Chilling Effects


Weather Reports



a Cease and Desist Notice

Search the Database



Topic HomeFAQs

Monitoring the legal climate for Internet activity

Samuelson Law, Technology and Public Policy Clinic

 Chilling Effects Clearinghouse > DMCA Safe Harbor Provisions > Notices > "Premies" Complain to Google of "" site

Printer-friendly version

"Premies" Complain to Google of "" site

April 24, 2003


Sender Information:
Elan Vital, Inc.
Sent by: [Private]
Stroock & Stroock & Lavan
Los Angeles, CA, 90067, USA

Recipient Information:
Google, Inc.
Mountain View, CA, 94043, USA

Sent via: FedEx
Re: DMCA Notice of Copyright Infringement on Google Cache of ""


April 24, 2003

Direct Dial [Private]

Director of Legal Affairs/Copyright Notice Designee
Google, Inc.
Mountain View, California 94043

Re: DMCA Notice of Copyright Infringement
on Google Cache of ""

Dear [Private]:

We arc counsel for Elan Vital, Inc. ("EVI") and are responsible for the policing of intellectual property belonging to EVI.

EVI is the holder of a wide range of copyright interests in a catalog of intellectual property including copyrights for which it receives protection Under the laws of the United States and over 80 countries around the world. EVI has expended considerable resources acquiring, promoting and protecting this intellectual property.

It has come to our attention that your server hosts a cache of a Web site dedicated to an ongoing series of acts that violate the proprietary rights of EVI. Specifically, we have learned that which is routinely cached by your company, unquestionably and unlawfully violates EVI's valid and subsisting copyright interests. This Web site, and the constituent pages therein, makes up a staggering virtual library of infringing works: nearly 100 photographs and works of visual arts: more than 49 proprietary literary works, including the complete texts to 14 complete songs and an entire book. Moreover, the infringing Web site cached by your company has collected many of these works onto downloadable files for the specific purpose of facilitating further infringing "file-sharing" distribution. A list of URL's upon which infringing material appears is attached as "Schedule A".

Pursuant to 17 U.S.C. § 512 ("the Digital Millennium Copyright Act" or "DMCA"), we assert and hereby place Google, Inc. on notice that the communications in question are in violation of our client's proprietary rights. Failure to act in accordance with the DMCA may result in damages and injunctive relief being awarded against Google, Inc. for vicarious infringement.

As required by the DMCA, we hereby state that we have a good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent or the law. The information in this notification is accurate. Further, under penalty of perjury, I represent that we are authorized to act on behalf of EVI in policing its proprietary interests.

In light of the above, we demand that you immediately remove or deny public access to Google's cache of the infringing Web site. We also request that you provide us with written assurance within 72 hours of receipt of this letter that such compliance has been effectuated.

Finally, we respectfully remind you that access to the infringing Web site through its cache may be reinstituted only upon fax or mail service of a counter notification that fully complies with the stricture of Sections 512(g)(2) and (3) of the DMCA, including the infringer's consent to suit in the United States Federal District Court and waiver of jurisdictional challenge. This notice, and the Schedule attached hereto shall not be construed as a waiver of any claim in part or in whole by EVI, it's licensees, licensors, or any affiliated entities, and all rights under common law and statute are expressly reserved.

If I may answer any questions or provide further information, please call me at your earliest convenience.

Very truly yours,



c: [Private]







Schedule A
Table of web pages infringing upon proprietary rights of Elan Vital

URL where infringement occurs Nature of Infringement Photographs Photographs Photographs; Textual Works Photographs Photographs; Textual Works Photographs; Textual Works Photographs; Textual Works Photographs; Textual Works Photographs; Textual Works Textual Works Photographs Photographs; Textual Works Photographs; Textual Works Textual Works Textual Works Photographs, Textual Works Photographs; Textual Works Photographs; Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Graphic Works; Textual Works congrat.htm Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works Textual Works; Photographs Textual Works; Photographs




Schedule A
Table of web pages infringing upon proprietary rights of Elan Vital Textual Works Textual Works Textual Works; Graphic Works Textual Works Textual Works _pict.htm Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs Photographs

image (pdf file)



FAQ: Questions and Answers

[back to notice text]

Question: Who may hold a copyright?


Answer: A copyright ordinarily vests in the creator or creators of a work (known as the author(s)), and is inherited as ordinary property. Copyrights are freely transferrable as property, at the discretion of the owner. 17 U.S.C. §201(a), (d). In some cases, however, the actual creator is not considered the author of the work for copyright purposes: if a work is created by an employee in the regular course of her employment, it is considered a "work for hire" and the employer, not the employee, is considered the "author" of the work for copyright purposes. For example, in the absence of an agreement to the contrary, a staff writer for a newspaper does not hold the copyrights in her product, the newspaper does. This only applies to works created in the ordinary course of employment: if the same reporter writes a novel in her spare time, she herself owns that copyright.

Certain commissioned works may also be considered works for hire. 17 U.S.C. §201(b); Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). The term "work for hire" is defined in 17 U.S.C. §101.

[back to notice text]

Question: What kinds of things are copyrightable?


Answer: In order for material to be copyrightable, it must be original and must be in a fixed medium.

Only material that originated with the author can support a copyright. Items from the public domain which appear in a work, as well as work borrowed from others, cannot be the subject of an infringement claim. Also, certain stock material might not be copyrightable, such as footage that indicates a location like the standard shots of San Francisco in Star Trek IV: The Voyage Home. Also exempted are stock characters like the noisy punk rocker who gets the Vulcan death grip in Star Trek IV.

The requirement that works be in a fixed medium leaves out certain forms of expression, most notably choreography and oral performances such as speeches. For instance, if I perform a Klingon death wail in a local park, my performance is not copyrightable. However, if I film the performance, then the film is copyrightable.

[back to notice text]

Question: What rights are protected by copyright law?


Answer: The purpose of copyright law is to encourage creative work by granting a temporary monopoly in an author's original creations. This monopoly takes the form of six rights in areas where the author retains exclusive control. These rights are:

(1) the right of reproduction (i.e., copying),
(2) the right to create derivative works,
(3) the right to distribution,
(4) the right to performance,
(5) the right to display, and
(6) the digital transmission performance right.

The law of copyright protects the first two rights in both private and public contexts, whereas an author can only restrict the last four rights in the public sphere. Claims of infringement must show that the defendant exercised one of these rights. For example, if I create unauthorized videotape copies of Star Trek II: The Wrath of Khan and distribute them to strangers on the street, then I have infringed both the copyright holder's rights of reproduction and distribution. If I merely re-enact The Wrath of Khan for my family in my home, then I have not infringed on the copyright.

Trademark law, in contrast, is designed to protect consumers from confusion as to the source of goods (as well as to protect the trademark owner's market). To this end, the law gives the owner of a registered trademark the right to use the mark in commerce without confusion. If someone introduces a trademark into the market that is likely to cause confusion, then the newer mark infringes on the older one. The laws of trademark infringement and dilution protect against this likelihood of confusion.

Infringement protects against confusion about the origin of goods. The plaintiff in an infringement suit must show that defendant's use of the mark is likely to cause such a confusion. For instance, if I were an unscrupulous manufacturer, I might attempt to capitalize on the fame of Star Trek by creating a line of 'Spock Activewear.' If consumers could reasonably believe that my activewear was produced or endorsed by the owners of the Spock trademark, then I would be liable for infringement.

The law of trademark dilution protects against confusion concerning the character of a registered trademark. Suppose I created a semi-automatic assault rifle and marketed it as 'The Lt. Uhura 5000.' Even if consumers could not reasonably believe that the Star Trek trademark holders produced this firearm, the trademark holders could claim that my use of their mark harmed the family-oriented character of their mark. I would be liable for dilution.

[back to notice text]

Question: What happens if an individual is found to repeatedly infringe?



Answer: The safe harbor provisions require the service provider to include in its copyright infringement policies a termination policy that results in individuals who repeatedly infringe copyrighted material being removed from the service provider networks. [512(i)(1)(A)] This termination policy must be made public in the terms of use that the service provider includes in its contracts or on its web site.


[back to notice text]

Question: What defines a service provider under Section 512 of the Digital Millennium Copyright Act (DMCA)?



Answer: A service provider is defined as "an entity offering transmission, routing, or providing connections for digital online communications, between or among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received" or "a provider of online services or network access, or the operator of facilities thereof." [512(k)(1)(A-B)] This broad definition includes network services companies such as Internet service providers (ISPs), search engines, bulletin board system operators, and even auction web sites. In A&M Records, Inc. v. Napster Inc., the court refused to extend the safe harbor provisions to the Napster software program and service, leaving open the question of whether peer-to-peer networks also qualify for safe harbor protection under Section 512.


There are four major categories of network systems offered by service providers that qualify for protection under the safe harbor provisions:

  • Conduit Communications include the transmission and routing of information, such as an email or Internet service provider, which store the material only temporarily on their networks. [Sec. 512(a)]
  • System Caching refers to the temporary copies of data that are made by service providers in providing the various services that require such copying in order to transfer data. [Sec. 512(b)]
  • Storage Systems refers to services which allow users to store information on their networks, such as a web hosting service or a chat room. [Sec. 512(c)]
  • Information Location Tools refer to services such as search engines, directories, or pages of recommended web sites which provide links to the allegedly infringing material. [Sec. 512(d)]


[back to notice text]

Question: If I am accused of "piracy," what does this mean?


Answer: "Piracy" is slang for copyright infringment, usually used to describe the unlawful copying of software, videogames, movies or MP3s. Copyright law gives a creator of software, music, literature and other works a limited monopoly to reproduce or distribute in the created work. If you are accused of piracy, then someone is claiming that you have violated their copyright by copying part or all of their work without authorization, or have enabled other people to make such copies.

[back to notice text]

Question: Is all copying piracy?


Answer: No. Copyright gives the owner exclusive rights to reproduce, adapt, publicly distribute, perform and display their work. Nonetheless, the law allows "fair use" of copyrighted material. Fair use permits, in certain circumstances, the use or copying of all or a portion of a copyrighted work without the permission of the owner. Copyrighted works may be used for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. To decide whether a use is "fair use" or not, courts consider, in part:
(1) the purpose and character of the use (including whether such use is of a commercial nature or is for nonprofit educational purposes);
(2) the nature of the copyrighted work (giving creative works more protection than factual works);
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole (including size and quality- i.e. Does the portion represent the "heart" of the work); and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

Courts balance these factors, placing an emphasis on the fourth, however rulings have been unpredictable. Parody may be protected by fair use where the user is actually making a comment on or criticism of the copyrighted material, even if a profit is made from the use. Still, distributing copyrighted software will rarely be fair use because people will use those copies instead of buying the software from the legitimate vendor.

[back to notice text]

Question: Does a copyright owner have to specify the exact materials it alleges are infringing?



Answer: Proper notice under the safe harbor provisions requires the copyright owners to specifically identify and locate the infringing materials. [512(c)(3)(A)(ii)] Rather than simply sending a letter to the service provider that claims that infringing material exists on their system, this qualification ensures that service providers are given a reasonable amount of information about the infringing material to effectively police its network. [512(c)(3)(A)(iii)]


However, in the recent case of ALS Scan, Inc. v. Remarq Communities, Inc., the court found that the copyright owner did not have to point out all of the infringing material, but only substantially all of the material. The relaxation of this specificity requirement shifts the burden of identifying the material to the service provider, raising the question of the extent to which a service provider must search through its system. OSP customers should note that this situation might encourage OSP's to err on the side of removing allegedly infringing material.


[back to notice text]

Question: What are the notice and takedown procedures for web sites?



Answer: In order to have an allegedly infringing web site removed from a service provider's network, the copyright owner must provide notice to the service provider with the following information:

  • The name, address, and electronic signature of the complaining party [512(c)(3)(A)(i)]
  • The infringing materials and their Internet location [512(c)(3)(A)(ii-iii)]
  • Sufficient information to identify the copyrighted works [512(c)(3)(A)(iv)]
  • A statement by the owner that it has a good faith belief that there is no legal basis for the use of the materials complained of [512(c)(3)(A)(v)]
  • A statement of the accuracy of the notice and, under penalty of perjury, that the complaining party is authorized to act on the behalf of the owner. [512(c)(3)(A)(vi)]



Once notice is given to the service provider, or in circumstances where the service provider discovers the infringing material itself, it is required to expeditiously remove the material from its network. The safe harbor provisions do not require the service provider to notify the individual responsible for the allegedly infringing material before it has been removed, but they do require notification after the material is removed.


[back to notice text]

Question: What is vicarious liability?


Answer: Vicarious liability, a form of indirect copyright infringement, is found where an operator has (1) the right and ability to control users and (2) a direct financial benefit from allowing their acts of piracy. User agreements or Acceptable Use Policies may be evidence of an operator's authority over users. The financial benefit may include a subscription fee, advertising revenues, or even a bartered exchange for other copyrighted. Under the doctrine of vicarious liability, you may be found liable even if you do not have specific knowledge of infringing acts occurring on your site.

[back to notice text]

Question: Does a service provider have to notify its users about its policies regarding the removal of materials?



Answer: In order to qualify for exemption under the safe harbor provisions, the service provider must give notice to its users of its policies regarding copyright infringement and the consequences of repeated infringing activity. [512(i)(1)(A)] The notice can be a part of the contract signed by the user when signing up for the service or a page on the service provider's web site explaining the terms of use of their systems. While there are no specific rules about how this notice must be made, it must be "reasonably implemented" so that subscribers and account holders are informed of the terms. [512(i)(1)(A)]


[back to notice text]

Question: What are the counter-notice and put-back procedures?



Answer: In order to ensure that copyright owners do not wrongly insist on the removal of materials that actually do not infringe their copyrights, the safe harbor provisions require service providers to notify the subscribers if their materials have been removed and to provide them with an opportunity to send a written notice to the service provider stating that the material has been wrongly removed. [512(g)] If a subscriber provides a proper "counter-notice" claiming that the material does not infringe copyrights, the service provider must then promptly notify the claiming party of the individual's objection. [512(g)(2)] If the copyright owner does not bring a lawsuit in district court within 14 days, the service provider is then required to restore the material to its location on its network. [512(g)(2)(C)]


A proper counter-notice must contain the following information:

  • The subscriber's name, address, phone number and physical or electronic signature [512(g)(3)(A)]
  • Identification of the material and its location before removal [512(g)(3)(B)]
  • A statement under penalty of perjury that the material was removed by mistake or misidentification [512(g)(3)(C)]
  • Subscriber consent to local federal court jurisdiction, or if overseas, to an appropriate judicial body. [512(g)(3)(D)]



If it is determined that the copyright holder misrepresented its claim regarding the infringing material, the copyright holder then becomes liable to the OSP for any damages that resulted from the improper removal of the material. [512(f)]


[back to notice text]

Question: Can a copyright owner find out the identity of the individual responsible for the allegedly infringing material?



Answer: The safe harbor provisions permit a copyright owner to subpoena the identity of the individual allegedly responsible for the infringing activities. [512(h)] Such a subpoena is granted on the condition that the information about the individual's identity will only be used in relation to the protection of the intellectual property rights of the copyright owner. [512(h)(2)(C)]


Topic maintained by Samuelson Law, Technology and Public Policy Clinic

Topic Frequently Asked Questions (and Answers)

Chilling Effects Clearinghouse -

disclaimer / privacy / about us & contacts