IP Law Daily, COPYRIGHT—W.D. Wisc.: No cause of action against a service provider under the DMCA, (Apr 5, 2023)

By Matthew Hersh, J.D.

The landmark statute was intended to protect services providers from liability, not expose them to lawsuits

A website did not have standing to sue Google for allegedly continuing to blacklist it, in violation of DMCA takedown procedures, even after the website’s operator filed a proper counternotice that should have restored access to the site, the federal court for Madison, Wisconsin has held. The court, in granting the search giant’s motion to dismiss, emphasized that while the DMCA did impose certain affirmative requirements upon service providers like Google, it did not necessarily follow that Congress intended to give aggrieved content providers a right to sue (Hopson v. Google, LLC, March 31, 2023, Conley, W.).

The lawsuit was brought by the operator of Gelbooru, a provider of Japanese hentai and anime content and, as noted by Santa Clara Law School Professor Eric Goldman, the frequent target of takedown notices under the Digital Millennium Copyright Act. According to the lawsuit, two unknown persons submitted takedown notices under the DMCA to Google, leading the search giant to delist the website and to also display notices on the website that “would scare the average user into thinking something on the website is malicious.

Things went further off track, the website operator alleged, when the operator filed a counternotice under the DMCA that disputed the contentions in the original notice. Despite the counternotice, the operator contends, Google refused to restore access nor remove the alleged alterations it had made to the website.

The website operator sued Google, contending that it had violated the DMCA by not restoring the disputed content. Google file a motion to dismiss the pro se lawsuit, leading to this opinion.

Cause of action under the DMCA. The court easily granted the motion to dismiss. The problem, quite simply, was that the DMCA did not provide a cause of action to the website operator for the conduct it complained of. Under Section 512(f) of the DMCA, a service provider such as Google must restore content it has taken down if, within ten days of the original notice, the website operator files a counternotice disputing the takedown. To be sure, the court noted, the complaint did allege that Google had failed to follow this process. But that did not matter. Section 512(f) is only a safe harbor provision, the court noted, that protects any content provider who follows the DMCA procedures from “any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to be infringing.” So perhaps Google’s failure to follow the DMCA procedures could open it to a claim under state law. But nothing in Section 512 suggested that Congress intended to create a cause of action under the statute itself. The website operator’s DMCA claim against Google would therefore fail.

First Amendment. But Google was protected not only by statutory standing principles, the court noted, but also by the First Amendment—and possibly even the Communications Decency Act. The gist of the website’s complaint was that Google made improper decisions about whether and when to publish links—and what priority to give those links—to its website. But “judgments about what to publish or not publish,” the court emphasized, fall plainly within the coverage of the First Amendment. Google also might be protected by the Communications Decency Act as well, the court noted, insofar as its conduct constituted the “traditional publishing activities” covered by that Act. But the Seventh Circuit, unlike other circuit courts, had yet to definitively decide the question, and there was no reason to decide it now.

Doe defendants. The court also dismissed—albeit with narrow room to replead—the website operator’s claim against the unnamed persons who had submitted the DMCA claim in the first place. The principal problem was that the website operator had not availed itself of the pre-answer discovery that is available, in certain circumstances, to learn the identity of an anonymous defendant. If the website operator continued to think it had a valid claim against those defendants, it could bring an amended complaint and seek leave to use those procedures.

The Case is No. 21-cv-320-wmc.

Attorneys: Benjamin Hopson, II, pro se. Sopen Bharat Shah (Perkins Coie LLP) for Google, LLC.

Companies: Google, LLC

Cases: Copyright TechnologyInternet WisconsinNews