The Digital Millennium Copyright Act: The Copyright Office Examines Whether it Needs Revamping

As most internet users of today know, music, videos, poems, photographs, and various other creative works are often posted on social media and other sites without the permission of the work’s creator.  These postings violate the creator’s exclusive right to distribute his or her own work, one of the central rights protected by copyright law and based on the Constitution.[1]  To address concerns of increasing copyright infringement online, Congress enacted the Digital Millennium Copyright Act (the “DMCA”) in 1998.  The DMCA allows copyright owners to submit takedown notices to internet service providers (who provide the platforms for postings, think YouTube, SoundCloud, Twitter, etc., abbreviated in this article to “ISPs”), demanding that access to an infringed work be blocked or the work removed.  In exchange for compliance with the DMCA and the swift removal of infringing materials, ISPs are exempted from liability for copyright infringement.

Although the DMCA may have provided a sufficient[2] remedy for copyright holders in 1998, copyright owners in recent years have complained that the increase in infringing posts resulting from the proliferation of user-upload sites such as eBay, SoundCloud, Vimeo, and others makes the takedown process onerous.  For example, since 2012 the music recording industry has sent takedown notices for over 17 million infringements.[3]  Google receives on average over 75 million URL takedown requests per month, and must use computer programs to sift through them all.[4] In response to the uproar from copyright holders, Congress has requested the Copyright Office conduct a study to determine the effectiveness of the DMCA.[5]  The study is currently ongoing, with the Copyright Office receiving more than 92,000 submissions in its first round of comments.[6]

In reviewing comments submitted during the first round, battle lines have clearly been drawn between the creators of works and ISPs.  In support of its position that the DMCA sufficiently protects the various parties’ interests, in its comment Amazon focused on the economic growth driven by the DMCA’s safe harbor provision, noting that, because of the safe harbor, ISPs have not been required to conduct the “difficult” task of policing posted content, a policy that has been “crucial to the growth of the Internet.”[7]  Amazon further asserted that the DMCA strikes “the right balance” between providing rights holders with the ability to remove infringing content while allowing ISPs the ability to “innovate and host ever-increasing amounts and types of content without fear of massive liability based on the activities of their users.”[8]  Other ISPs argue that, in fact, the takedown system is being abused, with a “guilty until proven innocent” approach often leading to misuse and overreach.[9]  One Google-backed study, conducted by the Berkeley School of Law, found that almost 30 percent of takedown requests received in a six month period had validity issues.[10]

Creators of copyrighted works, however, assert that the take down provisions are not an adequate deterrent to infringement, [11] particularly when a majority of takedown notices are for infringing uses previously the target of a notice.[12]  To counteract the cycle of takedown-repost-takedown, many creators are arguing for a “takedown, stay down” provision, which would allow copyright holders to submit a takedown notice for a work once with the expectation that the work never appear again on the same platform.[13]  Indeed, in support of its position that the DMCA needs strengthening, the Artists Rights Society argues that the current takedown provisions, contrary to Congressional intent, favor ISPs, who profit from infringing posts through listing fees, advertising, and/or increased traffic.[14]  To restore balance, the Artists Rights Society recommends that online service providers be required to pay a percentage of the quantifiable revenues received from an infringing third-party user to the copyright owner.[15]  The Artists Rights Society does not elaborate on how these fees would be collected and dispersed.

Taking a slightly different course from both their fellow creators and the ISPs, the American Photographic Artists (“APA”) propose turning the tables on the oft-anonymous infringers who are benefitting from, according to the APA, a “de facto immunity” under the DMCA.  This de facto immunity is the product of the high cost of pursing a copyright infringement claim and the potentially low damages return (particularly for unregistered works),[16] making the pursuit of infringers essentially pointless.  Although it does not appear from its comment that the APA is advocating for one particular measure to shift the risk of infringement, one possibility the APA discusses is requiring an infringer to reimburse the copyright holder’s costs spent on a takedown.[17]

As the Copyright Office weighs these competing interests, it will also need to keep in mind how evolving technology may continue to impact takedown proceedings.  We will keep you updated on developments as the Copyright Office prepares its report. — Stephanie Martinez


[1] 17 U.S.C. § 106; U.S. Const. art. I § 8 cl. 8.

[2] Many would argue the DMCA never worked well and was instead poorly thought out and poorly executed.  See Chris Mills, These Three Dumb Examples Prove that Copyright Is Broken, BGR (May 24, 2016),

[3] Randolph J. May & Seth L. Cooper, Copyright ‘Notice and Takedown’ System Needs Fixing (May 9, 2016)

[4] Google, Transparency Report,  Requests sent to Google are to remove links from Google’s search results due to infringing content on the website, not to remove the allegedly infringing content from the site itself.

[5] See United States Copyright Office, Section 512 Study,

[6] See United States Copryight Office, Requests for Public Comments: Digital Millennium Copyright Act Safe Harbor Provisions,!docketBrowser;rpp=25;so=ASC;sb=title;po=0;dct=PS;D=COLC-2015-0013;refD=COLC-2015-0013-0002.

[7], Inc., Section 512 Study: Notice Docket No. USCO-2015-7 and Request for Public Comment, p. 3.

[8] Id.

[9] Caroline Craig, DMCA ‘Reform’ Harbors Return of SOPA, InfoWorld (May 20, 2016),

[10] Id.; Jennifer M. Urban, Joe Karaganis, & Brianna L. Shofield, Notice and Takedown In Everyday Practice, 11 (2016), available at

[11] See American Photographic Artists, Inc., Initial Response to Notice of Inquiry 78 F.R. 13094 (Docket No 2015-7) Section 512 Study: Notice and Request For Public Comment, p. 2.

[12] In fact, the Federation of the Phonographic Industry has reported that 94% of its takedown notices are for “recordings uploaded repeatedly” to sites already notified of the infringing posting.  Randolph J. May & Seth L. Cooper, Copyright ‘Notice and Takedown’ System Needs Fixing, The Hill (May 9, 2016),

[13] TorrentFreak, Ten Websites Hit With 70M DMCA Complaints In A Year, TorrentFreak (May 29, 2016),

[14] See Artists Rights Society, Comments of Artists Rights Society, p. 2.

[15] Id.

[16] See American Photographic Artists, Inc., Initial Response to Notice of Inquiry 78 F.R. 13094 (Docket No 2015-7) Section 512 Study: Notice and Request For Public Comment, p. 3.

[17] Id.

U.S.Embassy – New Delhi Invites Gavin as Intellectual Property Ambassador

By: Pamela Gavin

Once again, I have been invited to speak oversees on the topic of intellectual property law. A couple of years ago, the office of the President of Kazakhstan invited me to speak the Astana Economic Forum. See: for a description of this very impressive world forum.

A few months ago, the U.S. Embassy in New Delhi, India, invited me to participate in the “U.S. Speaker Program for India” which is designed to connect U.S. experts with Indian audiences and institutions; to promote an understanding of U.S. strategic priorities, policies, and institutions; and to discuss the political, economic, social, and cultural context from which they arise. The program is scheduled to take place through the end of 2016 and offers an opportunity for U.S. experts to travel individually to India on a professional assignment. The program will include speaking engagements, presentations to professional audiences, seminars, media appearances and interviews, and mentorships on a variety of topics. The Embassy has asked me to travel to India to speak about Intellectual Property, Piracy, and the Entertainment Industry in America — one of the key topics for the speaker program in 2016. As part of this program, I will have the opportunity to engage a diverse group of influential Indian audiences including representatives from the entertainment industry, government departments, law enforcement agencies, business and film associations, legal experts, lawmakers, students of business and law schools, and members of the recently constituted six-member think tank set up by the Indian Commerce and Industry Ministry to draft the National Intellectual Property Rights Policy. The Embassy has expressed appreciation for my “wealth of experience, sector knowledge, and ability to discuss issues including: role of the industry and government to revisit existing IPR laws and enforcement strategies that affect the entertainment industry; share U.S. experiences in countering piracy in the entertainment industry; and U.S. and India bilateral and multi-lateral collaboration to enforce stricter IP norms.”

I am thrilled to be able to contribute in a meaningful way to the development of intellectual property protections outside the U.S. and am humbled by the opportunities presented.

See this article on LinkedIn: LinkedIn Article

Cheerleading Uniforms Vault Copyright’s Useful Article Quandary to the High Court

Are cheerleading uniform designs eligible for federal copyright protection? Last week, the United States Supreme Court granted certiorari in the case of Star Athletica, LLC v. Varsity Brands, Inc., promising an answer to that question. At issue is whether combinations of stripes, chevrons, and color blocks that appear on cheerleading uniforms are protected by federal copyright law.[1]

The Copyright Act offers limited protection to “useful articles” such as furniture or clothing — items that have intrinsic functionality. Although the Copyright Act protects pictorial, graphic, and sculptural works, a design incorporated into a useful article is only eligible for copyright protection if it is conceptually separable from the utilitarian aspects of that article. Under this “doctrine of separability,” if a chair has design elements that can be peeled away from the underlying purpose of the chair and can exist and be perceived independently of the chair’s underlying purpose, those design elements might be eligible for federal copyright protection. If this doctrine seems unclear, you are not alone in your assessment.

Determining whether a feature of a useful article can be conceptually separated from that article and protected under copyright law is a puzzle that some have called a “metaphysical quandary”[2] and “the most vexing, unresolved question in copyright law.”[3] Over ten different tests, some academic, some judicial, have been formulated and adopted by courts struggling to apply the doctrine of separability. The result is an incoherent patchwork scheme of copyright protection where the protectability of features of useful articles under the Copyright Act can turn entirely on which Circuit adjudicates a copyright case.

The Supreme Court’s opportunity to provide a uniform test for separability analysis arrives via a dispute that, fittingly, involves uniforms. Varsity Brands, the world’s largest cheerleading uniform manufacturer and distributor, sued industry newcomer Star Athletica for copyright infringement after Star Athletica published a catalogue of cheerleading uniforms that Varsity alleged too closely mirrored Varsity’s copyright-registered designs. Varsity owns a number of copyright registrations for the designs that appear on the cheerleading uniforms it manufactures and distributes: combinations of stripes, chevrons, and color blocks.

At the district court level, the court held that Varsity’s designs were not copyrightable because the utilitarian function of a cheerleading uniform and the designs themselves are not conceptually separable. Interestingly, according to the district court, stripes, chevrons, and color blocks are functional aspects of a cheerleading uniform, and a cheerleading uniform without these elements is not a cheerleading uniform.

On appeal, the Sixth Circuit reached an opposite conclusion, holding that Varsity’s designs were protected by copyright because the utilitarian function of a cheerleading uniform and the designs themselves are conceptually separable. In the Sixth Circuit’s view, stripes, chevrons, and color blocks serve no utilitarian function, do not impact a cheerleading uniform’s ability to function as an item of clothing, and are merely decorative as applied to cheerleading uniforms.

In granting certiorari, the Supreme Court has taken on the challenge of sorting through this “metaphysical quandary” to provide a uniform test for determining when a feature of a useful article is protectable under the Copyright Act. Any guidance the Court provides on useful articles and whether the stripes on a cheerleading uniform and the uniform itself are conceptually separable from one another is likely to have a significant impact both upon established industries such as fashion and upon fledgling industries such as 3D printing. The Court is expected to hear arguments in Star Athletica, LLC v. Varsity Brands, Inc. in the Fall 2016 Term. — Mary Witzel


[1] The Petition for Writ of Certiorari also raised the question of the appropriate level of deference courts should provide to determinations made by the Copyright Office. The Supreme Court declined to grant certiorari on this question.

[2] Universal Furniture Int’l v. Collezione Europa, Inc., 618 F.3d 417, 434 (4th Cir. 2010).

[3] Star Athletica, LLC. v. Varsity Brands, Inc., No. 15-866, 2016 WL 94219 (Filed Jan. 5, 2016) (Pet. Writ of Cert).