Part 3: Will Willfulness Ride to the Rescue?

In the first part of this three-part series, we tried to put the MU Indictment into a practical context. Last time, we started to look at the substance of the legal issues, starting with the government’s case. We concluded that, because of some essential differences between civil and criminal copyright infringement, the government’s case isn’t as easy as we civil lawyers would have thought (though I think the government will find some way to make it work).

Now, we’ll apply the same logic to MU’s DMCA safe-harbor defense. It turns out there probably isn’t such a thing as a DMCA safe-harbor defense in criminal actions, but that may not make much of a practical difference because of the criminal action’s willfulness requirement.

Of Course the DMCA Covers Criminal Actions. It’s in Here Somewhere…

If you’re a civil copyright lawyer like me, the DMCA safe harbors are almost an article of faith. Without it, the Internet would be a very, very, very different place. (Whether it would be a better or worse place, I cannot say.) So it comes as something of a shock to discover that it might not apply to a major type of legal action. When I first read about the possibility, I actually went through the stages of grief. Eventually, I had to remind myself of the first of the seven essential principles of copyright and the internet: it’s a very technical law, and you have to trust the language of the law over your instincts about what the law “should” be.

Where do I get this crazy idea*, that there is no DMCA safe harbor to criminal copyright actions? From the actual language of the DMCA safe-harbor provisions, of course:

A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider…

I always thought it was odd that the drafters were so careful about what forms of relief were covered by the safe harbors, but I never considered the implications. Congress could have written in blanket immunity–like this: “A service provider shall not be liable for infringement of copyright–and left it at that.

* That’s not entirely true. I first read about the possibility at Popehat. But I drew my own conclusions, but reluctantly had to admit that the author was pretty much correct.

But no. Congress set out three kinds of “relief” against which the safe harbors protect: (i) money, (ii) injunctions, and (iii) other equitable relief (injunctions being a form of equitable relief). There is no mention of the various types of punishments that can be meted out for criminal copyright infringement: fines* and prison.

* Maybe “monetary relief” can be stretched to cover fines? That’ll be small comfort when you’re in prison.

The choice of language seems too careful to be a mistake or an oversight on Congress’ part. And, yet, I can find nothing in the legislative history explaining why Congress went out its way to exclude criminal actions from DMCA safe-harbor protections. It seems to make no sense. It implies that behavior that is perfectly legal in the civil context can get you sent to prison.*

* It is actually pretty common for a criminal law to have no civil equivalent (i.e., “no private cause of action”), or for the civil equivalent to be seriously limited in some way (such as a higher damages threshold). But this is on a hugely different scale. Several mainstream mainstays of the Internet have been operating by grace of the DMCA safe harbors but could have been the subject of a criminal investigation all this time. If the government went after, say, YouTube, wouldn’t that cast a chilling pall over the whole Internet project?

Easy Will and Hard Will

Well, there is one possible reasonable explanation: maybe Congress didn’t think it was necessary. Congress may have believed that the DMCA safe harbors applied only to folks who wouldn’t be liable for criminal copyright infringement in the first place.*

* But if this is the case, why didn’t Congress include criminal liability just to be safe? What would the downside have been? Also, what if Congress was wrong about the scope of criminal liability?

Recall that criminal copyright infringement is, by nature, harder to prove than civil copyright infringement, and not just because of the high standard of proof. The government must not only prove, beyond a reasonable doubt, regular old copyright infringement (which probably must be direct copyright infringement), but also (1) “willfulness” and (2) one of three special conditions.

In criminal law, willfulness can either be very easy to prove, or very difficult. You see, sometimes it just means that you intended to do the thing that happens to be a crime. For example, for criminal battery, the government just needs to prove that you meant to hit that guy in the head with the baseball bat; it doesn’t need to prove that you knew doing so would be a crime. That would be stupid.

But sometimes “willfulness” is much harder to prove. This usually happens when the law in question is very complex and subject to differing reasonable interpretations. In other words, you knew what you were doing, but you had a plausible, good-faith belief that what you were doing was, under a reasonable interpretation of the law, legal. You see this a lot in tax law.

It stands to reason, that the “hard” definition of “willfulness” should apply to copyright violations. Copyright, like tax law, is complex and often open to differing legal interpretations. As Prof. Nimmer puts it:

Some courts have suggested that “willful” for these purposes may mean only an intent to copy, not to infringe. On the other hand, the better view construes the “willfulness” required for criminal copyright infringement as a “voluntary, intentional violation of a known legal duty.” Evidence of a course of conduct encompassing past infringements may obliterate a claimed defense of lack of willfulness. But if two parties are engaged in a bona fide dispute about the fine points of fair use or substantial similarity, for example, then even if the plaintiff ultimately prevails, no moral opprobrium necessarily attends the defendant’s defeat. All the more so, that conduct scarcely warrants invocation of the criminal sanction.

4 Nimmer on Copyright § 15.01[A][2].

As Prof. Nimmer notes, however, there are a couple older decisions that used the “easy” definition of “willfulness. The modern trend (such as it is) appears toward the “hard” definition, though. Then again, the leading (and most recent) decision is a 1991 district court decision, albeit, one with a very thoughtful and thorough analysis. United States v. Moran, 757 F. Supp. 1046 (D. Neb. 1991).

Willfulness = Actual or Red-Flag Knowledge?

If the “hard” definition of “willfulness” is correct, then complying with the DMCA safe-harbor requirements becomes a pretty good proxy for avoiding willfulness. This is because, under the “hard” definition, you would need to know that you were infringing someone’s copyright before you could be said to be “willfully” infringing it. And that sounds a lot like the “knowledge” requirement of Section 512(c) and (d), the two most relevant DMCA safe harbors:

if the service provider —

(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material.

It seems to me, if you’re getting rid of any material on your system that you know is infringing, expeditiously upon obtaining such knowledge, then you’re not willfully infringing. At least, that’s a pretty strong argument. Then again, what choice do we have? If compliance with the DMCA safe-harbor knowledge requirement isn’t enough, many of us are pretty much screwed if the DOJ decides to go after service providers hard.*

* An unlikely event, to be sure, but not a very happy one!

However, the “knowledge” requirement isn’t perfectly coextensive with “willfulness.” Take, for example, the hallmark of the DMCA safe harbor, the takedown notice. Under the DCMA safe harbor, a defective takedown notice from a putative rights holder has absolutely no effect–it’s as though it didn’t exist. There’s a good reason for such a counterintuitive rule: we need to encourage rights holders to send fully compliant takedown notices, which in turn protects the rights of users.

But what about for willfulness purposes? The DMCA takedown framework doesn’t apply to criminal actions, so the civil rule regarding defective DMCA takedown notices shouldn’t apply either. For criminal purposes, a defective DMCA takedown notice would be evidence of willfulness.*

* Not necessarily conclusive evidence, just a step in the direction of willfulness.

This works both ways. For example, under the DMCA safe-harbor, failure to comply with the highly technical requirements can lead to a partial waiver of the safe-harbor protection, at least with respect to certain works–and sometimes much worse. But willfulness is a fuzzier concept, so one failure technical failure might not be viewed by a jury as a sign of willfulness.

As for MU, if the government’s legal theories hold up (and its executives can be extradited, which by no means certain), its greatest challenge will be explaining emails from Kim Dotcom angrily complaining about what sounds like attempts by MU to comply with the DMCA safe harbor. Like these two emails:

  • “Never delete files from private requests like this. I hope your current automated process catches such cases.”
  • “I told you many times not to delete links that are reported in batches of thousands from insignificant sources. … [W]e lost significant revenue because of it….”

I suppose there might be an innocent explanation for these. But then again, Dotcom seemed very confused about how the DMCA safe-harbor worked, and about the nature of his own business: “The DMCA quotes you sent me are not relevant. We are a hosting company and all we do is sell bandwidth and storage. Not content.”

Final Thoughts

To return to my speculation about why Congress may have excluded criminal liability from DMCA safe-harbor protection: If the “hard” definition of “willfulness” is correct, then my speculation almost makes sense, though it doesn’t explain the downside of including criminal liability. If the “easy” definition is correct, however, then Congress really blew it, and the future of much of the Internet will be left up to the Department of Justice–and can be essentially regulated by it.

Can anyone point me to any legislative history on why Congress worded the scope of the DMCA safe harbors so precisely, and apparently to exclude criminal liability?

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.