Nathan Fan is a JD candidate at Osgoode Hall Law School.

In yet another Prince related copyright infringement suit, the Ninth Circuit in the U.S. has taken the opportunity to address the scope of the damage recovery provision in the DMCA for bogus takedown notices. In the recently released order granting partial summary judgement, federal district judge Jeremy Fogel issued an important decision in the pending Lenz v. Universal Music case, allowing plaintiffs to recover damages for meritless takedown requests, but also narrowing recoverable damages to only those proximately caused by the misrepresentation.

In February 2007, Stephanie Lenz posted a home video on YouTube of her toddler son getting a little crazy to Prince’s “Let’s Go Crazy” playing noisily in the background.  In June 2007, Universal Music, on behalf of Prince, sent YouTube a DMCA takedown notice pursuant to 17 USC § 512(c). Universal claimed that Lenz’s video infringed the copyright in Prince’s song and requested that YouTube remove it from their website. YouTube complied with the takedown and provided Lenz with notification. However, Lenz then responded with a DMCA counter-notification claiming fair use (i.e. the video was “for her family and friends to enjoy”), and YouTube put the video back up on the website a few weeks later. Lenz (and the Electronic Frontier Foundation) then launched a lawsuit against Universal Music under the DMCA’s 17 USC § 512(f), which allows a plaintiff to recover damages for bad faith use of the DMCA notice and takedown provisions.

In the motion by Lenz for summary judgement on the issue of recoverable damages, the federal district court went through a discussion on what types of damages were compensable under 17 USC § 512(f). The court found that the use of the plain language of “any damages” in the provision strongly suggested Congressional intent to have recovery be available for damages even if the damages did not amount to substantial economic damages. Further, a narrow interpretation of “any damages” would be inconsistent with the statutory language, overall statutory scheme and legislative history. However, the court did not go so far as to endorse a broad interpretation of “any damages”, stating that a § 512(f) plaintiff’s damages must be “proximately caused by the misrepresentation to the service provider and the service provider’s reliance on the misrepresentation”.  To conclude otherwise would allow plaintiffs to satisfy “any damages” by simply hiring an attorney and filing suit and thereby incurring their costs and fees.

As a result, the court held that any fees incurred for work in responding to the takedown notice and any work prior to the suit under § 512(f) would be recoverable under the provision. However, any further costs and fees would remain governed by 17 USC § 505 (Remedies for infringement re costs and attorney’s fees are at the court’s discretion), meaning any litigation costs incurred after the filing of the lawsuit would not be recoverable under § 512(f) as these costs are not causally connected to the takedown notice.

As Lenz was aided by counsel from EFF, Universal had argued that Lenz had not “incurred” any costs as the work was pro bono and by definition could not recover any costs or fees.  The court responded by saying that pro bono attorneys’ fees and costs may be recovered, provided the § 512(f) plaintiff assumed either “(1) a non-contingent obligation to repay the fees advanced on his behalf at some later time; or (2) a contingent obligation to repay the fees in the event of their eventual recovery”.

Despite this “win” for Lenz, it should be noted that Lenz will not recover any of these damages unless she is successful in her § 512(f) claim. In Rossi v. MPAA, the Ninth Circuit had set a standard for the § 512(f) claim, requiring that the plaintiff show that the copyright owner had sent the bogus takedown claim in subjective bad faith (i.e. knowingly sent a bogus notice).  This creates a rather high threshold for Lenz to pass and as noted by Eric Goldman: “Not only must the 512(f) plaintiff overcome the Rossi case, which effectively mooted claims for erroneous takedown notices, but this ruling illustrates how hard 512(f) plaintiffs have to work to find compensable damages. We don't see many 512(f) cases being brought. Watching this case, it's easy to see why.”