Before the
U.S. COPYRIGHT OFFICE, LIBRARY OF CONGRESS
In the Matter of
Designation of Agent to Receive Notification of Claimed Infringement
37 CFR Part 201
Docket No COLC-2016-0006-0001
Comments of Electronic Frontier Foundation
and other public interest groups and advocates
June 24, 2016
Submitted by:
Corynne McSherry
Electronic Frontier Foundation
815 Eddy Street
San Francisco, CA 94109
Telephone: (415) 436-9333
corynne@eff.org
Professor Rebecca Tushnet
The Organization of Transformative Works
c/o Georgetown University Law Center
600 New Jersey Ave NW
Washington, DC 20001
rlt26@law.georgetown.edu
Professor Eric Goldman
c/o Santa Clara University School of Law
500 El Camino Real
Santa Clara, CA 95053
egoldman@gmail.com
Please see signature block for additional signatories.
We submit these comments in response to the Copyright Office’s Notice Of Proposed
Rulemaking And Request For Comments dated May 25, 2016. These comments were
principally prepared by:
•

The Electronic Frontier Foundation (EFF), https://www.eff.org. EFF is a non-profit,
member-supported civil liberties organization working to protect rights in the digital
world. EFF and its 23,000+ dues-paying members have a strong interest in assisting the

 courts and policy-makers in striking the appropriate balance between intellectual property
and the public interest. EFF has registered an agent with the Copyright Office.
•

The Organization for Transformative Works (OTW). The OTW is a nonprofit
organization established in 2007 to protect and defend fanworks from commercial
exploitation and legal challenge. The OTW’s nonprofit website hosting transformative
noncommercial works, the Archive of Our Own, has over 770,000 registered users and
receives over 115 million page views per week. The OTW has registered an agent with
the Copyright Office.

•

Eric Goldman, Professor at Santa Clara University School of Law. Professor Goldman
has taught and researched in the area of Internet copyright law for over 20 years.

We appreciate your request for comment regarding the fees for registering a Digital Millennium
Copyright Act (DMCA) copyright agent via the new electronic registration system. We expect
that an electronic registration system will be much appreciated by the many sites and platforms
that currently host user-generated content and rely on the safe harbors to avoid liability for the
actions of their users. They will also appreciate low-cost registration fees.
However, we write to highlight our deep concerns regarding the Copyright Office’s apparent
assumption that the fee will require service providers to renew their agent designations every
three years because the proposal does not explain what consequences will occur if the service
provider fails to make that renewal. We are equally concerned about the apparent assumption
that service providers who have already made a valid agent designation with the Copyright
Office would be required to re-register (and pay another fee) because the proposal does not
explain what consequences will occur if the service provider fails to re-register or pay the
additional fee.
We believe that once a service provider has made a valid designation, the designation should
remain effective in the Copyright Office indefinitely, for at least three reasons: (1) 17 U.S.C.
§512(c)1 already has too many conditions; (2) §512’s formalities already inhibit small service
providers from enjoying the safe harbor; and (3) §512 already deprives service providers of
protection if they do not accurately maintain their designations. For these reasons, we oppose
any proposal to disqualify a service provider from the safe harbor for failing to maintain its agent
registration with the Copyright Office, whether because the service provider failed to pay the
appropriate renewal fee, failed to re-register an existing valid registration, or failed to take any
other future action after a valid registration has been made.
If the hidden consequence of the Copyright Office’s proposed lower agent registration fees is a
higher risk that an unsuspecting provider will lose §512’s safe harbor protections because it
failed to renew, then the real cost of the new system is far too high. Therefore, we request that
the Copyright Office offer a cost-effective option letting providers make only a single one-time
registration to remain permanently effective.
1

All subsequent statutory references are to Title 17 unless otherwise specified. We focus our discussion on §512(c)
although the registration applies to other parts of §512.

2

 I.

Section 512(c) Already Has Too Many Conditions.

As EFF and Professor Goldman explained in comments filed in 2011,2 a service provider
wishing to qualify for §512(c)’s safe harbor must already satisfy 12 conditions:
1)
2)
3)
4)
5)
6)
7)
8)
9)

Qualify as a “service provider”;
Show the material was stored at direction of a user;
Adopt a policy to terminate repeat infringers;
Reasonably implement that policy;
Communicate that policy to users;
Accommodate “standard technical measures”;
Designate an agent to receive §512(c)(3) notices;
Post its agent’s contact info on its website;
Not have actual knowledge of infringement or an awareness of facts/circumstances that
infringement apparent (no “red flags”);
10) Not have the right/ability to control infringement;
11) Not have a direct financial interest in the infringement; and
12) Expeditiously respond to §512(c)(3) notices.
If the Copyright Office creates an agent renewal condition, that would add a thirteenth condition
for service providers seeking a successful §512(c) defense to a copyright claim.
The new condition would have significant consequences: an otherwise-protected service
provider could, if found liable for copyright infringement under the substantive liability
standards, be exposed to a massive—and potentially business-ending—damage award that could
reach millions (or even billions) of dollars for forgetting to renew or maintain the agent
designation on time.
This is not an illusory risk. We have seen numerous well-meaning service providers denied a
§512 safe harbor for failing to adhere precisely to the statutory requirements.3 Furthermore,
certain law firms look for technically noncompliant sites to sue, even when the site responds
immediately to a takedown notice. A new formality would give these law firms additional
leverage in abusive lawsuits; and opportunistic plaintiffs could monitor the registration database
and pounce on any service providers whose registrations lapse.
In other contexts, the Office and Congress have recognized that renewal conditions are rarely
appropriate in copyright, given the fact that many people use the system but are not experts and
do not have legal counsel. Renewal conditions for copyright terms were abolished out of
concern for inadvertent and unjustified forfeiture of legal rights; this concern is equally
applicable to the DMCA. For example, Congress expressed concern about the “harsh
consequences of inadvertent forfeiture” of copyrights due to failure to renew and the inequity of
2

Available at http://www.copyright.gov/docs/onlinesp/comments/2011/initial/eff.pdf.
See, e.g., BWP Media USA, Inc. v. Hollywood Fan Sites LLC, 115 F. Supp. 3d 397 (S.D.N.Y. 2015); Perfect 10,
Inc. v. Yandex N.V., 2013 WL 1899851 (N.D. Cal. May 7, 2013); see also Eric Goldman, Good News/Bad News
About the Number of Blogs Eligible for the 17 USC 512 Safe Harbor, TECH. & MKTG. L. BLOG, Nov. 7, 2011,
http://blog.ericgoldman.org/archives/2011/11/goodbad_news_ab.htm.
3

3

 allowing innocent “recordkeeping” failures to affect rights, especially given that the U.S.
condition was unique.4 Indeed, Congress characterized the renewal condition for extended
copyright protection as “one of the worst features” of copyright law prior to the 1976 Act
because it was burdensome and could result in the “inadvertent and unjust loss of copyright.”5
The Copyright Office echoed those concerns, observing that “[T]he renewal provision of the
current law is a highly technical and rigid formality, and it often results in the unfair and
unintended loss of copyright protection.”6
The same concerns exist here, including the concern for conditions not present in other national
systems.
More generally, the history of the Copyright Act clearly demonstrates that if Congress wanted to
put an agent renewal condition into the law, it knew how to do so. The Copyright Office’s
authority to make regulations for receiving DMCA agents’ designations does not include
authority to add additional conditions to §512(c) itself, and the Copyright Office has not
identified any legislative grant that provides it with such authority.
II.

Section 512’s Formalities Are Already a Barrier for Small Providers.

Thousands of service providers have filed designations, and many large service providers know
of the statutory conditions and have satisfied them. However, the existing registrants represent
only a small fraction of service providers who might benefit from §512; many smaller service
providers have not registered agents. This is not because they do not want §512’s protections or
because the agent designation fee has been cost-prohibitive; but because they either do not know
of the conditions, find them too complicated or onerous to meet, or cannot afford legal counsel to
advise them on satisfying them.
Complying with an agent renewal condition may sound fairly easy, but undoubtedly it will prove
challenging to many service providers. Engine, a non-profit organization that works with
technology startups, reports that, based on its experience, many companies that have active
DMCA agent registrations have insufficient in-house legal resources. Without the capacity or
knowledge to monitor for new regulations or ensure that formalities like agent registration are up
to date, these companies risk exposure to enormous financial liability for failing to satisfy a
technicality that is not likely to result in any harm to copyright owners (since OSPs must
continue expeditiously processing takedown notices to qualify for the safe harbor). For small
businesses, however, even a short delay in renewing an agent’s registration could be ruinous, as a
single secondary infringement finding could be sufficient to bankrupt many startups and other
small businesses.
Launching an electronic registration system shows that the Copyright Office is taking
demonstrable steps to make it easier for service providers to qualify for the §512 safe harbors.
Imposing an agent renewal condition would be counter-productive to that objective.
4

See S. Rep. No. 102-194 at 1, 5-6 (1992).
See H.R. Rep. No. 94-1476, at 134 (1976).
6
See Copyright Law Revision: Hearing on H.R. 2223 Before the Subcomm. On Courts, Civil Liberties, and the
Administration of Justice of the House Committee on the Judiciary, 94th Cong. 2082 (1975).
5

4

 III.

§512 Already Deprives Service Providers of Protection If They Do Not Accurately
Maintain Their Designations.

The statute already imposes a condition for safe harbor protection that service providers post
valid contact information on their website, and no evidence shows that outdated designations
have harmed copyright owners or undermined §512’s notice-and-takedown mechanism at all—
let alone at a level that justifies the additional burden.
IV.

The Revenue Generated Through Renewal Fees Does Not Justify the Risk.

To the extent the Copyright Office intends to rely on renewal fees to pay for the program, its
own estimates suggest there are better ways to accomplish that goal. According to the NPRM,
there are 23,300 current registrations and it is likely that 75-85% of those are still valid and will
likely be renewed if renewal is required.7 If 75% of those registrants renewed, that would be
about 17,500 re-registrations.8 Averaged out over 3 years, that would be 5,800 renewals/year.
The NPRM also estimates a total of 7,000 total registrations a year, which suggests that the
Office anticipates 1,200 new registrations to supplement the renewals.9 Finally, the Office
estimates that it requires $41,000/yr to run the registration process.10
Assuming only 1,200 new registrations per year, the Office could simply charge those 1,200
registrants a one-time fee of $34 – more than $6 to be sure, but still not a large sum and still
dramatically less than current registration fees. If the number of new registrants is smaller, the
fee could be raised, but would likely remain manageable.

7

Notice of Proposed Rulemaking, Designation of Agent to Receive Notification of Claimed Infringement, Fed. Reg
Vol 81, No. 1010, 31353-54.
8
Id.
9
Id.
10
Id.

5

 V.

Conclusion

Congress expected service providers to satisfy agent designation formalities initially, but
Congress did not indicate that it wanted legitimate businesses to forfeit safe harbor protection
due to simple mechanical mistakes or inattention to ongoing formalities. Therefore, the
Copyright Office should ensure that no service provider will forfeit a valid agent designation for
failing to take future steps or pay additional fees; or at minimum it should add a cost-effective
option letting providers make only a single one-time registration permanently effective.
Respectfully submitted,
Corynne McSherry
Electronic Frontier Foundation
Professor Rebecca Tushnet
Organization for Transformative
Works
Professor Eric Goldman
Santa Clara University School of Law
Additional signatories:
Association of College and Research
Libraries
American Library Association
Association of Research Libraries
Copia Institute / Techdirt
Engine
Internet Archive
Open Source Hardware Association
Public Citizen, Inc.
Public Knowledge
Re:Create

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