New DMCA Designated Agent Requirements Effective December 2016

Intellectual Property Alert | 12.06.16

On November 1, 2016, the United States Copyright Office published an amendment to 37 CFR § 201.38 that changes the registration requirements for Designated Agents under the Digital Millennium Copyright Act.  Effective December 1, 2016, entities that wish to avail themselves of the safe harbor provisions of the DMCA must register their Designated Agents through the new online registration system.  Entities that registered Designated Agents through the previous paper registration regime have until December 31, 2017 to re-register through the online system.  Failure to register through the new online system by the applicable deadline will result in loss of DMCA safe harbor protection.  In addition, failure to renew a Designated Agent's online registration every three years will result in loss of DMCA safe harbor protection.

The safe harbor is created by section 512 of the DMCA.  Subject to certain conditions, it gives Internet service providers and website operators immunity against liability for copyright infringement with respect to "information residing on systems or networks at the direction of users."  In order to qualify for this immunity, an entity must identify a Designated Agent to receive copyright infringement notices, must provide the Designated Agent's contact information on the entity's website, and must register the Designated Agent with the Copyright Office, among other conditions. 

Prior to December 2016, an "interim" registration process was in place that operated using paper records.  The Copyright Office's new directory system replaces this antiquated paper-based system, which was cumbersome and expensive.  Benefits of the new online directory system include improved directory search capabilities and reduced cost for the initial registration ($6 for online registration vs. $105 for paper registration).  However, under the Copyright Office's new online system, a designation "expire[s] and become[s] invalid" three years after the initial registration unless the service provider renews the designation by either amending it to correct or update information or resubmitting the registration information without amendment.  37 CFR § 201.38(a)(4).  This new "periodic renewal" requirement creates a significant risk of liability should a registration lapses due to inadvertence or neglect.  To address this risk, entities and their counsel should set up internal processes to track and meet renewal dates to ensure continuous protection.

All required fields in the online registration system must be completed in order for the designation to be registered with the Copyright Office. The person designating the agent with the Copyright Office must provide the following information for administrative purposes in addition to the information required by section 512(c)(2):

(i) The first name, last name, position or title, organization, physical mail address (street address or post office box), telephone number, and email address of two representatives of the service provider who will serve as primary and secondary points of contact for communications with the Office; and

(ii) A telephone number and email address for the service provider for communications with the Office.

More information regarding the new registration requirements and the transition period is available from the Copyright Office here, and you can access the new online registration portal at https://dmca.copyright.gov/osp/login.html.