On September 14, 2015, the Court of Appeals for the Ninth Circuit ruled in Lenz v. Universal Music that “copyright holders must consider fair use before sending a takedown notification, and that failure to do so raises a triable issue as to whether the copyright holder formed a subjective good faith belief that the use was not authorized by law.”

This case involved a 29-second home video posted on YouTube in which Stephanie Lenz filmed her two children dancing to “Let’s Go Crazy” by Prince.  This video, known as the “dancing baby” video featured her thirteen-month old son dancing while holding a push toy.  Universal Music sent a takedown notice alleging copyright infringement and a “good faith belief” as required by the DMCA that the “activity is not authorized by the copyright owner, its agent, or the law.”  Under the DMCA, service providers enjoy a safe harbor from liability if they follow the procedures under Section 512(c), including removing or disabling access to content after receiving notification from a copyright holder that the content is infringing.  The video was taken down by YouTube, but was eventually reinstated after Lenz sent a counter-notice.  Lenz filed suit against Universal following the takedown.

The Ninth Circuit considered the question of whether the DMCA requires copyright holders to consider fair use before issuing a takedown notification.  In finding that copyright holders must consider whether a particular use is fair, the Ninth Circuit notes, “Fair use is not just excused by the law, it is wholly authorized by the law . . . The statute explains that the fair use of a copyrighted work is permissible because it is a non-infringing use.”  While Universal argued that fair use is not considered “authorized by law” because it is an affirmative defense, the Ninth Circuit rejects this argument:

Universal’s interpretation is incorrect as it conflates two different concepts: an affirmative defense that is labeled as such due to the procedural posture of the case, and an affirmative defense that excuses impermissible conduct.  Supreme Court precedent squarely supports the conclusion that fair use does not fall into the latter camp: “[A]nyone who . . . makes a fair use of the work is not an infringer of the copyright with respect to such use.”  Sony Corp of Am. v. Universal City Studios, Inc., 464 U.S. 417, 433 (1984).

Given that 17 U.S.C. 107 expressly authorizes fair use, labeling it as an affirmative defense that excuses conduct is a misnomer:

“Although the traditional approach is to view ‘fair use’ as an affirmative defense, . . . it is better viewed as a right granted by the Copyright Act of 1976.  Originally, as a judicial doctrine without any statutory basis, fair use was an infringement that was excused–this is presumably why it was treated as a defense.  As a statutory doctrine, however, fair use is not an infringement.  Thus, since the passage of the 1876 Act, fair use should no longer be considered an infringement to be excused; instead, it is logical to view fair use as a right.  Regardless of how fair use is viewed, it is clear that the burden of proving fair use is always on the putative infringer.”  Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 n.22 (11th Cir. 1996) . . .

Furthermore, the Court notes that even if fair use were to be considered an affirmative defense, copyright holders must consider fair use when sending a takedown notice:

[W]e hold–for the purposes of the DMCA–fair use is uniquely situated in copyright law so as to be treated differently than traditional affirmative defenses.  We conclude that because 17 U.S.C. 107 created a type of non-infringing use, fair use is ‘authorized by the law’ and a copyright holder must consider the existence of fair use before sending a takedown notice under 512(c).


Additionally, the Court states, “Copyright holders cannot shirk their duty to consider–in good faith and prior to sending a takedown notification–whether allegedly infringing material constitutes fair use, a use which the DMCA plainly contemplates as authorized by the law.  That this step imposes responsibility on copyright holders is not a reason for us to reject it.”

The opinion, written by Judge Tallman, was joined by Judges Smith and Muruguia with respect to the conclusion the holding that copyright holders must consider fair use.  Judge Smith dissented on other issues (not discussed in this blog post) regarding the standard used in determining whether Universal faces liability for misrepresenting its good faith belief that the video did not constitute fair use.