As a teenager growing up in the early–mid 2000s, I witnessed some extraordinary advancements in consumer technology. In just a few years, I went from watching movies on VHS to DVD, to eventually being able to watch movies on my iPod (though actually getting movies onto my iPod was always a challenge). iTunes sold iPod-compatible movies but those usually cost anywhere from $9.99 CAD to $29.99 CAD. I remember classmates telling me that instead of paying for movies on iTunes, I could just download movies for free from peer-to-peer sharing websites like Napster or LimeWire. I was always petrified of the police knocking down my door and arresting me for breaking the law, so instead I ponied up the $20 to buy the Italian Job (which still lives on my iPhone today thanks to Apple ID). A few years later (about 10 give or take), the Canadian government decided to adopt new laws to prevent scoundrels like my schoolyard classmates from infringing copyrighted material on the internet – the Notice and Notice regime via Canada’s Copyright Modernization Act.1 This blog will take a look at the Notice and Notice regime, how the Notice and Notice regime compares to the United States’ Notice and Takedown regime via the Digital Millennium Copyright Act 2 (“DMCA”), and how internet service providers (“ISPs”) in Canada and the U.S. can comply with their local copyright infringement laws.
Notice and Notice Regime
The Copyright Modernization Act received royal assent in 20123 to amend certain provisions of Canada’s Copyright Act [the “Act”].4 Some of these revisions included adding provisions to the Act that now reflect the Notice and Notice regime. Specifically, the Act outlines provisions which describe:
Owners of copyrighted works (an “Owner”) may send a notice of a claimed infringement to ISPs (described in the Act as “persons who provide the means in the course of providing services related to the operation of the Internet or another digital network”) or search engines (described as “information location tools” in the Act);5
The details that must and must not be included in a notice;6
The ISP’s obligations once they receive a notice;7 and,
Penalties for ISPs who fail to forward notices to infringers or alleged infringers (“Infringers”) of copyrighted material.8
Who Does the Notice and Notice Regime Apply To?
The Act protects the copyright of literary, dramatic, musical, and artistic works if the author is a citizen or ordinarily a resident in a treaty country9 (which covers countries that are part of the Berne Convention, Universal Copyright Convention, or a World Trade Organization). Therefore, Owners both inside and outside of Canada are entitled to make Notice claims to ISPs.
The Act does not specify where an ISP or Infringer needs to be based for the Notice and Notice regime to apply, however, the Office of Consumer Affairs has provided an example of an Infringer with a Canadian IP address. Presumably, the Notice and Notice regime would only apply in circumstances where the ISP is based in Canada or has Canadian consumers.10
How Does Notice and Notice Work in Practice?
When an Owner thinks that someone has infringed on their intellectual property on the internet, the Owner can send a notice of the alleged infringement to the ISP, which includes the following information:11
The Owner’s name and address;
The work that the claim relates to;
The Owner’s interest or right with respect to the copyright in the work;
The location where the claimed infringement relates;
The specific infringement that is claimed; and,
The date and time of the claimed infringement.
The notice cannot contain:12
An offer to settle the claimed infringement; or
A request or demand for payment or for personal information from the Infringer.
The Act requires the ISP to forward the notice of alleged copyright infringement to the Infringer and then inform the Owner once this has been done.13 There are no obligations for an Infringer to respond to a notice once they receive a notice from an ISP. ISPs must retain records of the identity of Infringers who have been forwarded notices for a period of six months, or up to one year where an Owner decides to take legal action.14
Penalties
Aside from suing an Infringer directly for copyright infringement where damages can reach up to $20,000 (or the actual damages/profits the Owner has suffered due to the infringement),15 an Owner can launch proceedings against the ISP in circumstances where the ISP fails to perform the obligations required by the Notice and Notice regime. If found to be liable, an ISP can be fined between $5,000 – $10,000.16 An Owner’s only remedy against search engines is to seek an injunction to remove or stop making the work publicly available.17
Notice and Takedown Regime Under the DMCA
South of the border, the U.S. has a stricter regime that places more obligations on ISPs for dealing with copyright claims. This is reflected in the DMCA, which amended certain sections of the U.S. Copyright Act and has been referred to as a Notice and Takedown regime.18
Who Does the Notice and Takedown Regime Apply To?
The U.S. Copyright Office has said that its Notice and Takedown regime can apply to both US-based ISPs and ISPs outside of the U.S. that target U.S. users.19 The U.S. Copyright Office has also said that Owners do not need a copyright registration before sending a takedown notice, however, U.S. works require copyright registration before Owners can sue in court for copyright infringement (as discussed in our Fresh Prince of Copyright Claims blog).20
Similarities and Differences Between the U.S.’ Notice and Takedown and Canada’s Notice and Notice
The Notice and Takedown regime is similar to the Notice and Notice regime in the sense that both regimes allow Owners to notify ISPs that their copyrighted material is being used without their permission. The notice sent to ISPs under US law requires the following information:21
The signature of the Owner or an authorized agent;
Identification of the work or works claimed to be infringed;
Identification of the infringing material and information reasonably sufficient to permit the ISP to locate the material;
Contact information of the Owner;
A statement that the person sending the notice has a good faith belief that use of the material in the manner complained of is not authorized by the Owner, its agent, or the law; and,
A statement that the information in the notice is accurate, and under penalty of perjury, the person sending the notice is authorized to act on behalf of the Owner.
The Notice and Takedown regime starts to differ from the Notice and Notice regime after an initial notice has been sent to the ISP. Rather than the ISP just forwarding the notice to the Infringer like in Canada, upon receipt of a notice for U.S. ISPs, the ISP must remove or disable access to the infringing material. The ISP must then notify the Owner that the alleged infringing material has been removed.22 There is no similar obligation by an ISP in Canada to remove infringing material under the Notice and Notice regime upon receipt of an infringement notice (unless an Owner obtains a court order against a search engine).23
Another significant difference is that the Notice and Takedown regime allows for the opportunity for counter-notices. If the Infringer believes that the ISP removed material without merit, the Infringer can submit a counter-notice to the ISP requesting that the material be reinstated.24 Upon receipt of a valid counter-notice, the ISP is required to send the Owner a copy of the counter-notice to allow the Owner to decide if they would want to bring a lawsuit, and the ISP must restore access to the material within 10 – 14 business days. However, the ISP does not have to restore the material if the Owner has informed the ISP that it has filed a court action against the alleged Infringer.25
A third major difference between the two regimes is that in order for an ISP to remain compliant with the Notice and Takedown regime in the U.S. (and thereby have a limitation of liability against their own copyright infringement by showing their compliance with the regime – referred to as a “safe harbour”), an ISP must designate a DMCA agent to receive notices and counter-notices and must register the DMCA agent with the U.S. Copyright Office.26 This requirement applies to ISPs even if the ISP is located outside of the U.S.27
Penalties
If an ISP does not comply with its Notice and Takedown obligations, including by designating/registering a DMCA agent with the U.S. Copyright Office, the ISP would not qualify for the safe harbours available in the DMCA and could be liable for damages for either directly infringing the copyrighted material or indirectly for facilitating the infringing activities.28 Infringers in the U.S. can be liable for damages up to $30,000 USD for each work infringed, or up to $150,000 USD for each work if wilful infringement is proved (or the actual damages/profits the Owner has suffered due to the infringement).29
Reflection
Knowing what I know now about the similarities and differences between the Notice and Notice and Notice and Takedown regimes in Canada and the U.S., what would 12-year-old me say to my middle school classmates encouraging me to download movies from peer-to-peer websites (assuming the current laws were in place)?
Firstly, I would tell them that the Pacifier wasn’t that bad of a movie, but it probably wasn’t worth wasting any of the 30 GB of memory on their iPods.
Secondly, I would tell them that an ISP may forward a notice to them (or worse, their parents) if an Owner (maybe a major movie studio in this instance) identified that their intellectual property was being exploited on the internet via pirated downloads.
Lastly, I would warn those students who had aspirations of starting their own websites or online services in the future about what they would need to do to be compliant with copyright infringement notice laws (this is definitely what I would do). Specifically, I would tell those overachievers that if they want to own and operate a website in the future:
They should have an internal process in place to deal with copyright infringement notices;
They should understand the local requirements for dealing with copyright infringement notices depending on where they operate the website and/or target consumers;
They should review their privacy policies to ensure that they properly disclose how they use, retain, and store personal information in the context of receiving and responding to copyright infringement notices; and
If they plan to operate in the U.S. or target U.S. consumers, they should consider registering a DMCA agent with the U.S. Copyright Office.
If you are an ISP and you would like us to assist with preparing your policies related to copyright infringement notices or you’re an agency or content creator with questions about your jurisdiction’s copyright infringement notice laws, please feel free to reach out to GME Law.
1 Copyright Modernization Act, S.C. 2012, c.20.
2 Digital Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (Oct. 28, 1998).
3 Canada Gazette, Copyright Modernization Act: Order Fixing Various Dates as the Dates on which Certain Provisions of the Act Come into Force, Vol. 146, No.23 – SI/2012-85, November 7, 2012.
4 Copyright Act, R.S.C., 1985, c C-42 [the “Act”].
5 The Act at Section 41.25(1)(a).
6 Ibid at Sections 41.25(2) –(3).
7 Ibid at Section 41.26.
8 Ibid at Section 41.26(3).
9 Ibid at Section 5(1)(a) – (b).
10 Office of Consumer Affairs, Notices to Canadian Internet Subscribers, November 16, 2011.
11 Supra Note 4 at Section 41.25(2).
12 Ibid at Section 41.25(3).
13 Ibid at Section 41.26(1)(a).
14 Ibid at Section 41.26(1)(a).
15 Ibid at Section 38.1(1).
16 Ibid at Section 41.26(3).
17 Ibid at Section 41.27.
18 Copyright Act of 1976, 17 U.S.C., §§ 101-810 [“US Copyright Act”].
19 U.S. Copyright Office, Section 512 of Title 17: Resources on Online Service Provider Safe Harbors and Notice-and-Takedown System, FAQs for “What If the Website Where I Found My Work is Not Hosted in the United States?”.
20 Ibid at FAQ “Do I need to Register My Work with the Copyright Office to Request a Takedown?”.
21 Supra Note 18 at § 512(c)(3)(a).
22 U.S. Copyright Office, Section 512 of Title 17: Resources on Online Service Provider Safe Harbors and Notice-and-Takedown System.
23 Supra Note 4 at Section 41.27(1).
24 Supra Note 18 at § 512(g)(3).
25 Ibid at § 512(g)(B)-(C).
26 Ibid at § 512(c)(2).
27 U.S. Copyright Office, DMCA Designated Agent Directory FAQ: “Who Must Designate an Agent?”.
28 Supra Note 22 at FAQ: “I Operate an OSP; What Happens if I Do Not Qualify for a DMCA Safe Harbor?”.
29 Supra Note 18 at § 504 (b)-(c).
