Intellectual Property Law

What are your legal rights if your copyright is infringed online?

If you as the copyright owner or exclusive licensee of the copyright material or either's agent reasonably believe a website is infringing copyright, you may issue a Takedown Notice of Copyright Infringement (Takedown Notice) to the "Designated Representative" of the Internet Service Provider (ISP) who is hosting the website.

A breach of your copyright may include:

❌ A website posting your copyright material without your permission to do so;

❌ A website using your copyright picture, song, film or other work; +/or

❌ A website allowing its users to illegally access or download your copyright material.

Upon receipt of your relevant + valid Takedown Notice the designated representative of the Internet Service Provider (ISP) will:

1️⃣ Immediately remove or block access to the infringing content; and then

2️⃣ Issue an Infringement Notice to the website owner or user who posted the material.

Do you already have a Court Order made by an Australian Court?

The Copyright Regulations 2017 (Comm.) contain 3 prescribed versions of Takedown Notice, one of which is to be used in the situation where the copyright material has already been found to be infringing by an Australian Court.

Embedded Lawyer-Logic™

Our Takedown Notice for Online Copyright Infringement [Australian Hosted Website] uses Embedded Lawyer-Logic™ which automatically adapts to prepare the relevant prescribed version of the Takedown Notice (from the 3 possible alternatives), as well as redirecting you to alternative Takedown procedures if the website is not hosted in Australia.

If you don't already have a Court Order

Step 1️⃣: Ask Nicely?

We recommend you contact the infringing website and make a direct request for the removal of the infringing material.

The website may not be aware they are breaching your copyright and once placed on notice, may promptly comply with your request.  

If the website refuses to take any action, then we recommend you ask the website owner:

Why do you think you have a legal right or permission to use the infringing material?

If the website owner fails to provide an adequate response, you can then consider whether to issue a Takedown Notice.

Step 2️⃣: Where is the alleged copyright infringing website hosted?

In order to determine which Internet Service Provider (ISP) is hosting the alleged copyright infringing website you can use one of the following free search services:

➲ whois.auda.org.au [*.au Domains Only] 🔎 Whois Lookup

➲ whoishostingthis? 🔎 Discover who is hosting any website

Step 3️⃣: Select the relevant Takedown Notice based on where the website is hosted

For websites hosted in:

⚖️ Australia ➲ Use our Takedown Notice for Online Copyright Infringement [Australian Hosted Website] to automatically generate the relevant Takedown Notice (from the 3 possible alternatives) prescribed by Schedule 2 of the Copyright Regulations 2017 (Comm.);

⚖️ USA ➲ Use our Digital Millennium Copyright Act (DCMA) Takedown Notice: DRAFT Only then always obtain professional legal advice to review your DRAFT directly from a USA Attorney before deciding whether to proceed; or

⚖️ Elsewhere ➲ We recommend you obtain professional legal advice directly from a lawyer with knowledge of the relevant foreign jurisdiction.

Credits:

This FAQ was written by James D. Ford GAICD | Principal Solicitor, Blue Ocean Law Group℠.

Important Notice:

This FAQ is intended for general interest + information only.

It is not legal advice, nor should it be relied upon or used as such.

We recommend you always consult a lawyer for legal advice specifically tailored to your needs & circumstances.

Australian Takedown Notice Checklist

1️⃣ Does the website hold a legally valid licence to use your copyrighted material?

Is it possible that your agent mistakenly issued a licence to use your copyright material on your behalf and failed to notify you?

✅ We recommend you always double-check by asking the website for a copy of its legally valid licence to use your copyright material (if they maintain they have one) before considering whether to issue a Takedown Notice.

2️⃣ Does a "fair dealing" exception apply?

Generally, use of your copyright material will be a "fair dealing" and not constitute an infringement of copyright if it can be classified as occurring for one of the following purposes:

✅ Research or study (refer below);

✅ Criticism or review;

✅ Parody or satire;

✅ Professional legal advice; or for

✅ Reporting the news.

Research or Study

The following additional factors are relevant in deciding whether the dealing for research or study purposes is fair:

⚖️ Purpose and character;

⚖️ Nature of the work;

⚖️ Possibility of obtaining work commercially;

⚖️ Effect of the dealing on the value of the work; and the

⚖️ Amount and substance copied relative to the whole (see table below).

3️⃣ If you are unsure whether a “fair dealing” exception will apply in your situation?

Always seek professional legal advice before sending a Takedown Notice especially if you are unsure regarding the application of the "fair dealing" exception.

4️⃣ Double-Check the details

You will need to double-check that you have provided sufficient information to enable the ISP's designated representative to take the required action to quickly identify + remove your copyright material:

For example: 

✅ The specific infringing URL(s); and

✅ A copy of your copyright material so that it can be easily identified.

If you don’t provide accurate information your Takedown Notice may not achieve the desired outcome + there will most likely be delays caused by requests for further + better information.

5️⃣ Send the Takedown Notice To the Internet Service Provider's (ISP) Designated Representative

The Internet Service Provider (ISP) will usually provide an email address for delivery of the notices.

If not, a hard copy of the Takedown Notice can be posted to the Internet Service Provider's (ISP) nominated address.

USA Hosted Website

For websites hosted in the USA a different process is applicable.

See DCMA Takedown Notice for Online Copyright Infringement.

Credits:

This FAQ was written by James D. Ford GAICD | Principal Solicitor, Blue Ocean Law Group℠.

Important Notice:

This FAQ is intended for general interest + information only.

It is not legal advice, nor should it be relied upon or used as such.

We recommend you always consult a lawyer for legal advice specifically tailored to your needs & circumstances.

Increasingly, Australian websites are hosted in the USA 

Just because a web domain is Australian (for example: *.com.au) does not automatically mean that the website content is hosted on an Australian hosting service.

Increasingly, Australian websites are hosted by Internet Service Providers (ISP) from overseas which are often based in the USA.

Q: Does where the website is hosted makes a difference?

A: Yes.

The Pirate Publisher: A Satirical Commentary on the state of copyright laws (pre 1911 treaty)

The Pirate Publisher—An International Burlesque that has the Longest Run on Record by Joseph Ferdinand Keppler, published as a centrefold in Puck, v. 18, no. 468 (1886 February 24).

A commentary on the state of copyright laws that, prior to a 1911 treaty, generally offered no protection to foreign authors and works.

In the cartoon, hordes of German, Norwegian, French, English, and American authors surround a publisher who republishes their newly-created works without attribution or royalties in a foreign country, as international law then allowed.

Of note is W. S. Gilbert, fifth from the right in the front row, as the many unauthorised or "pirate" productions of H.M.S. Pinafore caused him and Arthur Sullivan to première The Pirates of Penzance in America, to at least gain the initial profits there before anyone else could exploit it, and the title and subject of The Pirates of Penzance is sometimes - although somewhat dubiously in my opinion - considered to partially be a reference to the issue of pirate productions of their works. Other authors shown include Mark Twain, Tennyson, Robert Browning, F. C. Burnand, Émile Zola, Jules Verne, Victorien Sardou, Wilkie Collins, Oliver Wendell Holmes, Sr., as well as many others.

Australian Hosted Website "Fair Dealing" Defence v. USA Hosted Website "Fair Use" Defence

It appears that the state of copyright laws have generally improved to offer more protection to Copyright Owners since 1911.

However, as an example: Due to the 'Fair Dealing" v. "Fair Use" distinction between Australian and the USA, Australian Copyright Material today still may be used + hosted on USA ISP's in situations or for purposes which would breach Australian Copyright law.

See this article Fair Use v. Fair Dealing: How Australian Copyright Law Differs to learn more about the differences between the two concepts.

The following examples have been extracted from the above article to help explain what you can do with "Fair Use" on a US Hosted website that you cannot do with "Fair Dealing" on an Australian Hosted website:

adapting to new technologies

Fair Use is flexible enough to adapt to change.

"For example, in the US, Fair Use made it legal to use a VCR to record television at home in 1984.

In Australia, this wasn’t legal until parliament created a specific exception in 2006 – just about the time VCRs became obsolete."

artistic use

In Australia, it’s legal to use copyright material to create a parody or a critique, but not for purely artistic purposes.

"For example, Australian law makes it largely unlawful for a collage artist to reuse existing copyright material to create something new."

uses that document our experiences

"Media forms a big part of our lives, and when we share our daily experiences, we will often include copyright material in some way.

Without Fair Use, even capturing a poster on a wall behind you when you take a selfie could infringe copyright.

In a famous example, Stephanie Lenz originally had an adorable 29-second clip of her baby dancing to a Prince song removed from YouTube, due to her use of the song.

Stephanie Lenz was able to have the video reposted under US Fair Use law – but an Australian wouldn’t have that right."

technical and non-consumptive uses

"The internet we love today is built on Fair Use.

When search engines crawl the web, making a copy of every page they can in order to help us find relevant information, they’re relying on Fair Use.

Under Australian law, even forwarding an email without permission could be an infringement of copyright."

Credits:

This FAQ was written by James D. Ford GAICD | Principal Solicitor, Blue Ocean Law Group℠.

Important Notice:

This FAQ is intended for general interest + information only.

It is not legal advice, nor should it be relied upon or used as such.

We recommend you always consult a lawyer for legal advice specifically tailored to your needs & circumstances.

What is a counter-notice?

The owner of the Australian hosted website who you have alleged is infringing copyright by serving the Internet Service Provider (ISP) with a Takedown Notice may issue a Counter Notice claiming there has been a mistake and they dispute that the material infringes your copyright.

The Internet Service Providers (ISP) must then restore, or enable access to, the copyright material on its system or network; unless you provide notice, within 10 working days of receiving the Counter-Notice, that you or your agent have commenced legal proceedings seeking a Court order to restrain the activity that is claimed to be infringing.

The prescribed form of the Counter-Notice is contained within Schedule 2 of the Copyright Regulations 2017 (Comm.).

This means that you will need to issue legal proceedings if you want the material to be permanently removed.

It will then be up to the Court to determine whether the publishing of the material on the website is an infringement of copyright or whether there is a valid defence to the claim of infringement of copyright.

Important: If the website can prove that your Takedown Notice was unfounded then you may be liable for damages or other civil penalties.

Please also be aware that it may be a criminal offence to issue a Takedown Notice knowing that it is false or misleading.

Credits:

This FAQ was written by James D. Ford GAICD | Principal Solicitor, Blue Ocean Law Group℠.

Important Notice:

This FAQ is intended for general interest + information only.

It is not legal advice, nor should it be relied upon or used as such.

We recommend you always consult a lawyer for legal advice specifically tailored to your needs & circumstances.

Digital Millennium Copyright Act (DMCA) Takedown Notice Procedure

Just because a web domain is Australian (for example: *.com.au) does not automatically mean that the website content is hosted on an Australian hosting service.

Increasingly, Australian websites are being hosted by overseas service providers which are often based in the USA.

The Digital Millennium Copyright Act (DMCA) is U.S. legislation which prescribes the DCMA Takedown Notice + DCMA Counter-Notice procedures.

Under the Digital Millennium Copyright Act (DMCA) there is no prescribed form for the DCMA Takedown Notice.

Minimum requirements for a DMCA Takedown Notice

1️⃣ State that you hold a "good faith belief" that the use of the copyright material in such a fashion is not authorized by the copyright holder, the copyright holder's agent, or the law;

2️⃣ State that the information contained in the DCMA Takedown Notice is accurate and that you are authorized to act on the behalf of the exclusive copyright holder for the material in question;

3️⃣ Make all your statements contained within the DCMA Takedown Notice under penalty of perjury (a.k.a a sworn declaration) in a United States Court of law; and

4️⃣ Include your physical or electronic signature.

What does "under Penalty of Perjury" mean?

A sworn declaration (also called a sworn statement or a statement under penalty of perjury) is a document that recites facts pertinent to a legal proceeding. It is very similar to an affidavit but is not witnessed and sealed by an official such as a notary public. Instead, the person making the declaration signs a separate endorsement paragraph at the end of the document, stating that the declaration is made under penalty of perjury. In the USA, the crime of perjury is a felony.

Example: Endorsement paragraph

I declare (or certify, verify, or state) under penalty of perjury that the above is true and correct. Executed on (date).

Be Specific + Accurate

You should make sure that you are specific and accurate when outlining the material you wish to have removed.

This is extremely important as you are making statements under penalty of perjury, but also due to the following practicalities:

✅ The volume of Digital Millennium Copyright Act (DMCA) Takedown Notices issued in the US is high; and

❌ Incomplete or inaccurate submissions are routinely rejected.

Australian "Designated Representative" ➲ USA "Copyright Agent"

Under the Digital Millennium Copyright Act (DMCA) the term "designated representative" we use in Australia is replaced by an equivalent term "Copyright Agent".

Therefore, you should look for the nominated Copyright Agent when you search for the person responsible for Digital Millennium Copyright Act (DMCA) Takedown Notices on any U.S. based website hosting service.

Australian Hosted Website

For websites hosted in Australia a different process is applicable.

See Takedown Notice for Online Copyright Infringement.

Credits:

This FAQ was written by James D. Ford GAICD | Principal Solicitor, Blue Ocean Law Group℠.

Important Notice:

This FAQ is intended for general interest + information only.

It is not legal advice, nor should it be relied upon or used as such.

We recommend you always consult a USA Attorney for legal advice specifically tailored to your needs & circumstances.

DMCA Takedown Notice Checklist

1️⃣ Does the website hold a legally valid licence to use your copyright material?

Is it possible that your agent mistakenly issued a licence to use your copyright material on your behalf and failed to notify you?

✅ We recommend you always double-check by asking the website for a copy of its legally valid licence to use your copyright material (if they maintain they have one) before considering whether to issue a Digital Millennium Copyright Act (DMCA) Takedown Notice.

2️⃣ Does a "Fair Use" exception apply?

"Fair Use" is a concept used in the US copyright law.

It is a much more flexible, open-ended concept and does not apply in Australia.

In Australia, we use a more limited concept called "Fair Dealing".

See this FAQ: Australian Hosted Website v. USA Hosted Website: Does where the website is hosted make a difference? to learn more about the differences between the two concepts.

The following has been extracted from the Stanford Article, Measuring Fair Use: The Four Factors

The following 4 (arguably 5) factors are relevant in deciding whether the dealing is fair using a Balancing Test:

➲ The Transformative Factor: Purpose and Character of the Use,

➲ The Nature of the Copyrighted Work;

➲ Effect of the Dealing on the Potential Market/value of the work;

➲ Amount and substance copied relative to the whole; and the

➲ The "Fifth" Fair Use Factor: Are you good or bad?

3️⃣ Always ensure you obtain legal advice from a practising USA Attorney regarding whether a “Fair Use” exception will apply in your situation?

4️⃣ Double-Check the details

You will need to double-check that you have provided sufficient information to enable the Internet Service Provider's (ISP) Copyright Agent to take the required action to quickly identify + remove your copyright material:

For example: 

✅ The specific infringing URL(s); and

✅ A copy of your copyright material so that it can be easily identified.

If you don’t provide accurate information your Digital Millennium Copyright Act (DMCA) Takedown Notice may not achieve the desired outcome + there will most likely be delays caused by requests for further + better information.

5️⃣ Send the DMCA Takedown Notice To the Internet Service Provider's (ISP) Copyright Agent

The Internet Service Provider (ISP) will usually provide an email address for the delivery of notices.

If not, a hard copy of the Digital Millennium Copyright Act (DMCA) Takedown Notice can be posted to the Internet Service Provider's (ISP) nominated address.

Australian Hosted Website

For websites hosted in Australia a different process is applicable.

See Takedown Notice for Online Copyright Infringement.

Credits:

This FAQ was written by James D. Ford GAICD | Principal Solicitor, Blue Ocean Law Group℠.

Important Notice:

This FAQ is intended for general interest + information only.

It is not legal advice, nor should it be relied upon or used as such.

We recommend you always consult a practising USA Attorney for legal advice specifically tailored to your needs & circumstances.

What is a Digital Millennium Copyright Act (DMCA) Counter-Notice?

The owner of the USA hosted website who you have alleged is infringing copyright by serving the Internet Service Provider (ISP) with a DMCA Takedown Notice may issue a DMCA Counter-Notice claiming there has been a mistake and they dispute that the material infringes your copyright.

The Internet Service Providers (ISP) must then restore, or enable access to, the copyright material on its system or network; unless you provide notice, within 10-14 business days of receiving the DMCA Counter-Notice, that you or your agent have commenced legal proceedings seeking a Court order to restrain the activity that is claimed to be infringing.

The form of the DMCA Counter-Notice is suggested by the DMCA statute, which can be found at the U.S. Copyright Office's official website: https://www.copyright.gov.

This means that you will need to issue legal proceedings if you want the material to be permanently removed.

It will then be up to the Court to determine whether the publishing of the material on the website is an infringement of copyright or whether there is a valid defence to the claim of infringement of copyright.

Important: If the website can prove that your DMCA Takedown Notice was unfounded then you may be liable for damages or other civil penalties.

Please also be aware that it is a Federal Crime to swear a false statement of good faith in a DMCA Takedown Notice (please refer to the minimum requirements above regarding making your statements under penalty of perjury).

Therefore, we strongly recommend you always have a USA Attorney review your DRAFT before you decide whether to proceed.

Credits:

This FAQ was written by James D. Ford GAICD | Principal Solicitor, Blue Ocean Law Group℠.

Important Notice:

This FAQ is intended for general interest + information only.

It is not legal advice, nor should it be relied upon or used as such.

We recommend you always consult a practising USA Attorney for legal advice specifically tailored to your needs & circumstances.