Wherein we Also Discuss Whether Hyperlinks Can Be Infringing

Ellen Seidler, an independent filmmaker with one movie under her belt, wonders why her attempt to get Chilling Effects, the aggregator of DMCA takedown notices, to take down her own earlier DMCA takedown notice has failed, just moments after she thought it had succeeded. From her perspective, Chilling Effects is “operating above the law.” It isn’t, but based on common misconceptions of how the DMCA takedown regime works, it sure looks that way. I hope she doesn’t mind, but I’d like to take Ms. Seidler up on her request to be “filled in” and explain generally how the DMCA takedown regime works and clear up some basic misconceptions.
The movie in question is And Then Came Lola, which was released in 2009. The filmmakers appear to have made the movie available through a wide variety of downloading and streaming channels. But, like roughly every other movie in existence, it is available on several pirate sites. My sense is that the income from the legitimate downloads and streaming is worthwhile but marginal, and the filmmakers are therefore especially sensitive to the illegal competition, which would be irritating in any event.

Chilling Effects: Bastion of Transparency or Search Engine of Piracy?

There’s only so much you can do about pirate sites. Most are off-shore and hard to get jurisdiction over. One positive thing you can do is ask Google to remove links to illegal copies/streams of the movie from its search results by sending Google a proper DMCA takedown notice.61The statute actually calls it a “notification,” but that’s stupid. We’ll just call it a “notice.” And Ms. Seidler duly did so. But like many rights holders, she believes this only moved the locus of the problem to another site, Chilling Effects.
Google complies with DMCA takedown notices, but in a kind of passive-aggressive way. As we’ll see below, it’s not really clear if Google really needs to, but it does so anyway. It signals its displeasure by forwarding all DMCA takedown notices to Chilling Effects, which stores them in a database (more on that in a minute), and by adding near the bottom of any page of results that would have included the affected webpage the following statement:

In response to a complaint we received under the US Digital Millennium Copyright Act, we have removed ___ result(s) from this page. If you wish, you may read the DMCA complaint that cause the removal(s) at ChillingEffects.org.

(Italics in the original.) The message includes a link to the “complaint” itself (i.e., the actual DMCA takedown notice), so you can click and see for yourself. Heck, yeah, transparency!

© Dana Rothstein | Dreamstime Stock Photos

© Dana Rothstein | Dreamstime Stock Photos

Chilling Effects maintains a database of nearly all DMCA takedown notices. Its stated goals are “to educate the public, to facilitate research … and to provide as much transparency as possible.” That sounds nice, but I don’t think anyone would seriously disagree with me that the main purpose of Chilling Effects is to force those who try to remove material using the DMCA takedown procedure to own up to their DMCA takedown notices. If you thought you could, I don’t know, silence some website you don’t like, or essentially enjoin publication of a book, without going to the trouble of initial legal proceedings or without anyone tracing the dirty deed to you—well, here’s Chilling Effects with your B.S. notification.
Because Chilling Effects doesn’t mean to be so obviously judgmental, it sweeps up all DMCA takedown notices, the good, the bad and the ugly. That would include Ms. Seidler’s DMCA takedown notices to Google, which I’m sure fall in the “good” category. So what? Here’s the thing: for a DMCA takedown notice to be effective, it has to list out precisely the URLs of the webpages you want taken down or “de-linked”. That would be a URL that you have previously identified as, you know, having content that infringes your copyrights. That’s why you sent the notice in the first place—so that link is gone and can’t be found. And yet, here’s Chilling Effects re-publishing the URL you want dead and buried.
Many rights holders, including Ms. Seidler, have come to view Chilling Effects has a de facto search engine for pirate sites. Try going to Chilling Effect’s search page and entering the name of some movie you like. You might find some DMCA notices with links to pirate sites with that movie. Or you might find a morrass of useless stuff. Your milage might vary. I tried this for “Taxi Driver” and got a lot of weird stuff.62Mostly what appears to be porn. No, I didn’t check to make sure. But I also tried it for “And Then Came Lola” and easily found several pirate sites.63No, I didn’t check to see if the pirate sites’ links were working. It’s bad form for an IP lawyer to infringe IP while telling you not to infringe IP. The URLs are not active links, so you can’t just click on them, but you can copy and paste them into your browser without difficulty.
As early as 2013, movie studios have been complaining about this “feature” of Chilling Effects. I have no idea how serious a problem this really is. Since the links aren’t live, there’s no easy way to tell how many visitors to Chilling Effects are using the site as a kind of pirate search engine. For its part, Chilling Effects no longer allows itself to be indexed by Google, but its own internal search tool remains.

Getting Meta-Physical with Your Host

So, what to do? Here’s where the problem gets meta. Well, you could send a DMCA takedown notice to remove the DMCA takedown notice you had previously sent. For the sake our our sanity, I’m going to call this a “meta-takedown notice.” And that’s exactly what Ms. Seidler did—only she immediately ran into problems because of the first misconception about the DMCA takedown regime.
Ms. Seidler assumed that, if you wanted Chilling Effects to take something down, you’d send the meta-takedown notice to Chilling Effects. That’s how it worked with Google previously. But her original takedown notice and the meta-takedown notice were asking the recipient to do different things. She was asking Google to remove links from its search results. That invoked one flavor of the DMCA takedown regime—called § 512(d)—that governed linking. Under that regime, you send the notice to the search engine in question, i.e., to Google.
But with Chilling Effects, she was asking it to remove content. This request invokes the most common flavor of the DMCA takedown regime—called § 512(c)—which governs “the storage at the direction of a user of material that resides on a system or network.” These notices must be directed to the organization that controls the system or network. The classic example would be material uploaded to YouTube by a YouTube user. You’d send the notice to YouTube because it controls the system that stores the offending video file. What’s more, the whole regime does not apply if the system operator is also the one that caused the material to be stored on the system. The material must have been placed on the system by the operator’s user or customer.
In this case, Chilling Effects holds itself out as “an independent 3rd party research project,” even though it also holds itself out as “a project of the Berkman Center for Internet and Society at Harvard University.” If Chilling Effects is the user, then who is the systems operator? It took Ms. Seidler some digging, but she eventually figured it out: Harvard University.64To be eligible for DMCA safe harbor protection, a website must identify a person to whom DMCA takedown notices may be sent. But no one put that information near the top, even if they’re all about transparency or whatnot. It goes near the bottom, where there’s usually a link called “Legal,” “Abuse,” “DMCA” or something similar. She sent Harvard’s DMCA agent a (meta-)takedown notice, and, voilà!, the original takedown notice was taken down.
But moments later, she received a message from Harvard’s DMCA agent that Chilling Effects had sent the agent a “counter-notice.” Under the counter-notice, Harvard could put the material right back up for Chilling Effects in 14 days, and if Ms. Seidler wanted stop that from happening, she’d need to sue Chilling Effects directly (and presumably bring an emergency motion for an injunction). She didn’t have that kind of money, and she openly wondered if Chilling Effects was somehow above the law. From her perspective, she followed all the rules to remove infringing content65Well, content that bears a link to infringing content. and the content wasn’t taken down.

DMCA Isn’t a Short-Cut Legal Process; it’s an Affirmative Defense

Ms. Seidler’s frustration is the result of perhaps the biggest misconception about the DMCA takedown regime. It has come to be viewed as a kind of legal process that somehow avoids court involvement. It certainly looks like a procedure: if you write a notice (with several required items of information) and send it to precisely the right person, shazzam!, the offending material is gone. It’s so appealing that it’s routinely used for things that have little to do with copyright infringement, such as disliking the content of someone else’s site, which is one reason why people hate it so much.
But I’m here to tell you that you can’t actually stop someone from doing something illegal without (1) direct court involvement, or (2) the threat of court involvement. Harvard—and Google before it—were not responding to Ms. Seidler’s DMCA takedown notices because they were forced to. They did so because her notices also carried the implicit threat of a lawsuit against Harvard and Google. They removed content to protect themselves from Ms. Seidler. Sounds crazy, but it’s true.
The DMCA takedown regime is an “affirmative defense” against claims of copyright infringement. Period. If the system operator or search engine complies with the requirements, i.e., “expeditiously” removes the content or links, it is immune from lawsuits regarding that content (or the linked-to content).66A defense if “affirmative” if the defendant bears the burden of proof.

How (and Why) the DMCA Takedown Regime Works

If I upload And Then Came Lola to, say, YouTube, I have infringed Ms. Seidler’s copyright in the movie. That’s direct infringement because I am myself violating one of Ms. Seidler’s exclusive rights, namely the right to reproduce the movie. YouTube, however, is also liable to Ms. Seidler under a theory of secondary liability because it’s helping me with my infringement, even if it doesn’t know that I had no right to upload And then Came Lola.67At a minimum. Depending on how you look at it, it might also be publicly performing the movie, though not everyone would agree. Under vicarious liability, YouTube would be liable because it controled my infringing activity and benefits financial from it.
In 1998, when it was debating the DMCA, Congress saw this as a problem, although it could not have imagined anything like YouTube. Even by then, it was clear that any economy based on the internet, and any free exchange of information via the internet, would rely on (1) somebody storing somebody else’s material on their server, and (2) lots of linking to other people’s material. And that material might or might not be infringing. To encourage the development of the internet ecology, Congress created affirmative defenses to these two acts, but with a string attached68Well, three strings attached, but we’re solely concerned with the notice-and-takedown regime here.: you have to remove content or links when asked by the rights holder, if you want the defense.
But if the systems operator/search engine chooses not to? It’s not in any more trouble than it would be before the DMCA was ever passed. It could rationally ignore your takedown notice if it thinks the content in question isn’t infringing or is protected by license or fair use, or if it simply thinks you don’t have the wherewithal to go to court to get an injunction. See what I mean about court or threat of court?
As a practical matter, almost every system operator/search engine complies with DMCA takedown notifications. There’s hardly any downside. And there’s a pretty nice upside. For this reason, the DMCA notice-and-takedown regime has come to be a de facto legal procedure because it almost always works.

I See Your DMCA Takedown Notice and Raise You a Counter-Notice

Congress seems to have realized this. If it’s easier to mindlessly comply with DMCA takedown requests, folks might start using the process to simply remove content that they don’t like. Or material that is arguably fair use, licensed or not even copyrightable might be taken down. So Congress also developed the counter-notice69Again, the statute refers to this as a “counter-notification.” Again, we’ll just call them “counter-notices.” system. If your system operator removes your material, or a search engine removes links to your content, pursuant to a DMCA takedown notice, you might70Practically speaking, the counter-notice regime is at the system operator’s/search engine’s option. The DMCA encourages system operators and search engines to implement such a regime by granting them immunity to lawsuits brought by the user, but users almost always contractually give up their right to sue by agreeing to the system operator’s/search engine’s terms of service. Also, what non-contractual claim would the user even have? be permitted to send a “counter-notice” to the system operator or search engine, and if the counter-notice is up to snuff, the system operator/search engine can put your material back or re-enable the link without any further liability to the rights holder. I.e., the result is that the material is put back and the system operator/search engine gets to keep its affirmative defense. That’s what happened to Ms. Seidler.
The counter-notification has to include one very important piece of information: your name and where you may be served with a lawsuit. You have to “out” yourself. If you uploaded the content anonynously, well, you’re not anonymous any longer, and the rights holder now knows where to sue you.
Counter-notifications are actually very rare. For one thing, most people just aren’t aware of them (and they’re not always available). For another, most users are ordinary people, and most rights holders71Or, most holders of rights to material worth pirating, satirzing, mashing up, etc. are big and have lots of money. Even if the user is 100% in the right, most rights holders can grind the user out of existence in a lawsuit. Understandably, most users are reluctant to put their heads on the chopping block like that. Such users might wonder if the rights holders are “above the law.”
Ms. Seidler’s situation is reversed: Chilling Effects is presumably bigger than her (or her production company).72Or else, she realizes that suing Chilling Effects over something that might or might not be hurting her business model isn’t a wise use of resources. That’s unusual. But it emphasizes my previous point. In the end, if you want to stop infringement, you have to go to court or credibly threaten going to court. But where Harvard and Google found it easier just to take the material down, Chilling Effects has enough skin in the game to push back.

My Link to Your Zelda

Is Chilling Effects just acting the big bully, though, as Ms. Seidler implies? Ms. Seidler assumes that posting the URLs is itself an act of infringement. It might be, but it probably isn’t, based on what little legal authority we have on the subject. Although we have been using hyperlinks for as long as most of us have been using the internet73And certainly for as long as we have been using the web because, you know, the “HT” in “HTML” and the “H” in “HTTP” stand for “hypertext.”, we have only two appellate-level decisions touching on whether mere linking to infringing content is its own act of infringement. As it happens, one of those decisions is pretty much on point with what Chilling Effects does, and it favors Chilling Effects’ side. That decision is Flava Works, Inc. v. Gunter, better known as the “MyVidster case” (and hitherto known as MyVidster).
But lets first step back and look at the copyright principles at work here. Copyright makes certain acts with respect to the copyrighted work illegal74That’s simplifying somewhat. What it really does is reserve these acts exclusively to the copyright owner and authorized licensees.: you can’t reproduce, adapt75The actual term is “make a derivative work of,” but it’s more commonly known as the adaptation right., distribute, publicly perform or publicy display the copyrighted work without permission. Creating a hypertext link to infringing material doesn’t directly do any of those things, but the person clicking the links might.76I don’t have space to explain why it might or might not. Any text will certainly be reproduced, but rights holders are usually concerned about embedded images or video content, or the straight-up downloading of a file. If the link causes a download, then an illegal reproduction is definitely made. If it just plays or displays the content, however, is that performance or display “public”? We don’t really know. Let’s assume the links lead directly or indirectly to downloads, so an illegal copy of the copyrighted material is made. The person who created the link isn’t automatically off the hook, because we extend liability to those who contribute or vicariously benefit from the infringement—known generally as “secondary liability.”
Both types of secondary infringement require some additional proof, though, or else liability will extend far too far. Contributory infringement requires knowledge of the infringement (and not just the infringing activity). Vicarious infringement requires (1) control over the infringing activity (but no need to know that it’s infringing) and (2) direct financial benefit from the activity. BOTH types require proof that a third party (or co-defendant) directly infringed the copyright. That can be tricky.
In a famous opinion, a flea market could stand as an example of both kinds of secondary copyright liability. It knew that many CDs being sold were bootlegged, and it provided the forum (and less directly, the potential customers) for their illegal distribution. It also could control who was allowed to sell, and it made money from its vendors, including the infringing ones. The plaintiff also sent in agents to observe the illegal transactions, thus establishing proof of direct infringement.
In Chilling Effects’ case, vicarious infringement seems a clear loser. It doesn’t benefit financially from publishing the URLs.77Do you really think you could draw an evidentiary link from the publication of the URLs to, say, increased donations? Contributory infringement seems a better bet. After all, Chilling Effects knows that most DMCA takedown notices are legitimate, so odds are that the URLs really do go with infringing content; and, thanks to its internal search engine, it may (incidentally) be used to help direct infringers locate pirated copies of their favorite movies. For its part, Chilling Effects would argue that a signficiant portion of DMCA takedown notices are bogus, and it can’t be expected to check every single one. Indeed, the reason for providing the unredacted URLs is so people can judge for themselves. It would also wonder whether anyone has actually used Chilling Effects’ search engine to download a pirated copy of And Then Came Lola.

Time to Take Your Crazy Pills

This where MyVidster rears its crazy head. I discuss that case in great detail here and here. In that case, the defendant operated the “MyVidster” online service, described as “social bookmarking”: an easy way for people with similar tastes to share URLs of material that others would be interested in. Flava Works owned the copyright in movies that it prefers to keep behind a paywall, but third-party miscreants illegally uploaded copies of the movies to third-party pirate sites. Other third parties then discovered these illegal copies and shared their URLs through the MyVidster service. Flava Works sued MyVidster’s operator and, thanks to some legally incoherent analysis, actually won an injunction, requiring him to take the links down.
On appeal, the Seventh Circuit reversed and dissolved the injunction, on grounds that the district court did a horrible job. Judge Posner then went on to cast serious doubt on whether Flava Works could hold MyVidster’s operator liable for copyright infringement.78There’s also a fascinating discussion about what it means to publicly perform a work over the internet, but that’s not relevant to Ms. Seidler’s situation. “MyVidster knows that some of the videos bookmarked on its site infringe copyright, but that doesn’t make it a facilitator of copying,” the court wrote.
There are only two major differences between the facts of MyVidster and Ms. Seidler’s hypothetical case against Chilling Effects, one in favor of Ms. Seidler and one in favor of Chilling Effects. First, Chilling Effects, unlike MyVidster’s operator, invites third parties to contribute DMCA takedown notices. Second, Chilling Effects collects URLs only incidentally in order to make publicly available DMCA takedown notices, whereas MyVidster collects URLs to facilitate the location of (probably illegal) content. At best (or worst, depending on your point of view), those two facts cancel each other out. And if MyVidster didn’t commit contributory copyright infringement, then Chilling Effects probably isn’t either.
It would be even harder to prove direct infringement. While it may be assumed that a certain amount of direct infringement takes place at the webpages bearing the URLs, we would need to prove at least one act of direct infringement was the result of of Chilling Effects’ publication of the URLs. Remember that the URLs are not “live” links. There will be no records (that I can think of) showing that a visitor went directly from an archived DMCA takedown notice directly to one of the URLs listed on the notice. The only place I can imagine where that information would be kept might be in the user’s browswer history, but you’d have to first find the user AND hope that the browser history is still intact.
On top of that, Chilling Effects has a halfway decent fair use argument. It doesn’t really use any of a copyrighted work (or, at least, it can’t use any less than it does!) and it uses the URLs to educate and to criticize, so two factors are in its favor. I’d guess a court would find these factor outweigh any market harm (assuming any could be proven).

Causes of Action Are Not Created by Negative Implication

But wait. Doesn’t the fact that Congress created a DMCA takedown procedure for linked content show that linking to infringing content constitute copyright infringement?79As it happens, this is exactly what the district court in the “MyVidster” case based its preliminary injunction on: because MyVidster didn’t comply with Flava Works’ DMCA takedown notices, MyVidster was liable for infringing Flava Works’ copyrights. Do you see the flaw in the logic? Unless Congress believed linking was infringement, it wouldn’t have created the safe harbor in the first place, right?
Yes, Congress was worried that, if courts found linking to infringing content contintuted secondary copyright infringement, internet commerce and exchange of information would be chilled. But that doesn’t mean Congress, by negative implication, made linking illegal unless the linking party complied with the DMCA notice-and-takedown regime. When Congress wants to make something illegal, it passes a law saying so. All Congress did is provide search engines (and the like) peace of mind: regardless of whether linking is illegal, they can avoid infringement if they comply with the DMCA notice-and-takedown regime.80Or, as Judge Posner put it, in MyVidster: “A more plausible interpretation is that Congress wanted to make the safe harbor as capacious as possible—however broadly contributory infringement might be understood, the Internet service provider would be able to avoid liability.”
Bottom line: Piracy sucks. But Chilling Effects isn’t above the law here.
Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.