INTERNET LAW - Jurisdictional Complexity of the Misrepresentation Provision under the DMCA

The Digital Millennium Copyright Act (DMCA) allows a copyright owner who observes infringing content on a Website to have the content taken down.  The DMCA, 17 USC § 512 (2000), introduced the take-down notice to help copyright owners to protect their rights in the Internet era.  DMCA, however, also introduced a provision to prevent the abuse of the takedown procedure. Copyright owners or those exercising the take-down provision through misrepresentation are subject to liability under § 512(f) of the DMCA.  The issue of personal jurisdiction under the misrepresentation provision of the DMCA though becomes problematic in certain cases. 

Section 512(c) of the DMCA establishes the process that a copyright holder has to follow when he/she observes infringing content on a Website. This provision is commonly used in Websites such as YouTube where users easily upload content. According to the take-down process, the copyright holder must notify the Website that a specific content is infringing copyrights. The copyright holder must also assert under the penalty of perjury that he/she is the copyright holder and that he/she has a good faith believe that the particular content is infringing his/her copyrights. The Website must take down the infringing material or face liability.  To prevent the abuse of the copyright procedure, the DMCA introduced the misrepresentation clause in § 512(f).

Section 512(f) states that "[A]ny person who knowingly materially misrepresents (in a takedown notice to an internet service provider]…that material or activity is infringing….shall be liable for any damages, including costs and attorneys' fees, incurred by the alleged infringer….who is injured by such misrepresentation as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing.” The practical problem with the misrepresentation clause is jurisdiction. How a party may assert personal jurisdiction over the party who is misrepresenting or abusing the take-down process?  There may not be a clear answer to this question because regular jurisdiction principles in copyright cases may not be directly applicable to the issue of misrepresentation under Section 512(f).  Following, there is a California district court case in which the court held that the court had no personal jurisdiction over the defendant who, the plaintiff alleged, violated section 512(f) of the DMCA.

In Doe v. Geller, et all, 533 F. Supp. 2d 996 (N. District Ct. CA, 2008), the court granted defendant"s motion to dismiss for lack of personal jurisdiction. Plaintiff is a frequent YouTube user who holds controversial debates on the issue of evolution and creationism. Plaintiff uses YouTube and the Internet to promote its views and messages.  Plaintiff is located in Pennsylvania.  Defendant is a private company registered in London and Geller is the director and controlling shareholder of this company. Geller is a performer who claims to have psychic powers and the ability to bend spoons with his mind.  Plaintiff’s complaint alleges that the defendant violated section 512(f) of the DMCA and as a result, plaintiff claims damages. It seems that plaintiff posted a video on YouTube and the defendant claimed copyrights on this video.  The defendant notified YouTube of the infringing content; YouTube removed this video and suspended plaintiff’s accounts for over two weeks.  After this, the defendant filed an infringing lawsuit against the plaintiff in Pennsylvania, where the plaintiff resides.  Then, the plaintiff filed this lawsuit in California, where YouTube is located, claiming that Geller violated section 512(f) of the DMCA.

The defendant moves to dismiss plaintiff’s California claim under lack of jurisdiction. The defendant asserted that the California court had no personal or subject matter jurisdiction over the defendant, who was located in England. The defendant claimed that they sent the take-down notice from England via fax and email; thus, no personal jurisdiction existed. The court agreed with the defendant and dismissed plaintiff’s claim.  The court held that “no federal court has ever addressed subject matter jurisdiction under § 512(f), and the subject matter jurisdiction issue in this case is complex.” “As an alleged violation of § 512(f) is not a copyright claim, copyright law may be of little help.”  Thus, the court reached its decision by applying a Ninth Circuit test on jurisdiction. This tests requires the court to weigh seven factors when evaluating the reasonableness of exercising personal jurisdiction on a particular case: “(1) the extent of the defendants' purposeful interjection into the forum state's affairs; (2) the burden on the defendant of defending in the forum; (3) the extent of conflict with the sovereignty of the defendants' state; (4) the forum state's interest in adjudicating the dispute; (5) the most efficient judicial resolution of the controversy; (6) the importance of the forum to the plaintiff's interest in convenient and effective relief; and (7) the existence of an alternative forum.”

Therefore, the take-down notice of the DMCA may not have that many jurisdictional problems as the misrepresentation provision under the same Act. A plaintiff claiming violation of section 512(f) of the DMCA should carefully review the jurisdiction issue before it files any complain.

Martha L. Arias, Attorney at Law; IBLS Editor