” provisions of the Digital Millennium Copyright Act for user-generated content much in the news lately, particularly with respect to YouTube videos including music (see our article here). No doubt, however, the first issue that will be considered in answering these take down notices is whether the images and associated commentary constitute “fair use.”

The DMCA has adopted a “safe harbor” for “internet service providers” including website owners who host user-generated content – content that is posted not by the site owner and its employees, but instead by users of the site (see our article here). As the hosts of these sites do not control what is being posted, Congress in adopting the DMCA, thought that it was important that the site owners not be liable if users post content that could potentially infringe on some third party’s intellectual property rights. However, the site owner must take certain steps to minimize the posting of infringing content – including making clear in its descriptions of the proper use of the site that users need to respect intellectual property rights, and providing both on the site and in a registration form filed with the Copyright Office the name and contact information for a person who copyright holders should contact if they believe that infringing content has been posted on the site (the Copyright Office is proposing changes to that form, see our article here). Copyright holders can then notify these identified individuals of the perceived infringement by sending what are commonly referred to as “take down notices.” Certain formalities need to be followed in sending these notices are provided under the provisions of the DMCA, including a specific identification of the infringing content, and a good faith belief that the content is in fact infringing. In connection with any take down notice and the decision of the site owner as to whether to honor that request, the question of fair use must be evaluated.

Exactly who needs to do the fair use evaluation is a question that some courts seem to be struggling with lately. In one well-publicized case involving Prince’s “Let’s Go Crazy” being used in connection with a “dancing baby” video, a court initially suggested that the copyright holder had to make that fair use evaluation before sending out the take down notice, or its notice would not have been made in good faith. While later decisions in that same case seemed to back off that suggestion, even if the evaluation is not made by the party sending the take-down notice, it is a question that the site owner will want to evaluate before taking down the allegedly infringing content. And that evaluation is not an easy one, as fair use is not a hard and fast, yes or no concept. Whether a use of a copyrighted work is “fair” depends on an evaluation of a number of factors, and courts themselves often argue about which side of the line a use falls (see, for instance, our article here about the limits of fair use). The factors which follow are listed in the Copyright Act at Section 107, and they need to be weighed and evaluated, with no one factor necessarily being more important than another:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

So, basically, a site owner on the fly needs to evaluate what kind of work we are talking about and how much of that work is being used (e.g. using an entire song or other copyrighted work is more likely to weigh against fair use than is using a few seconds of that song), how the work is being used (e.g. is it for purposes of commentary or criticism, which generally favor a finding of fair use), and make the determination of whether the factors favoring its use outweigh the costs of the use (e.g. does the use substantially diminish the value of the work, preventing it from being used by the copyright holder for the owner’s financial gain). And just because a use is funny or amusing does not necessarily make it satire or parody, which can be protected fair use (see our article here). These are not easy evaluations to make, and almost impossible to envision that they can be made by any automated means.

One of the discussions in connection with calls by music copyright holders and others to reform the DMCA safe harbor is the call for the adoption of “take down, stay down” requirements.  This is a proposal to remedy the “whack a mole” issue. “Whack a mole,” named after the popular carnival and boardwalk game, refers to the issues that develop when a copyright holder notifies a service provider (such as YouTube) of an infringing use on its site, and the provider takes down the infringing use only to have it pop up again elsewhere on the service, sometimes within moments of the initial take down. Under the current system, copyright owners complain, they need to file repeated take-down notices, only to keep seeing the same work pop up in other infringing works posted to the same site.

To remedy this, copyright holders have suggested that service providers be required to, once a work has been taken down as being infringing, keep that work from popping up elsewhere on its site. Suggestions are that the service providers be required to adopt some sort of digital fingerprinting technology that will allow them to identify where the work pops up again on their site. Service providers have expressed some concerns about that proposal. First, not all service providers have the access to that sort of technology. Even if used, will that technology be able to distinguish between permitted “fair uses” and prohibited infringing uses? Do we really want to give the rights to any copyright holder (including one complaining about unflattering photos and the comments made about those photos) to force a service to pull all uses of an identified work automatically, when some of those uses may be permitted (not only as fair uses, but some may be licensed uses)? Can a technology or other system be developed that can track all of these issues and the whack a mole issue at the same time.

These are not easy questions to answer – and ones that need careful weighing of the benefits and burdens that are imposed. We’ll watch as the Copyright Office struggles with these issues in its review of the safe harbor provisions of the Act, as well as what Congress may do as they tackle copyright issues as they proceed with their long-promised efforts at reform.