By Michael J. Antonucci
As of December 1, 2019, it became necessary for online service providers to renew their DMCA agent designation with the U.S. Copyright Office in order to avail themselves of the protections offered by the DMCA Safe Harbor.
A. What is the DMCA?
The Digital Millennium Copyright Act (“DMCA”) is a 1998 U.S. copyright law aimed at bringing copyright law into the Internet age, addressing the unique challenges of regulating digital media and protecting against piracy. The DMCA incorporates two 1996 treaties of the World Intellectual Property Organization (“WIPO”): The WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The DMCA was signed into law on October 28, 1998 and amended Title 17 of the United States Code.
1. DMCA Safe Harbor
Perhaps, the most important feature of the DMCA to online service providers (“OSPs”) is a set of provisions commonly known as the DMCA Safe Harbor, 17 U.S.C. Section 512. Prior to the enactment of the DMCA, an OSP could be held strictly liable for any infringing material uploaded or posted by third-party end users on the OSP’s service, even if the OSP did not post the material itself or know the material was infringing. However, Section 512 (c) of the DMCA creates a “safe harbor” to shield OSPs from liability for copyright infringement claims arising out of the conduct of end users so long as the OSP complies with certain requirements. One such requirement is to designate an agent to receive notification of alleged infringement claims.
Section 512(c)(2) of the DMCA states that the limitations on liability offered by the safe harbor “apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement” (emphasis added). The OSP must provide the name, address, telephone number, and email address of the designated agent to the U.S. Copyright Office and make such information publicly available on its website. The OSP must also ensure that this information is up to date.
2. Requirement to Renew Designated Agent Every Three Years
In 2016, the U.S. Copyright Office issued a rule that required all OSPs to file new online DMCA agent designations between December 1, 2016 and December 31, 2017. In order to ensure that the information is accurate and updated regularly, the U.S. Copyright Office introduced a periodic renewal requirement. Under this rule, all agent designations automatically expire after three years unless renewed with the U.S. Copyright Office. Accordingly, an OSP is required to file a new online agent designation every three years. Because the new rule went into effect on December 1, 2016, and gave OSPs until December 31, 2017, to file an agent designation, many OSPs will need to renew their agent designations this year. The date on which such renewal is due depends on the date on which the OSP filed its original agent designation. An OSP must renew its agent designation within three years of such date (unless the OSP amended its designation after filing, in which case the three-year period begins to run anew from the date of the amendment). For example, if an OSP filed its agent designation on June 1, 2017, and took no further action, its renewal is due no later than June 1, 2020. However, if an OSP filed its original agent designation on June 1, 2017, then subsequently amended the designation on January 1, 2019, its renewal will not be due until January 1, 2022. Similarly, if an OSP did not file its original designation until January 1, 2019, its renewal will be due no later than January 1, 2022.
If an OSP does not renew its designation within three years of its last online filing or amendment, the designation will lapse and the OSP will no longer qualify for protection under the DMCA Safe Harbor. Therefore, it is extremely important that OSPs review their deadlines and renew their agent designations prior to expiration.
If an OSP has not yet filed its initial agent designation with the U.S. Copyright Office, it should do so immediately as it cannot claim the protection of the DMCA Safe Harbor until it does. We recommend that OSPs check the date on which they filed or amended their designations with the U.S. Copyright Office and renew their designations within three years of such date. The U.S. Copyright Office will send reminders to the email address on file for the OSP 90 days, 60 days, 30 days and 7 days before the expiration of the designation. In addition, a final notice will be sent if the designation expires due to the OSP’s inaction. Therefore, an OSP should pay attention to any such correspondence it receives from the U.S. Copyright Office and monitor the status of its agent designation and any renewal deadline.