Enforcing Copyright Outside the Courtroom – The New Notice Regimes

By Osman Ismaili and Maxwell Wong, October 27, 2020

With the ever-increasing presence of social media, including websites like YouTube where content can generate income, copyright infringement is escalating at alarming rates. Unfortunately, it is no secret that the cost of enforcing copyright through the courts is expensive. To mitigate these costs, this article will provide some tips on how to enforce copyright outside the courtroom.

Enforcing Copyright

The traditional pre-litigation enforcement tool is a demand letter. However, consideration should also be given to the Copyright Act ‘Notice and Notice Regime’ and where applicable, the social media platform(s) internal notice systems.

Traditional Pre-Litigation Demand Letters

Obviously, the stronger the identity of a right is explained in a demand letter the more likely the letter will have an effect. Fortunately, obtaining a copyright registration is extremely quick and relatively inexpensive. As such, consideration should be given to whether to register a copyright before the delivery of a demand letter.

Pre-Litigation Notice Letters

To avoid litigation, the federal government and social media platforms have created an alternate pathway to enforce copyright and settle disputes.

Notice and Notice Regime

To deal with growing copyright infringement that occurs via intermediaries without initiating litigation, the federal government added section 41.25, to the Copyright Act, which sets up the Notice and Notice Regime.

The Notice and Notice Regime is a voluntary-industry based system in which copyright owners can notify an intermediary, including social media platforms, that they are hosting copyright infringing material. The social media platform would then notify the copyright violator, usually by forwarding the letter they have received. Additionally, intermediaries are obligated to retain records about the alleged copyright infringement for six months after the notice is issued. Intermediaries commonly include internet service providers (ISPs).

Automatic Forwarding

Unfortunately, the original system was subject to abuse as social media platforms tended to forward all copyright notices they received in order to limit their liability. Copyright trolls and other nefarious entities would bulk mail, and email, standardized letters to social media platforms, which they would forward to the alleged infringers. These letters were used to effectively extort settlement money from alleged infringers.

To prevent this abuse, the federal government amended section 41.25 (3) of the Copyright Act to prohibit these notices from containing:

1. An offer to settle the claimed infringement;
2. A request or demand, made in relation to the claimed infringement, for payment or for personal information;
3. A reference, including by way of hyperlink, to such an offer, request or demand; and
4. Any other information that may be prescribed by regulation.

If a notice containing any of the above is sent to an intermediary, they are no longer obligated to forward the notice or maintain any records of it. However, in practice, social media companies often still forward these notices without reviewing them. Therefore, it is important to determine the actual source of the notice and its content.

Internal Notice System

Virtually all social media platforms have developed their own copyright notice systems and policies to deal with and notify alleged copyright violators. However, YouTube and other social media platforms send out many different types of notices. Each different type of notice can result in different consequences. Thus, it is important to identify not only: (a) who is sending the notice (e.g. a lawyer, social media platform or alleged copyright holder); but also (b) what type of notice is being sent. Only after knowing both, who the sender is and what type of notice it is, can a recipient better understand the proper actions to take.

It is important to remember that regardless how far a copyright holder is along the notice path, copyright holders can still initiate legal action separately and independently at any time. The copyright holder always has the option to initiate legal proceedings.

If you are considering sending a cease and desist letter relating to intellectual property infringement, or if you have received such a letter, please feel free to reach out to MBM for a free consultation. Also, stay tuned for a separate article discussing specifically YouTube’s internal controls for IP infringement.

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