By , August 31, 2017.

The Southern District Court of New York ruled in favor of a YouTube duo (Ethan and Hila Klein, who release videos under the moniker H3H3) facing a claim of copyright infringement for a “reaction video” on August 23, holding that their use of clips from plaintiff’s video constituted fair use. The decision in Hosseinzadeh v Klein garnered significant attention online given that it is one of the first copyright cases involving popular YouTube creators and the wholly YouTubian genre of “reaction videos.” Broadly speaking, reaction videos show people watching other videos, with the focus on the reaction to those vidos. The videos commonly show part or all of the original video, which is rarely created by the creator of the reaction video, raising obvious copyright implications (the court is careful to note that it “is not ruling here that all ‘reaction videos'” constitute fair use).

Setting aside the broader significance of the decision to YouTube creators, I tend to think the actual fair use determination itself is unremarkable—involving a relatively straight-forward and conventional application of the four fair use factors. However, the decision is worth comment for another reason; this is the first reported decision I’m aware of where a claim of misrepresentation for a counter-notice under 17 USC § 512(f) was considered.

17 U.S.C. § 512(f)

The notice-and-takedown provisions of the DMCA require online service providers to remove or disable access to material identified by a copyright owner as infringing in a takedown notice in order to maintain immunity from potential liability for copyright infringement. As part of the notice-and-takedown process, Congress created a counter-notification provision which allows a user affected by a takedown notice to inform the service provider that the material was removed as a result of mistake or misidentification. Upon receipt of a counter-notice, an online service provider must replace the material between 10-14 days unless the original notice sender informs it that it has filed a lawsuit against the user. 117 USC § 512(g)(2).

The DMCA also provides for penalties for misrepresentation for senders of both notices and counter-notices.

(f)Misrepresentations. — Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification,

shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

In Lenz v Universal Music Corp (the “dancing baby” case), the Ninth Circuit held that the standard for holding a notice sender liable under §512(f)(1) is whether she lacked a subjective good faith belief that a use is not authorized.2801 F.3d 1126 (9th Cir. 2015). That is, there is no liability if someone believed material was infringing even if that belief was mistaken.

But up to this point, no court has addressed the Lenz holding in the context of a counter-notice (§512(f)(2)). The court here said it applies the same. It noted, “If the same standard did not apply, creators of allegedly infringing work would face a disparate and inequitable burden in appealing an online service provider’s decision to remove or disable access to their work. Given the fact that the statutory requirements for takedown notices and counter notifications are substantially the same, the DMCA plainly does not envision such a scheme.”

Here, the Defendants responded to Plaintiff’s takedown notice within three days of receipt with a counter-notice, stating that their video was not infringing since it was, “among other reasons, a fair use and ‘noncommercial.'” Plaintiffs disputed both, alleging the video was not a fair use and was commercial, claiming, “the Defendants’ YouTube channel belongs to the Freedom! advertising network which is a YouTube partner that helps YouTube contributors, such as the Defendants, grow their advertising revenues generated from content that they publish to YouTube.” Plaintiffs included in their complaint a claim under 512(f) seeking relief for the alleged misrepresentation, saying they were harmed since the DMCA and YouTube’s policies forced them to file a court action “in order to secure the ultimate removal of the Infringing Video from YouTube.”

Having earlier determined that defendant’s use of plaintiff’s material was fair use, the court dismissed the misrepresentation claim since the statements in the counter-notice were factually accurate. But it went on to say that even if the video was not fair use, it would still dismiss the misrepresentation claim since the record showed that the defendants did form a subjective good faith belief that their video was not infringing, and plaintiffs offered no evidence contradicting this.

I think the court is exactly right, as the plain text of §512(f) provides no distinction between the standard for liability for misrepresentations made in notices as in counter-notices.

The Unsuccessful Push for a Stricter Standard

What’s ironic is that the Electronic Frontier Foundation (EFF) represented Lenz in her lawsuit against Universal and pushed for a tougher objective standard for imposing liability under 512(f). That is, one would be liable even in the event they were mistaken in their belief about infringement. In its cert petition to the Supreme Court, the EFF said that the Ninth Circuit’s holding “that a copyright holder cannot be held liable for causing the takedown of lawful content as long as it subjectively believes the material is infringing—no matter how unreasonable that belief may be— would “give[]a free pass to the censorship of online speech, particularly fair uses.”3The EFF’s cert petition was supported by amicus briefs from the Organization for Transformative Works and Public Knowledge, the Yes Men, and a group of online service providers that included Automattic, Google, Tumblr, and Twitter.

The EFF and its amici either overlooked or ignored the fact that, as confirmed here in Hosseinzadeh v Klein, the tougher standard would also apply to senders of counter-notices. The result would certainly deter internet users who sincerely believed their material was not infringing or was fair use—under an objective standard, not only would a counter-notice expose them to the risk of a lawsuit for copyright infringement, but if they were mistaken in their belief, they would face additional penalties under §512(f). One could say that the user communities that EFF seeks to protect were fortunate that the EFF did not succeed in Lenz.


1 17 USC § 512(g)(2).
2 801 F.3d 1126 (9th Cir. 2015).
3 The EFF’s cert petition was supported by amicus briefs from the Organization for Transformative Works and Public Knowledge, the Yes Men, and a group of online service providers that included Automattic, Google, Tumblr, and Twitter.