Advanced Copyright Issues on the Internet - Fenwick & West LLP

the public interest, not to develop electronic voting technology. 2011 Accordingly, the court ruledthat “there is no genuine issue of material fact that Diebold, through its use of the DMCA,sought to and did in fact suppress publication of content that is not subject to copyrightprotection [because of the fair use doctrine.]” 2012The court then turned to whether Diebold knowingly materially misrepresented thatpublication of the email archive constituted copyright infringement. The parties disputed themeaning of the phrase “knowingly materially misrepresents.” The plaintiffs argued that apreliminary injunction standard should be applied – that the court should conclude that Dieboldviolated Section 512(f) if it did not have a “likelihood of success” on the merits of the acopyright infringement claim when it sent the DMCA letters. Diebold contended that the courtshould apply a type of Federal Rule of Civil Procedure 11 standard and thus conclude thatDiebold did not violation Section 512(f) unless sending the DMCA letters was “frivolous.” 2013Acknowledging that it was facing an issue of first impression, the court concluded thatneither proposed standard was appropriate. A requirement that a party have an objectivelymeasured likelihood of success on the merits in order to assert claims of copyright infringementwould impermissibly chill the rights of copyright owners. On the other hand, in requiring ashowing of “knowing material misrepresentation,” Congress explicitly adopted a standard fromRule 11, which contains a variety of other requirements that are not necessarily coextensive withthose of Section 512(f). 2014Instead, the court concluded that the statutory language was sufficient clear on its factand does not require importation of standards from other legal contexts. Citing Black’s LawDictionary, the court held that “knowingly” means that a party actually knew, should haveknown if it acted with reasonable care or diligence, or would have had no substantial doubt had itbeen acting in good faith, that it was making misrepresentations. “Material” means that themisrepresentation affects the ISP’s response to a DMCA letter. 2015Under this standard, the court concluded as a matter of law that Diebold knowinglymaterially misrepresented that the plaintiffs infringed Diebold’s copyright interest, at least withrespect to the portions of the email archive clearly subject to the fair use exception:No reasonable copyright holder could have believed that the portions of the emailarchive discussing possible technical problems with Diebold’s voting machineswere protected by copyright, and there is no genuine issue of fact that Dieboldknew – and indeed that it specifically intended – that its letters to OPG andSwarthmore would result in prevention of publication of that content. Themisrepresentations were material in that they resulted in removal of the content2011 Id. at 1203.2012 Id.2013 Id. at 1204.2014 Id.2015 Id.- 436 -