Designating a DMCA Agent

Service providers are the intended beneficiaries of the Digital Millennium Copyright Act (“DMCA”), as the DMCA shields them from monetary liability that may result from infringing acts of their users (and related User Generated Content or ‘UGC’)[1]. Naturally, service providers are keen to comply with various requirements as set forth by the DMCA in order to obtain this protected status.

However, the DMCA cautions:

The limitations on liability established in this subsection [of the DMCA] apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement …

Previously the process of designating a DMCA agent was somewhat arduous; however, in line with its modernization goals, beginning December 1, 2016, the Copyright Office began letting service providers submit and update the names and contact information for their DMCA Agent using a new electronic system. The fee charged for a paper filing ($105) is reduced to just $6 for an electronic filing. The new regulations became effective the same date that the new electronic system and directory was launched.

The old paper-based registration mechanism will be phased out by December 31, 2017. During the period between December 1, 2016, and December 31, 2017, the Copyright Office will maintain two directories of DMCA Agents. During this transition period, a compliant designation in either the old directory or the new directory will satisfy the service provider’s obligation under section 512(c)(2) of title 17, United States Code to designate an agent with the Copyright Office. But what happens after December 31, 2017?

Of significance (and easy to overlook): any service provider that has previously designated an agent with the Copyright Office will have until December 31, 2017 to submit a new designation electronically through the new online registration system.  Any designation not made through the online registration system will expire and become invalid after December 31, 2017. Therefore if you do not use the new system by December 31, 2017 to (re)designate your DMCA agent, you risk of being liable for any and all UGC.

Moreover, to ensure that designations remain current and accurate, each service provider must “renew” its designation at least every three years, either by amending it to correct or update outdated information or resubmitting without amendment. If a service provider fails to timely renew its designation, the designation will expire and become invalid. Amending or resubmitting a designation through the online system begins a new three-year period before such designation must be renewed.

At Rao & DeBoer we can help you navigate the requirements in order to reach your desired destination of protected service provider status. We can also act as your designated DMCA Agent, and help with monitoring your renewal requirements. The last thing you want is to be on the hook for something someone else did! Contact one of our attorneys today, or if you just have general questions reach out to one of our IP Specialists to schedule a free consultation.

© 2017 John M. DeBoer  

John DeBoer is an attorney admitted with the Texas State Bar.  He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact John via Email.

The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.

[1] See 17 U.S.C. § 512(k)(2) defining ‘monetary relief’