The Southern District of New York recently stressed the importance for internet service providers (“ISPs”) to comply with “safe harbor” requirements of the Digital Millennium Copyright Act (“DMCA”) in order to be shielded from copyright infringement liability.  The court, in BWP Media USA Inc. v. Hollywood Fan Sites LLC, found that the defendants, who owned and operated more than 4,500 celebrity fan websites, could only rely on the DMCA safe harbor to protect themselves from infringement occurring after the dates that the defendants each filed DMCA agent designations, and could not rely on designations filed by affiliates.  The court, therefore, struck the defendants’ affirmative defense as applied to claims that the plaintiffs’ copyrighted celebrity images appeared on the defendants’ fan websites before the dates the defendants had properly designated DMCA agents.

The DMCA permits an ISP to seek safe harbor from copyright liability “only if the service provider has designated an agent to receive notifications of claimed infringement.” 17 U.S.C. § 512(c)(2). As a threshold to invoking the safe harbor, the ISP must: (1) post their DMCA agent’s contact information on their website, and (2) provide the agent’s contact information to the U.S. Copyright Office. Id. Then, to facilitate easy access to the identity of the agents, “[t]he Register of Copyrights . . . maintain[s] a current directory of agents available to the public for inspection, including through the Internet.” Id. Thus, the DMCA contemplates two parallel sources – (i) the provider’s website, and (ii) the Copyright Office directory – where each ISP’s DMCA agent information is readily available to the public.

Failure to strictly follow the DMCA’s agent designation requirements can preclude a defendant from invoking the DMCA’s safe harbor provisions, as the Southern District of New York recently held.  For example, the BWP Media court rejected one of the defendant’s arguments that it qualified for safe harbor based upon the earlier agent designation date of its parent company.  The parent company’s earlier filing did not mention the defendant subsidiary, and the court explained that “[it] is implausible that parties attempting to find a provider’s DMCA agent designation, using the [Copyright Office’s] database, are expected to have independent knowledge of the corporate structure of a particular service provider.”  Moreover, the court commented that, even if the parent company’s earlier agent designation had intended to cover the defendant subsidiary, “it is far from clear that a single [DMCA agent] designation can cover multiple entities” – particularly in light of the preamble to the interim DMCA regulations that “explicitly reject[] a joint designation by a parent and subsidiary.”

In addition, the BWP Media court rejected the arguments that the defendant had complied with the DMCA because information concerning a DMCA agent was available on its fan websites – but not its own website – which the plaintiffs used to successfully submit several requests for the defendant to remove plaintiffs’ copyrighted celebrity photos.  The court pointed to the language of the DMCA, which “expressly requires two publicly available, parallel sources of a service provider’s DMCA agent information (the service provider’s website and the [Copyright Office] directory) in order for that provider to be shielded by the § 512(c) safe harbor.”

Thus, the Southern District of New York’s BWP Media decision serves as a warning and reminder to website ISPs of the need to strictly comply with each of the DMCA agent designation requirements or otherwise risk DMCA safe harbor affirmative defenses to copyright infringement claims.