Music company gets sued by ISP for sending a DMCA takedown notices to the wrong email address. COX v. BMG

A copyright is a set of exclusive rights granted to the creator of a new work of expression. A copyright grants its own the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original. If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.

Copyright law in the United States existed long before computers and the internet were everyday household items. The Copyright Act of 1976, codified in Title 17 of the United States Code, was not prepared to deal with the new legal issues raised by the internet connected personal computer. In 1998, the United States Congress enacted the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 512, which was intended to update Copyright law in the United States and make it more compatible with the realities of the internet.

One of the new tools created by the DMCA is the takedown notice. When a copyright holder discovers that their copyrighted material is being distributed on the internet, the copyright holder can file a takedown notice with the online service provider that is hosting the copyrighted material. The takedown notice process gives copyright holders a much faster method to combat copyright infringement. Online service providers are granted immunity from liability for copyright infringement committed by users when the online service provider promptly removes infringing content. Users who believe that a takedown notice was filed in error can respond to a takedown notice to get their content restored by the online service provider. The copyright owner can then file suit against the user for copyright infringement.

The exact mechanics of the takedown notice process can vary between online service providers. The DMCA does not dictate the exact takedown notice process that an online service provider must use. To qualify for immunity from liability for copyright infringement the online service must have a consistent method to receive takedown notices, respond to the notices and prevent repeat infringement by the same users. Most online service providers have adopted a three strikes and you are out policy, meaning that if a user is sent three takedown notices the user’s account is terminated.

When the DMCA was codified, the potential for abuse of the takedown notice system was foreseen. The DMCA provides those whose have been harmed by fraudulent takedown notices to bring an action for damages against the sender of the fraudulent takedown notices. However the DMCA does not explicitly provide for a mechanism to recover damages for legitimate DMCA notices that are submitted in a manner outside the process setup by the ISP.

COX COMMUNICATIONS, INC., v. BMG RIGHTS MANAGEMENT (US) LLC and RIGHTSCORP, INC., 2:21-cv-03756 (C.D.CA 2021) is a case which revolves around a rights holder not submitting DMCA notices using the process specified by the ISP.

Plaintiff in this case is a major internet service provider. To comply with the DMCA Plaintiff asks right holders to send a takedown notice to a specific email address. Defendant is a major copyright owner and submits DMCA takedown notices.

In 2017, Plaintiff changed the email address for its registered agent from abuse@cox.net to CoxDMCA@cox.net. Plaintiff updated its website and the directory on the U.S. Copyright Office’s website to reflect this change. Just about every other take notice sender began to send notices to the new address, except for Defendant. Plaintiff made an effort to contact Defendant, numerous times, asking that the proper email address be used. Defendant continued to use the old email address. Plaintiff continued to process takedown notices from Defendant, at an additional expense.

Plaintiff filed suit in March 2021 to recoup the costs it has incurred because of Defendants action and to get the court to compel the Defendant to use the proper email address for take down notices. Plaintiff alleges in its complaint that Defendant’s actions was a calculated attempt to get Plaintiff to not process the take down notices, so that Defendant could claim Plaintiff violated the safe harbor provision. It will be interesting to see the outcome of this case.

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