The Copyright Office recently introduced changes to the process by which online service providers can designate an agent under the Digital Millennium Copyright Act (“DMCA”). To qualify for DMCA safe-harbor protections, service providers are required to maintain with the Copyright Office contact information for an agent designated to receive takedown notices. The changes, which go into effect on December 1, 2016, are part of the long-awaited transition to an electronic system for submitting these “Designation of Agent” filings.
Below is a quick look at some of the more significant changes. (A complete discussion of all changes is set out in the Copyright Office’s “Designation of Agent To Receive Notification of Claimed Infringement” Final Rule, available here.)
(a) Existing Designation of Agent Filings Must be Re-filed by 12/31/17. For online service providers (e.g., website and app operators) who currently have a Designation of Agent on file, the most notable change is the need to refile. Under the existing system, a Designation of Agent would remain valid in perpetuity, until replaced or affirmatively withdrawn. As part of the transition to an electronic system, all online service providers that previously filed a Designation of Agent with the Copyright Office will need to refile electronically between December 1, 2016, and December 31, 2017. (Existing paper filings will remain valid until either replaced electronically or January 1, 2018, whichever comes first.)
(b) Filings Must Be Renewed Every Three Years. The Copyright Office will now require that a service provider refile its Designation at least once every three years. Service providers will need to heed these renewal deadlines or risk losing their safe-harbor protection. (The Copyright Office has indicated that the new electronic system will be set up to send reminder emails as the renewal deadline approaches.)
(c) Significant Filing Fee Reduction. To lessen the burden of periodic refiling, the filing fee has been reduced substantially. The new fee will be $6 per filing (down from the current fee, which started at $105).
(d) Agent Need Not be a Natural Person. The Copyright Office has for years had an informal practice of allowing a service provider to designate as its agent a specific job title (e.g., “General Counsel”), in place of naming a natural person. That has now been formalized and expanded. Under the new rules, a service provider can list as its agent “an individual (e.g., ‘Jane Doe’), a specific position or title held by an individual (e.g., ‘Copyright Manager’), a specific department within the service provider’s organization or within a third-party entity (e.g., ‘Copyright Compliance Department’), or a third-party entity generally (e.g., ‘ACME Takedown Service’).” [37 CFR 201.38(b)(3)]
(e) Be Sure to List All Domains, App Names, and d/b/as. Designation of Agent filings must now list “all alternate names that the public would be likely to use to search for the service provider’s designated agent in the Copyright Office’s online directory of designated agents, including all names under which the service provider is doing business, Web site names and addresses (i.e., URLs), software application names, and other commonly used names.” [37 CFR 201.38(b)(2)] This had been common practice among practitioners, but is now required by the Copyright Office. (However, note that – as was previously true – related service providers that are separate legal entities need to file their own Designations of Agent.)