Action Needed to Maintain DMCA Safe Harbor Protection

If your business lets third parties post content on your website – even a simple product review – please keep reading. Recent changes in U.S. copyright law require online service providers to take additional steps to avoid liability for infringing content posted by their website visitors. As of December 1, 2016, the process for designating agents to receive infringement notices under the Digital Millennium Copyright Act (DMCA) has been modernized. Although this means you can now designate an agent online, rather than by snail mail, it also means all prior designations must be updated by the end of 2017 or your safe harbor protection will be in jeopardy.

First Things First: Designate an Agent to Receive Notice of Infringement Claims

The DMCA provides safe harbor from copyright infringement liability for online service providers (OSPs) (17 U.S.C. 512(c)) that meet certain requirements. If your website is interactive and permits users to post content or comments, or offers message boards, blogs or social media integration, you are likely to be deemed an OSP under the statute. The DMCA safe harbor provisions can protect you from being held liable for infringing material posted by your site's users if you take the following steps. To fall within the safe harbor, an OSP must (1) designate an agent to receive notifications of claimed copyright infringement, (2) establish effective "notice and takedown" procedures, (3) promptly remove infringing content upon notification and (4) have no actual or effective knowledge that the material in question is infringing.

Designating an agent requires not only posting the agent's contact information on your website, but also providing that information to the U.S. Copyright Office, which maintains an online directory of designated DMCA agents for public use. Most website Terms of Use include DMCA takedown language, but designating an agent is often overlooked in the fast-paced world of e-commerce. And because the safe harbor does not protect against infringement claims that arise prior to designating an agent, this is an important first step.

Modernizing the Process

Until now, the process of designating an agent under the DMCA has been notoriously cumbersome. To designate an agent, an OSP had to submit a paper document to the Copyright Office identifying a specific individual as its DMCA agent. The designation lasted as long as that individual remained the agent; a new person filling the role had to make a separate paper submission to the Copyright Office.

As of December 1, 2016, the Copyright Office has updated and streamlined the DMCA Agent designation procedure to an online process available here.

Benefits of the new process include:

• Ability to file online rather than on paper; an account is required.
• OSPs can now designate an individual, a specific position or department (e.g., "Copyright Manager" or "Legal Department"), or a third party ("Name of law firm").
• Drastically reduced fees (from $100 to $6).

What This Means for You

Any OSP that has previously designated an agent with the Copyright Office will have until December 31 to submit a designation through the new online registration system. After that date, all prior paper designations will expire and the OSP will lose its safe harbor protection unless it has registered in the new online directory. Also,

• Until December 31, designations in either the old or new directory will qualify for safe harbor protection.
• Only a single agent may be designated for each OSP.
• Each entity that may be an OSP (e.g., corporate parent, subsidiary) must have its own designation.
• Under the new system, multiple designations can be managed through a single account.
• New DMCA agent designations are valid for three years; designations must be updated or renewed every three years to maintain protection.

The new system will automatically email reminders of the expiration dates to the primary and secondary contacts, service provider, and designated agent. However, we also recommend tracking and docketing these deadlines as you would track and docket domain expirations and trademark maintenance periods.

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Qualifying for the DMCA safe harbor for copyright infringement claims is vital to avoiding liability for content posted on your website by third parties. Far from being ministerial, keeping your DMCA agent information current with the Copyright Office is essential to safe harbor protection and an important legal responsibility.

Day Pitney's Trademark, Copyright and Advertising (TMCA) Group is well-versed in the DMCA and would be pleased to answer any questions you may have about the updated Agent designation process. For assistance, please contact any of our TMCA team members, including those listed in this advisory.