F OR P UBLICATION



### UNIT E D ST AT E S CO URT O F APPE AL S FO R T H E NINT H CIRCUIT

S T E P H A N I E L E N Z , Plaintiff-Appellee/ Cross-Appellant

,

v

.

U N I V E R S A L M U S I C C O R P .; U N I V E R S A L M U S I C P U B L I S H I N G I N C

. ; U N I V E R S A L M U S I C P U B L I S H I N G G R O U P I N C ., Defendants-Appellants/

Cross-Appellees

. Nos. 13-16106 13-16107

D.C. No. 5:07-cv-03783- J F

ORDER AND AMENDED OPI NI ON

A ppeal from the United States District Court for the Northern District of California J eremy D. F og e l, District J udg e , Presiding

Arg ued and Submitted J uly 7, 2015—San F rancisco, California

F iled September 14, 2015 Amended March 17, 2016

B efore: Richard C. Tallman, Milan D. Smith, J r., and Mary H. Murg u ia, Circuit J udg es.

Order; O pinion by

J udg e Tallman; Partial Concurrence and Partial Dissent by J udg e Milan D. Smith, J r.L E N Z V

. U N I V E R S A L M U S I C 2

SUMMARY *

Digital Millennium Copyright Act

The panel filed (1) an order amending its p r ior opinion and dissent and deny ing ap p e l lants’ petition for panel rehearing a

nd cross-appellant’s petitions for panel rehearing and r e hearing en banc; a n d (2) an amended opinion a nd dissent in an action under the Dig ital Millennium Copy rig ht Act.

The pan e l affirmed the district court’s denial of the parties’ cross-motions for summary judg ment on a claim that the defendants violated 17 U.S.C. § 512(f) by misrepresenting in a takedown notification that the p laintiff’s h o m e v i d eo constituted an infring ing use of a porti o n o f a Prince composition.

The panel held that the DCMA requires copy rig ht h olders
to consider fair use before sending a takedo w n n o t ification, and that there was a triable issue as to whether the defendant
copy rig ht h olders formed a subject i v e go od faith belief that plaintiff’s use was not authoriz ed by law

. Reg arding g ood faith belief, the panel held that the plaintiff could proceed under an actual k

nowledg e theory

. The p anel held that the willful blindness doctrine may be used to determine whether

a copy rig ht holder knowing ly materially misrepresented that it held a g ood faith belief that the offending activity was not

a fair use. The plaintiff h ere, however, coul d n o t p r oceed to trial under a willful blindness th e o r y b ecause she did not

* T h is su m m ary co n stitu

tes n o part o f th e o p in io n o f th e co u rt. It h as b een p rep ared b y

co u rt staf

f f o r th e co n v en i en ce o f

th e read er.L E N Z V

. U N I V E R S A L M U S I C 3

s h o w that the defendants subjectively b elieved there w as a hig h probability that the video constituted fair use. The panel also held that a p l a i n t i ff may seek recovery of nominal damag es for an injury incurred a s a result of a § 5 1 2 (f) misrepresentation.

J udg e M. Smith c o n curred in p art and d i s s e nted in part. Dissenting from Part I V.C of the majority opinion, addressing
g ood faith belief, he w rote t h a t t here was not a triable issue and that the p laintiff was entitled to summary judg ment. He
wrote that he ag reed with the majority ’s conclusion that the DCMA requires copy

rig h t holders to c onsider whether
p otentially infring ing material is a fair use before is s u i n g a takedown n o t i ce, but he w ould clarify that § 512(f)’s requirement that a misrepresentation be knowing is satisfied when a party knows that it is ig norant of the truth or falsity o f the misrepresentation. He also w ould hold that d ef e n d ants’ actions were insufficient as a matter of l aw to form a subjective g ood-faith b elief that plaintiff’s video wa s n ot a fair use.

COUNSEL

Kelly M. Klaus (arg

ued) and Meli n d a L eMoine, Mung er, Tolles & O lson L L P, L os Ang eles, California, for Defendants-Appellants/Cross-Appellees.

Cory nne M cSherry (arg

ued), Cindy Cohn, Kurt O psahl, Daniel K. Naz er, and J ulie Samuels, Electronic F r o ntier F oundation, San F rancisco, California; Ashok R am ani, Michael S. Kwun, and Theresa H. Ng uy en, Keker & Van Nest L L P
, San F rancisco, California, for PlaintiffAppellee/Cross-Appellant.L E N Z V

. U N I V E R S A L M U S I C 4

Steven F abriz io and Scott Wil k e n s , J enner & B lock L L P, W a shing ton, D.C., for A micus Cur i a e Motion Picture Association of America, I nc.

J ennifer Pariser, O f Counsel, Recording I ndustry Association of A merica, W ashing ton, D.C.; Cy nthia Arato, Marc I sserles, and J eremy L icht, Shapiro, Arato & I sserles L L P, New York, New York, for A micus Curiae Recording I ndustry Association of America.

J oseph Gratz
, Durie Tang ri L L P, San F rancisco, California, for A mici Curiae Goog le I n c., Twitter I nc., and Tumblr, I nc.

Marvin Ammor i and L avon Ammori, Ammori Group, W a shing ton, D.C., for Amicus Curiae Automatic, I nc.

J ulie Ahrens a

nd Timothy Greene, Stanford L a w School Center for I nternet and Society

, Stanford, California, for Amici Curiae Org aniz ation for Transform a t i v e W orks, Public Knowledg e, and I

n ternational Documentary Association.

Catherine R. Gellis, Sausalito, California, for Amicus Curiae Org a niz ation for Transformative W orks.

ORDER

The o pinion a

nd dissent filed on September 14, 2015 a nd publish e d at 8 01 F

. 3d 1126 a re h ereby a mended. The amended opinion and dissent are filed concurrently w ith this order.

W ith these amendments, the panel has voted to deny Universal’s p etition for p anel rehearin g a nd L enz ’ s petitionL E N Z V

. U N I V E R S A L M U S I C 5

for panel rehearing

. J udg e Tallman a nd J udg e Murg u ia have voted to deny L enz ’s petition for rehearing e n banc, a nd J udg e M. Smith h a s v o t ed to g rant L enz ’s petition for rehearing en banc.

The ful l c ourt has been advised of the petition for rehearing en banc. N o judg e has requested a vote on whether to rehear the matter en banc. F e d. R. App. P. 35(b).

Universa l ’s petition for panel rehearing is DENIED

. L enz ’s p e t ition for panel rehearing or rehearing en banc is DENIED

. No future petitions for panel rehearing o r p e titions for rehearing en banc will be entertained.

OP INION

TAL L MAN, Circuit J u dg e:

Stephanie L enz filed suit under 17 U.S.C. § 512(f)—part of the Dig ital Millen n i um Copy rig ht Act (“DMCA”)—
ag ainst Universal Music Corp., Universal Music Publishing

, I nc., and U niversal Music Publishing Group ( collectively “Universal”). S h e a lleg es Universal misrepresented in a takedown notificati o n t h at her 29-second home video (the “video”) constituted a

n infring ing use of a portion of a composition by the Artist known as Prince, which Universal insists was unauthoriz ed by the law. Her claim boils down to

a quest i o n o f whether copy rig ht h olders have been abusing the ex tr a judicial takedown procedures provided for in the DMCA by decl i n i n g to first evaluate w hether the c ontent qualifies as f

a ir u se. W e hold that the statute requires
copy rig ht holders to consider fair use before sending aL E N Z V

. U N I V E R S A L M U S I C 6

takedown notification, and that in this case, there is a triable issue as to whether the copy rig ht holder formed a subjective
g ood f aith belief that the use was not authoriz ed by law. W e affirm the denial of the par t i es’ cross-motions for summary judg ment.

I

F ounded in May 2005, YouTube (now owned by Goog le) operates a website that hosts us e r

- g enerated content. About Yo u T ube

, YouTub e

. c o m , h t t

p s : / / w w w

. y o u t u b e

. c o m / y t / a b o u t / (last visited September 4, 2015). Users upload vide os directly to the w ebsite. Id. On F ebruary 7, 2007, L enz uploaded t o Y o uTube a 29-second home video of h er two
y oung c hildren in the family kitchen dancing to the song Let’s Go Crazy by Prince. 1 Available at https://www.y outube.com/ watch? v=N1Kf J HF W lhQ (last visite d S eptember 4, 2015). She titled the video “‘L et’s Go Craz y ’ # 1.” About four seconds into the video, L enz asks h er thirteen month-old son “what d o y ou think of the music? ” after which he bobs up a nd down while holding a push toy

.

At the time L e nz posted the video, U niversal was Prince’s publishing administrator res ponsible for enforcing his
copy rig hts. To accomplish this objective wi t h r espect to YouTube, Robert Allen, U niversal’s head of business affairs, assig ne d Sean J ohnson, an a ssistant in the leg al department,
to m o n i t or YouTube on a d aily basis. J ohnson searched YouTube for Prince’s song s and reviewed the video posting s

1 Yo u T u b e is a f o r- p ro f it co m p an y t h a t g e n e r a t e s rev en u es b y s ellin g ad v ertisin g

. If u sers ch o o se to b eco m e “ co n ten t p artn ers” w ith Y o u T u b e, th ey sh are in a p o rtio n

o f th e ad v ertisin g rev en u e g en erated . L en z is n o t

a co n ten t p artn er an d n o ad v ertisem en ts ap pear n ex t to th e v id eo

.L E N Z V

. U N I V E R S A L M U S I C 7

returned by his onli n e search query

. W hen reviewing such videos, he evaluated whether the y “ embodied a Prince composition” by making “sig n ificant use of

. . . the composition, specifically if t h e song was recog niz able, was in a sig n ificant portion o f the video or was the focus of the video.” According to Allen, “ [t] he g eneral g uidelines are that

. . . we review the video to ensure that the co m p o s i t i o n was the focus and if it was we then notify YouTube that the video should be removed.”

J ohnson contrasted videos that met this criteria to those “that may have had a second or less of a Prince song , literally

a o ne l ine, half line of Prince song ” or “were shot in incredibly n oisy environ ments, such as bars, where there could be a Prince song play ing deep in the backg round

. . . to the point where if there was any Pr i n ce composition embodied

. . . in those videos that it was disto r t ed bey ond reasonable r ecog nition.” None of the video evaluation
g uidelines ex plicitly include consideratio n o f the fair use doctrine.

W h en J o h n s on reviewed L enz ’s video, he recog niz ed Let’s Go Crazy immediately . He noted that it play e d loudly in the backg round throug hout the entire video. B ased o n these detail s , the video’s title, a nd L enz ’s q

uery during the video asking if her son liked the song , he co n cluded that Prince’s song “was very

much the focus of the video.” As a result, J ohnson d ecided the video should be inc luded in a takedown notification sent to Y ouTube that listed more than 20 0 YouTube videos Universal b elieved to be makingL E N Z V

. U N I V E R S A L M U S I C 8

u n authoriz ed use o f Prince’s song s. 2 The notice include d a “g ood f aith belief” statement as r eq u i r e d by 17 U .S.C. § 512(c)(3)(A)(v): “W e have a g ood faith belief that the above-described activity is n o t authoriz ed by the copy rig ht owner, its ag ent, or the law.”

After r e ceiving the takedown notification, YouTube removed the video and sent L en z a n email on J une 5, 2007, notif y i n g h e r of the removal. On J une 7, 2007, L enz attempted to res t ore the video b y sending a c ounterno t i f ication to YouTube pursuant to § 512(g ) (3). After YouTube provided this counter-notification to Universal per § 512(g )(2)(B ), Universal protested the video’s reinstatement because L e n z failed to properly acknowledg e that her
statement w as made under penalty of perjury , as required by § 512(g )(3)(C). Universal’s protest reiterated that the video constituted infring ement b ecause there was no record that “either she or YouTube were ever g ranted licenses to reproduce, distribute, p ublicly perform or othe r w i se ex ploit the Composition.” The protest made no mention of fair u se. After obtaining pro bono counsel, L enz sent a second counter-notification o n J u ne 27, 2 0 07, which res u l t e d in YouTube’s reinstatement of the video in mid-J uly

.

II

L enz filed the instant action o n J uly 24, 2007, and her Amended Complaint on Aug ust 15, 2007. After th e d i s t rict
court dismissed her tortious interference claim and request for

2 “ [T ]h e p arties d o n o t d i sp u t e t h at L en z u sed co p y

rig h ted m aterial in h er

v id eo o r th at Un iv ersal is th e tru e ow n er of P rin ce’ s co p y

rig h ted m u sic.” Len z v. Un i versa l Mu sic C o rp

. , 5 7 2 F. Su

p p

. 2 d 1 1 5 0
, 1 1 5 3

– 5 4 (N.D. Cal. 2 0 0 8 ).L E N Z V

. U N I V E R S A L M U S I C 9

declaratory relief, L enz filed her Second Amended Complaint

on April 1 8
, 2008, alleg ing only a claim for misrepresentation under § 512(f). T he district c ourt d enied Universal’s motion to dismiss the action.

On F ebruary 25, 2010, the distri ct court g ranted L enz ’s partial motion fo r s u m mary judg ment on Universal’s six affirmative defenses, including the third affirmative defense that L enz suffered no damag e s

. B o th parties subsequently

mo v ed for summary judg ment on L enz ’s § 512(f) misrepr e s e n t ation claim. On J anuary 24, 2013, the district court denied both motions in an order that is now before us.

The district cour t c e rtified its summary judg ment order for interlocutory appe a l under 28 U.S.C. § 1 2 92(b), a nd stay ed proceeding s in district court pending resolution of the appeal. W e g ranted the parties p ermission to bring an interlocutory

appeal.

III

W e review de novo the district court’s denial of summary judg ment. W hen d o ing so, we “must determine whether the evidence, viewed in a lig ht most favorable to the non-moving party , presents any g enuine issues of material fact a nd whether the district court correctly applied the law.” W arren

v. City of Carlsbad

, 5 8 F

. 3d 4 3 9
, 4 41 ( 9th Cir. 1 995). On

cross- m o t ions for summary judg ment, we evaluate e ach motion independently

, “g iving the nonmoving part y in e ach instance the benefit of all reasonable inferences.” ACLU v

. City of Las Vegas

, 333 F .3d 1092, 1097 (9th Cir. 2003).

W h en e valuating an interlocutory appeal, we “may address any issue fairly include d within the certified orderL E N Z V

. U N I V E R S A L M U S I C 10

because i t i s the order that is a ppealable, and not the controlling question identified by the district court.” Y amaha Motor Corp., U.S.A. v. Calhoun

, 5 16 U.S. 199, 2 0 5 (1 9 9 6 ) (emphasis in o rig inal) (quotation omitted). W e may therefore “address those issues material to the order from which appeal has been taken.” In r e Cinematronics, Inc.
, 916 F .2d 1444, 1449 (9th Cir. 1990) (emphasis in orig inal) (permitting appellate review of a ruling issued prior to the order c ertified for interlocutory

appeal).

IV

Effective o n October 2 8, 1998, the DMCA added new

s e c t ions to e x isting copy rig ht law by enacting five Title s , only one of which is r elevant here: Title I I —Online Copy rig ht I nfring e ment L iability L i m i tation Act—now codified in 17 U.S.C. § 5 1 2. Sections 512(c), (f), and (g ) a re at the heart of the parties’ dispute.

A

Se ct i o n 512(c) permits service providers, e .g ., YouTube

or Goog le, to avoid copy rig ht infring ement liabilit y for storing users’ content if—am ong other requirements—the service provider “ex pedi t iously ” removes or disables access to the conte n t after receiving notification from a copy rig ht holder that the co n t e nt is infring ing

. 17 U.S.C. § 512(c). Section 51 2 ( c )(3)(A) sets forth the elements that such a “takedown notification” must contain. These elements include identification of the copy rig h ted work, identification of the a lleg edly in f

r ing ing material, and, critically

, a statement that the copy

rig ht holder believes in g ood faith the infring ing material “is not a uthoriz ed by the copy

rig h t owner, its ag ent, or the law.” Id. § 5 1 2 ( c ) ( 3)(A). The proceduresL E N Z V

. U N I V E R S A L M U S I C 11

outlined in § 512(c) are referred to as the DMCA’s “takedown procedures.”

To avoid liability for d i s abling or removing content, the service provider must not i f y the user of the takedown. Id. § 512(g )(1)–(2). The user then has the option of restoring the
content by sendi ng a counter-notification, which must include

a statement of “g ood faith b elief that the m a t e rial was removed or disabled a s a r e s u l t of mistake o r misidentification . . . .” Id. § 512(g )(3)(C). Upon receipt o f

a valid counter-notification, the service p rovider must inform the copy rig ht holder of the c ounter-notification a nd r estore the content w i t hin “not less than 10, nor more than 14, b u s iness day s,” unless the service provider r eceives noti c e that the c opy

r ig ht holder has filed a l a w suit ag ainst the user seeking to restrain the u ser’s i n f r i n g ing behavior. Id. § 512(g ) (2)(B )–(C). The procedures outlined in § 512(g ) a re referred to as the DMCA’s “put-back procedures.”

I f an entity abuses the DMCA, it may be subject to liability under § 512(f). That section provides: “Any person who kn owing ly materially misrepresents under this section—(1) that material o r activity is infring ing

, or (2) that material or activity was removed o r disabled by mistake o r misidenti f

i c at i o n , shall b e liable f

or any damag es

. . . .” Id. § 5 1 2 ( f )

. Subsection (1) g e nerally applies to copy rig ht holders a n d s u bsection (2) g enerally a p p lies to users. Only subsection (1) is at issue here.

B

W e must first determine w h e t h e r 17 U .S.C. § 5 12(c)(3)(A)(v) require s c opy rig ht holders to consider whether the potentially infring ing material is a fai r u s e o f aL E N Z V

. U N I V E R S A L M U S I C 12

copy rig ht u nder 17 U. S .C. § 107 before issuing a takedown

n otification. Section 5 12(c)(3)(A)(v) r equires a takedo w n notification to include a “statement that the complaining party has a g o od faith b e lief that t h e u s e of the material in the

manner complained of is not authoriz ed b y the copy rig ht
owner, its ag ent, or the law.” The parties dispute whether fair

use is an authoriz ation under the law as contemplated by the statute—which is so far as we know an issue of first impression in any circuit across the nation. “Canons o f statutory construction dictate that if the lang uag e of a statute is clear, we look no further than that lang uag e in d etermining the statute’s meaning

. . . . A court looks to leg islative history only if the statute is unclear.” United States v. Lewis
, 67 F .3d 225, 228–29 (9th Cir. 1995) ( c itations omitt ed). W e ag r ee with the d istrict court and hold that the statute unambig uously contemplates fair use as a use authoriz ed by the law.

F air use is not just ex cused by the law, it i s wholly authoriz ed by the law. I n 1976, Cong ress codif i ed the application of a four-step test for determining the fair use of
copy rig hted works:

Notwithst a nding the p rovisions of sections 106 and 106A, the fair use of a co p y r i g hted work

, . . . for purp o s e s such as criticism, comment, news reporting

, teaching (including

m u l t i p l e c o p i e s f

o r c l a s s r o o m u s e )

, s c h o l a r s h i p , o r r e s e a r c h

, i s n o t a n infringement of copyright

. I n determining wheth e r the use made of a work in any particular c ase is a fair use th e factors to be considered shall include—L E N Z V

. U N I V E R S A L M U S I C 13

(1) the purpose and c haracte r of the use, including whet h e r such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copy rig hted work;

(3) the amount a

nd sub s t a ntiality of the portion used in relation to the copy rig hted work as a whole; and

(4) the effect of the use upon the potential market f o r or value of the copy rig hted work.

The fact that a work is unpublished shall not itself bar a finding of f

a ir use if such find i n g is made upon c onsideration of a l l t h e above factors.

17 U.S.C. § 1 07 (emphasis a dded). The statute ex plains that the fair use of a copy

rig hted work is permissible b ecause it is a non-infring ing use.

W h ile Title 17 of the United States Code (“Copy rig hts”) does not define the term “authoriz e” or “authoriz ed,” “[ w] h en there is no indication that Cong ress intended a specific leg al meaning for the t e r m , the court may look to sources such a s dictionaries for a definition.” United State s v

. Mohrbacher

, 182 F

. 3d 1041, 1048 (9th Cir. 1999). B lack’s L a w Dictionary defines “authoriz e” as “ 1

. T o g ive leg al authority ; to empower” and “2. To formally approve; to sanction.” Authorize

, B lack’s L aw Dictionary (10th ed. 2014). B ecause 17 U.S. C

. § 107 both “empowers” and “formally approves”L E N Z V

. U N I V E R S A L M U S I C 14

the use of copy

rig hted material if the u se constitutes fair u se, fair u se is “authoriz e d b y the law” w ithin the meaning o f § 512(c). See also 17 U.S.C. § 1 0 8 ( f )(4) (“Nothing in this section in any way a ffects the right of fair use as provided b y section 107 . . . .” (emphasis added)).

Universal’s sole tex tual arg u ment is that fair use is not “authoriz e d by the law” because it is an a f f i r mative defense that ex cuses otherwise infring ing conduct. Uni v e r sal’s interpretation is incorrect a s it c onflates two different concepts: an affirmative d efense that is labeled as such due to the procedural posture of the case, a n d an affirmative defense
t hat ex c uses impermissible conduct. Supreme Co u r t precedent squarely supports the conclusion that fair use does
not fall into the latter camp: “[ A ] ny one w ho

. . . makes a fair

use of the work is not an infring e r o f t h e copy r ig ht 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 ex pressly authoriz es fair u se, labeling it as an affirmative defense th a t ex cuses c onduct is a misnomer:

Althoug h the traditional approach is to v iew “fair use” as an affirmative d efens e , t his writer, speaking only for himself, i s of the opinion that it is better v iewed as a r i ght
g ranted by the Copy

rig ht A ct o f 19 7 6

. O ri ginally

, as a judicial d octrine without an y statutory basis, fair use w as an infr ing ement that was ex c u s e d—this is presumably why it

was treated as a defense. A s a statutory doctrine, however

, f

air use is not an infring ement. Thus, since the pa s sag e of theL E N Z V

. U N I V E R S A L M U S I C 15

1 976 A ct, fair use should no long er b e considered an infring ement to be e x cused; instead, it is log ical to v iew fair u se a s a rig ht. Reg ardless of h o w f

air use is viewed, it is

c l e a r that the b urden of proving fair use i s alway s on the putative infring e r.

Bateman v. Mnemonics, Inc. , 79 F .3d 1 532, 1542 n.22 (11th Cir. 1 996) (Birch, J .). We ag ree. Cf. L y dia Pallas L oren, Fair Use: An A

ffirmative D efense?

, 90 W ash. L

. Rev. 685, 688 (2015) (“Cong r e ss did not intend fair use t o b e an affirmative d efense—a d efense, y es, but not a n affirmative defense.”). F a ir u s e is therefore d istinct from affirmative defenses where a use infring es a c o py rig ht, but there is no liability due to a v alid ex c u se, e

. g ., misuse of a copy rig ht, Practice Management Information Corp. v. A m erican Medical A ss’n
, 121 F

. 3d 5 16, 520 (9th Cir. 1997), and laches, Danjaq LLC v. Sony Corp.
, 263 F .3d 9 4 2
, 9 50–51 (9th Cir. 2001).

Universal concedes it must g ive due consideration to other uses a

uthoriz ed by law such a s comp u l s ory licenses. The introductory lang uag e in 17 U.S.C. § 112 for compulsory licenses closely mirrors that in the fair u se statute. Compare 17 U.S.C. § 1 12(a)(1) (“Notwithstanding the provisions o f

s e c t i o n 106,

. . . it is not an infring ement of copy rig ht fo r a transmitting org aniz a tion entitled to transmit to the public a performance o r d i s p l a y o f a work

. . . to make no more than

one copy o r phonorecord of a particular transmission prog ram embody ing the performance or display

. . . .”), with id. § 107 (“Notwithstanding the provisions of sections 106 and 1 06A, the fair use of a copy

rig hted work . . . is not an infring ement of copy rig ht.”). That fair use may be labeled as an affirmative defense d u e t o the procedural posture of the c ase is noL E N Z V

. U N I V E R S A L M U S I C 16

different than labeling a license an affirmative defense f or the

same reason. Compare Campbell v. Acuff-Rose Music, Inc.
, 510 U.S. 569, 573 & n.3, 590 (1994) (stating that “fair u se is

an a f f i rmative defense” where the district court converted a motion to dismiss based o n fair us e i n t o a motion for
summary judg ment), with A& M Records, Inc. v

. Napster, Inc.
, 239 F .3d 1004, 1025–26 (9th Cir. 2001) ( “Napster contends that

. . . the district court improperly rejected valid affirmative defenses of

. . . implied license

. . . .”). T h u s, Universal’s arg ument that it need not consider f ai r use in addition to compulsory

licenses ring s hollow.

Even if, as Universal urg e s, f ai r u s e is classified as an

“ affirmative defense,” we hold—for the purposes of the DMCA—fair u se is uniquely situated in copy rig ht law so as
to be treated differently than traditional affirmative defenses. W e conclude that b ecause 17 U .S.C. § 107 created a ty pe o f

n on-infring ing use, fair use is “ a uthoriz ed by the law” and a copy rig ht holder must consider the ex is tence of fair use before sending

a takedown notification under § 512(c).

C

W e must nex t determine if a g enuine issue of m a t e r i al fact ex ists as to whether Universal knowing ly misrepresented that i t had formed a g o od faith belief the video did not constitute fair use. This inquiry lies not in whethe r a c ourt would adjudg e the video as a fair use, but whether Universal formed a g oo d f

a i t h belief that it was n ot. Contrary to the district court’s holding

, L en z may proceed under an actual knowledg e theory , but not under a willful blindness theory

.L E N Z V

. U N I V E R S A L M U S I C 17

1

Thoug h L enz a

rg ues Universal should have known the video qualifies for fair use as a matter of law, w e have already decided a copy rig h t h older need only form a subjective g ood f

aith belief that a use is not authoriz ed. Rossi v. Motion Picture Ass’n of Am. I n c. , 391 F .3d 1000 (9th Cir. 2004). I n Rossi
, we ex plicitly held that “the ‘g o o d faith belief’ requirement in § 5 1 2(c) (3 ) ( A)(v) encompasses a subjective, rather than objective standard,” and we observed that “Cong ress understands this d istinction.” Id. at 1004. W e further held:

W h en enacting t h e DMCA, Cong ress could have easily incorporated an objective standard of reasonableness. The f

a ct that it did not do

so indicates an intent to adhere to the subjective standard traditionally associ a ted with a g ood faith requirement. . . .

I n § 512(f), Cong ress included an ex pressly limited cause of action for improper infring ement notifications, imposing liabilit y only if the copy

rig ht owner’s notification is a knowing misrepresentation. A copy rig ht

owner cannot be liable simply be c ause an unknowing mistake is ma de, even if the
copy rig ht owner acted u nreasonably i n making the mistake. Rather, t h ere must be a demonstration o f some actual knowledg e o f misrepresentation on the part of the copy rig ht

owner.L E N Z V

. U N I V E R S A L M U S I C 18

Id. at 1004–05 (citations omitted). Neither of these holding s

are dictum. See United States v. Johnson

, 256 F

. 3d 895, 914 (9th Cir. 2001) (en banc) (“[ W ] here a panel con fr onts an issue g ermane to the ev e n t u al resolution of the case, a nd resolves it after reasoned c o n s ideration in a published opinion, that ruling becomes the law of the circuit, reg ardless of whether doing so is necessary in s ome strict log ical sense.”). W e therefore judg e Universal’s actions by the subjective beliefs it formed about the video.

2

Universal faces liability if it knowing ly misrepresented in the takedown notification that it h a d formed a g o od faith belief the video was n o t authoriz ed by the law, i.e., did not constitute fair use. H ere, L e n z p resented evidence that Universal did not form any subjective belief about the v ideo’s fair use—one way o r another— because it failed to consider fair use at a ll, and knew that it failed to do so. Un i v e r sal nevertheless contends that its procedures, while not formally labeled consideration of fair use, we r e tantamount to such consideration. B ecause the DMCA requires consideration o f fair use prior to sending a takedown notification, a jury must determine w hether U n i v e r s a l ’ s a c tions were sufficient to form

a subjective g ood f

aith b elief about the video’s fair use o r lack thereof. 3

3 A lth o u g h th e p an el ag rees o n th e leg al prin cip les w e d iscu ss h erein

, w e p art co m p an y w ith o u r d issen tin g co lleag u e o v er th e pro priety o f reso lv in g

o n su m m ary j u dg m en t Un iv ersal’ s claim to su b j ecti v e b e lief th at th e

co p y rig h t w as in f

rin g ed

. T h e d i ssen t w ou ld f in d th at n o triab le i ssu e of f act ex ists b ecau se Un iv ersal d i d n o t sp ecif ically an d ex p ressly co n s id er th e f air- u se elem en ts o f 1 7 U .S.C. § 1 0 7

. B u t th e q u estio n is w h eth er th e

an aly sis Un iv ersal d id co n d u ct o f th e v i d e o w as su f f icien t, n o t to

co n clu siv ely

estab lish as a m atter o f

law th at th e v id eo ’ s u se o f Let’s GoL E N Z V

. U N I V E R S A L M U S I C 19

To be clear, if a copy

rig ht holder ig nores or neg lects our unequivocal holding t h at i t must consider fair use before sending a takedown n ot i f ication, it is liable for damag e s

u nder § 512(f). I f, however, a copy rig ht holder f

o r m s a subjective good faith belief the alleg edly infring ing material does not constitute fair use, we are in no position to d i spute the copy r ig ht holder’s belief even if we would have reached the opposite conclusion. A copy rig ht holder who pay s lip service to the consideration of fair use by claiming it formed

a g ood faith belief when there is evidence to the contra r y i s still subject to § 512(f) l i a b i l i ty

. Cf. Disney Enters., Inc. v

. Hotfile Corp.
, No. 11-cv-20427, 2013 W L 6336286, at *48 (S.D. F la. Sept. 20, 2013) ( deny ing summary judg ment o f § 512(f) counterclaim du e t o “sufficient evidence in the record to s u g g est that [ Plaintiff] W arner intentionally targ eted files it k new it had no rig h t to remove”); Rosen v. H o sting Servs., Inc.
, 771 F

. Supp. 2d 1219, 1 223 (C.D. Cal. 2 010) (deny ing summary judg ment of § 512(f) counterclaim where the takedown n otification listed four U RL links t h at did not contain content matching the descriptio n o f the purportedly infring ed material); Online Policy Grp. v

. D iebold, Inc.
, 337 F

. Supp. 2d 1195, 1 204–05 ( N.D. Cal. 2004) (“[ T] here is

no g enuine issue of fact that D iebold knew—and indeed that it specifically intended—that its letters to O PG a nd Swarthmore would result in prevention of publication of that
content.

. . . T he f

act that Diebold n ever actually broug ht suit
ag ainst a n y alleg ed infring er sug g ests strong ly that D iebold
soug h t to u se the DMCA’s safe h arbor provisions—which

were desig ned to p rotect I SPs, n ot copy rig h t hol d e r s

— a s a

C r a z y w as f air, b u t to f

o rm a su b j ectiv e g o o d f

aith b elief th at th e v i deo

w as i n f rin g i n g o n P rin ce’ s co p y

rig h t. A n d u n d er th e circu m s tan ces o f th is case, th at q u estio n

is f o r th e j u ry , n o t th is co u rt, to d ecid e.L E N Z V

. U N I V E R S A L M U S I C 20

sword to suppress p ublication of embarrassing content rather than as a shield to protect its intellectual property .”).

3

W e hold the willful blindness d octrine may be used to determine whether a copy rig ht holder “ k

nowing ly materially misrep r e sent[ ed] ” that it h e ld a “g ood faith b elief” the offending activit y w a s not a fair use. See 17 U .S.C. § 512(c)(3)(A)(v), (f). “[ T ]he willful blindness doctrine may be applied, in a p p r opriate circumstances, to demonstrate knowledg e or awareness of specific instances of infring ement under t h e D MCA.” Viacom Int’l, Inc. v. Y ouTube, Inc.
, 676 F .3d 19, 35 (2d Cir. 2 012) (interpreting how a party can establish the “act

u a l knowledg e”—a subjective belief— required b y § 512(c)(1)(A)(I )) ; see also UMG Recordings, Inc. v. Shelter Capital Partners LLC
, 7 1 8 F .3d 1006, 1023 (9th Cir. 2013) (“Of c ourse, a service provider cannot willfully bury its head in the sand to avo i d o btaining such specific knowledg e.” (citing Viacom
, 676 F .3d a t 31)). B ut, based on the specific facts prese nted during summary judg ment, we r eject the district court’s conclusion that L enz may proceed to trial under a willful blindness theory

.

To demonstrate willful b l i n d n e s s a p laintiff must establish
two factors: “(1) the d efendant must subjectively believe that there is a hig h probability tha t a f act ex ists and (2) the defendant must t a k e deliberate actions to avoid learning o f
t h at fact.” Global-Tech Appliances, Inc. v. SEB S.A.
, 1 31 S

. Ct. 2060, 2070 (2011). “ U nder this formulation, a willfully blind defendant is one who takes deliberate act i o ns to avoid confirming a h ig h probability o f w rong doing and who c an almost b e said to have actually known the critical facts.” Id.
at 2070–71. To meet t h e Global-Tech test, L enz mustL E N Z V

. U N I V E R S A L M U S I C 21

demonstrate a g enuine issue as to whether

— b e fore sending the takedown notification—Univer sal ( 1) subjectively believed there was a hig h probability that t h e video constituted f

a i r u s e , and (2) took deliberate actions to avoid learning of this fair use.

On summary judg ment L e n z f ailed to meet a threshold showing o f the first factor. To make such a showi n g, L enz must p rovide evidence from wh i c h a juror could infer that Universal was aware of a hig h probability the video constituted fair use. See United States v. Y i
, 7 0 4 F .3d 800, 805 (9th Cir. 2013 )

. B ut she failed to provide any such evidence. The di s trict court therefore correctly found that “L enz do e s n ot present evidence sug g esting Universal subjectively

believed either that there was a hig h probability
any g iven video mig ht make fair use of a Prince composition

or her video in particular made fair u se o f Prince’s song ‘L e t’s G o Craz y .’” Yet the district court improperl y d e n ied Universal’s motion for summary judg ment on the wi l lful blindness theory because U niversal “ has n o t s hown that it l a cked a subjective belief.” B y finding blame wi t h Universal’s inability to show that i t “ lacked a subjective belief,” the district c ourt improperly required Universal to meet its b urden of persuasion, even thoug h L enz had failed to counter the initi al b urden of production that Universal successfully carried. See Celotex Corp. v. Catrett
, 477 U.S. 317, 322 (1986); Nissan Fire & M arine Ins. Co. v

. F

ritz Cos., Inc.
, 210 F. 3 d 1099, 1102 (9th Cir. 2 000). L e nz may not therefore proceed to trial on a willful blindness theory

.

V

Section 512(f) provides for the recovery of “any d amag es, including c osts and attorney s[ ’] fees, incurred by the alleg edL E N Z V

. U N I V E R S A L M U S I C 22

infring er

. . . who is injured by such misrepresentation, as the result o f the service provider rely i n g u pon such misrepresentation in r e m o v i n g or disabling access to the material or activity claimed to be infring ing

. . . . ” 17 U .S.C. § 512(f). W e hold a plai n t i f f may seek recovery of nominal d a m ag es for a

n injury incurred as a r esult of a § 512(f) misrepresentation.

Universal incorrectly asserts that L enz must demonstrate she incurred “actual monetary loss.” Section 512(k) provides

a definition for “monetary relief” as “damag e s , c o sts, attorney s[ ’] fees, and any other form of monetary

pay ment.” The term “monetary relief” appears in § 5 12(a), (b)(1), (c)(1), and (d), but is notably absent from § 5 12(f). As a result, the damag es an alleg ed inf

ring er may recover under § 512(f) from “any person” are broader than monetary relief. 4 Cf. United States v. James
, 478 U.S. 597, 605 (1986) (“Cong ress’ choice of the lang

uag e ‘ any damag e’

. . . undercuts a narrow construction.”), a brogated on other grounds by Cent. Green Co. v. United States
, 531 U.S. 4 25 (2001). B ecause Cong ress specified the rec o v e r y of “any damag es,” we reject Universal’s contention that Cong ress did not indicate its intent t o d e p a rt from the common law presumption that a misrepresentation plaintiff must have suffe red a monetary loss. See Keene Corp. v. United S tates , 508 U.S. 200, 208 (1993) (“W here Cong ress includes particular lang u ag e in o ne section of a statute but omits it in another, it is g eneral ly presumed that Cong ress acts in t e ntionally and purposely in the disparate inclusion or ex clusion.” (quotation omitted)).

4 T itle I o f th e DMCA sp ecif ies reco v ery f

o r “ ac t u a l d am ag es.” 1 7 U.S.C. § 1 20 3 (c)(1 )(A ). If Co n g ress i n ten d ed to s im ilarly li m i t t h e

reco v ery o f § 51 2 (f

) d am ag es to p ecu n i ary l o sses, it co u ld h av e ch o sen to d o so

.L E N Z V

. U N I V E R S A L M U S I C 23

L enz may seek recovery of nominal damag es du e t o a n unquantifiab le harm suffered as a result of Universal’s actions. 5 The DMCA is a kin to a statutor i l y c r eated intentional tort whereby an individual may recover nom i nal damag es for a “knowing ly material misrepresent[ ation] under this section [ 512] .” 1 7 U. S

. C

. § 512(f); cf. Memphis Cmty. Sch. D ist. v

. Stachura

, 477 U.S. 299, 3 05 (1986) (“ W e have repeatedly n oted t h a t 42 U.S.C. § 1983 creates a species o f
tort liability in favor of p e r s o n s w h o a r e deprived of rig hts, privileg es, or immunities secured to them by the Constitution. According ly

, when § 1983 pl a i n t i ffs seek damag e s for violations of constitu t i o n al rig hts, the level of damag es is ordinarily determined according to principles d e r ived from the c ommon law of torts.” (quotation and citations o mitted)).

“I n a number of common law actions associated with intenti o n al torts, the v iolation of the plaintiff’s rig h t has
g enerally been reg arded as a kind of leg al damag e in i t s elf. The plaintiff who proves an intentional phy sica l t o r t to the
person or to p r operty can alway s recover nominal damag es.” 3 Dan B

. Dobbs et al., The Law of Torts § 480 (2d ed. 2011). The tort need not b e p hy sical in order to r e cover nominal damag es. Defamation, for ex ample, permits the recovery of nominal damag es:

A nominal damag e award can be justified in a tort action o nly if there is some reason for

aw a r d i ng a judg ment in favor o f a c laimant who has not proved or d oe s n o t claim a

5 L en z m ay n o t reco v er n o m i n al d am ag es f o r “ im p airm en t o f f

ree sp eech rig h ts.” No au th o rity s u

pp o rts th e reco v ery o f n o m in al d am ag e s c a u s ed b y a p riv ate acto r’ s ch illin g o f f ree s p eech rig h t s. A ll o f th e cases L en z cites ad d ress ch allen g es to g o v ern m en t al actio n

.L E N Z V

. U N I V E R S A L M U S I C 24

compensable loss with sufficient c e rtainty to just i f y a recovery of compensatory or actual damag es. There may b e su c h a reason in an

a ct ion for defamation, since a nominal damage award serves the purpose o f vindicating the plaintiff’s character by a

v e r d ict of the jury that establishes the falsit y of the defamatory

matter.

W

. Pag e Keeton et a l., Prosser and Keeton on Torts § 1 16A,
at 845 (5th ed. 1984). Also, individuals may r ecover nominal damag es for trespass to land, even thoug h the t r e s passer’s “presence on the land causes no h arm to the land [ or] its
possessor

. . . .” Restatement ( S e c ond) of Torts § 163 & cmts. d, e (1965).

The district court therefore properly concluded in its 2010 order:

T h e use of “any damag es” sug g ests strong ly Cong r e s s i o n a l i n t ent that recovery be available for damag es even if they do not amount to

. . . substantial economic damag e s

. . . . Requiring a p laintiff who can [ show
t h a t t h e c o p y r i g h t h o l d e r k n o w i n g l y misrepresented its subjective g ood f a ith] to demonstrate in addition n ot only that s he suffered damag es but also that those damag e s

were e c o nomic and substantial w ould vitiate the deterrent effect of the statute.

Lenz v. Universal Music Corp.
, N o. C 07-3783 J F
, 2010 W L 7 0 2466, at *10 (N.D. Cal., F e b. 25, 2010). Rely ing on this opinion, the Southern Distri c t o f F lorida held the same.L E N Z V

. U N I V E R S A L M U S I C 25

Hotfile

, 2 0 1 3 W L 6336286, at *48 (“[ T] he Court observes that the quantity of economic damag es to Hotfile’s sy stem is necessarily difficult to measure w ith p r ecision and has led to much disag reement b etween the parties and their ex p e r t s

. N otwithstanding this d ifficulty

, the fact of injury h as b e e n shown, a nd H otfile’s ex pert can p r o v i de the jury with a non-speculative basis to assess damag es.”).

W e ag ree that L enz may

vindicate her statutorily created rig hts by seeking n ominal damag es. B e cause a ju r y h a s not
y et determined whether L enz will prevail at trial, we need not decide the scope of recoverable damag es, i.e., w h e t her she
may recover ex penses following the initiation of her § 512(f) suit or p ro bono costs and attorney s’ fees, both of which arose as a result of the injury incurred.

VI

Copy rig ht holders cannot shirk their duty to consider—in
g ood faith and prior to sending a takedown n otification— whether alleg edly infring ing material constitutes fair use, a

use which the DMCA plainly contemplates as authoriz ed b y the law. That this step im poses responsibility on copy rig ht holders is n ot a reason for us to reject it. Cf. Consumer Prod. Safety Comm’n v

. GTE Sylvania, Inc.
, 447 U.S. 102, 123–24 (19 8 0 ) (“[ A] ny increased burdens imposed on the Commission as a result of its compliance with [ the Consumer Product Safety Act] were intended by Cong ress in striking an appropriate b alance b etween t h e i nterests of consumers a nd the need for fairness and accuracy with respect to information disclo sed b y the Commission. T hus, petitioners’ claim that the Commission’s c ompliance with the requirements of [ the A c t ] will impose undue burdens on the Commission is properly addressed to Cong ress, n ot to this Court.”). W eL E N Z V

. U N I V E R S A L M U S I C 26

a f f i r m the district c o urt’s order d e n y ing the parties’ cro s s

motions for summary

judg ment.

AF F IRMED. Each party shall bear its own costs.

M. SMI TH, Circuit J udg e , concurring in part and dissenting in part:

I c onc u r in all but Part I V.C of the majority opinion. However, I d isag ree with the majority ’s conclusion that “whether Universal’s actions were sufficient to form a subjective g ood faith belief about the v ideo’s fair use or lack thereof” presents a triable issue of fact. U niversal admittedly did not consider fair use before notify ing YouTube to take down L enz ’s video. I t therefore could n ot have formed a g ood f a i th belief that L enz ’ s video was infring ing

, and its notification to the c ontrary was a kno w i ng material

m i srepresentation. According ly

, I w ould hold that L e nz i s entitled to summary

judg ment.

I ag ree with the majority ’s conclusion that § 5 12(c)(3)(A ) ( v ) requires copy rig ht holders to consider whether potentially infring ing m a t e r ial is a fair use before iss u i n g a takedown n otice. A s the majority ex plains, a takedown n o t i c e must contain “[ a] statement that the compl ai n i ng party h a s a g ood faith belief that use o f the material in the manner c omplained of is not authoriz ed by the
copy rig ht owner, its ag ent, or the law.” 1 7 U .S.C. § 512(c)(3)(A)(v). B ecause f air use of copy

rig hted material i s n o t an infring ement of c opy rig ht, such use is “authori z e d by

. . . the law.” See id

. § 107. Therefore, in order to form “a
g ood faith b elief that use of the material i n t h e mannerL E N Z V

. U N I V E R S A L M U S I C 27

complained of is n o t a u thoriz ed by

. . . the law,” § 512(c)(3)(A)(v), a party must consider the doctri n e of fair

use. I also ag ree with the majority that § 512(f) p rovides a party injured by a violation of § 512(c)(3)(A)(v) with a rig ht of action for damag es, including nominal damag es.

H o w e v e r , I part way s with the majority on two issues

. F irst, I w ould clarify that § 5 1 2 (f)’s requirement that a misrepresentation be “knowing [] ” is satisfied when the party knows that i t i s ig norant of the truth or falsity of its representation. Second, I would h old that Universal’s actions

were insufficient as a matter o f law to form a subjective
g ood-faith belief that L enz ’ s video was not a fair use.

I

S ection 512(f) r equires that a misrepresentation b e

“ k nowing [] ” to incur liability

. I n my view, when the misrepresentation concerns § 512(c)(3)(A)( v )

, the knowledg e requirement is satisfied when the party knows that it has not considered fair use. That is, U niversal need not have known th a t the video was a fair use, or that its actions were insufficient to form a g o od-faith belief about fair use. I t need only have known that it had n ot considered fair use a s such. 1

As the majority ex plains, we h ave pr e v i o usly held in Rossi v. Motion Picture A ss’n of Am. Inc. that “the ‘g ood faith be l i e f ’ r equirement in § 512(c)(3)(A)(v) encompasses a

1 I d o n o t b eliev e th at, i n th is reg ard

, m y co n stru ctio n co n f

licts w ith th at

o f th e m aj ority

. A lth o u g h th e m aj o rity d o es n o t s q u arely ad d r e s s § 5 1 2 (f )’ s s cien ter req u irem en t, it leav es f or th e j u ry o n ly th e q u estio n

“ w h eth er Un iv ersa l ’s actio n s w ere su f f i cien t to f o rm a su b j ectiv e g o o d f aith b elief ab o u t th e v i d eo ’ s f

air u se o r lack

th ereo f .”L E N Z V

. U N I V E R S A L M U S I C 28

subjective, rathe r than objective, standard.” 391 F .3d 1000, 1004 ( 9th Cir. 2004). Rossi reasoned that a subjective standard c omported w i t h § 512(f)’s r equirement that

ac t i o n able misrepresentations b e “knowing [ ] ”
, and ultimately held that liability under § 512(f) r equires “a demonstration o f

some actual knowledg e of m i s r epresentation on the p a rt o f the copy r ig h t owner.” 391 F .3d at 1005.

Universal u rg es us to construe Rossi to mean that liability attaches under § 512(f) only if a party subjectively bel i e ves that its assertion is false. B ut under long -settled principles o f deceit and fraudulent misrepresentation, a p ar t y n eed only know that it is ig norant of the truth or falsity of its

r e p r esentation for its misrepresentation to be knowing

. Fo r

ex a mple, in Cooper v. Schlesinger

, 111 U.S. 148, 155 (1884), the Supreme Court e x plained th a t “a statement recklessly

m ade, without knowledg e of its truth, [is] a false statem e n t k n owing ly made, within the settled rule.” 2 Similarly

, under the common law, “ [ a] misrepresentation is fraudulent if the maker

. . . k

nows or b elieves that the m a t t er i s not as he represents it to be,

. . . [ or] k nows that h e does n o t have the basis for his representation that he states or i m p l ies

. ” Restatement (Second) of Torts § 526 (emphasis added). 3

2 S ee a l so S o vereig n Po ca h on ta s Co

. v. Bo n d

, 12 0 F.2 d 39
, 39

– 4 0 (D.C. Cir. 1 9 41 ); Kn ickerb o cker Merch

. Co

. v. Un ited S ta tes , 1 3 F.2 d 5 4 4
, 5 4 6 (2 d Cir. 1 9 2 6 ); L J Mu eller Fu rn a ce Co

. v. Ca sca d e Fo u n dry Co

. , 1 4 5 F. 5 9 6
, 6 00 (3 d Cir. 1 9 0 6); Hin d ma n v. First Na t’l Ba n k

, 1 1 2 F. 9 3 1
, 9 4 4 (6 th Cir. 1 90 2 ).

3 T h e S e c o n d Restatem en t ref ers to “ f rau du len t m isrep resen t atio n ,” rath er t h an “ k n o w in g ” m isrep resen tat i o n

. S ee Restatem en t (Seco n d ) of T o rts § 5 2 6

. Ho w ev er, as th e Restatem en t clarif ies, th e req u irem en t th at

a m isrep resen tatio n b e “ f rau d u len t” r e fe rs “ so lely ” to t h e p arty ’ s kn o wled g e o f m i srep resen tatio n

. S ee id

. cm

t. a. T h e Restatem en t’ sL E N Z V

. U N I V E R S A L M U S I C 29

One who a sserts a belief that a work is infring ing without considering fair use lacks a b as i s f o r that belief. I t follows that one who k

nows that h e has not considered fair use knows that h e lacks a basis for that belief. That is sufficient “actual knowledg e of m isrepresentation” to meet the scienter requirement of § 512(f

)

. S e e R ossi
, 3 91 F .3d at 1005. Thus,
to be held liable under § 512(f), Universal need on l y have failed to consider fair use, a nd known tha t i t had failed to consider fair use.

II

I t is undisputed that Universal’s policy was to issue a takedown notice where a c opy rig hted work was used as “the focus of the video” or “prominently featured in the v i d e o

. ” B y Universal’s own admission, its ag ents were not instructed
to consider whether the u se was f a i r

. I nstead, Universal directed i t s ag e nts to spare videos that had “a second or less of a Prince song ” or where the song was “distorted bey ond reasonable r ecog nition.” And y et, from t h i s , the majority concludes that “whether Universal’s a c t i ons were sufficient
to form a subjective g ood f aith b e l i ef about the video’s fair use or lack thereof” presents a triable issue of fact.

I respectfully disag ree. The Copy rig ht Act ex plicitly
enumerates the factors to be considered in assessing whether

use o f copy

rig hted m aterial is fair. 17 U.S.C. § 107. Universal’s policy was ex pressly t o d etermine whether a video mad e “ s i g nificant use”—not fair use—of the work. Nothing in Universal’s methodolog y c onsidered the purpose and character of the use, the commercial or noncommercial

d ef in i tio n o f “ f

rau d u len t” is th eref

ore p ersu asiv e au th o rity f o r co n stru in g th e m ean in g o f

“ k n ow i n g ly .”L E N Z V

. U N I V E R S A L M U S I C 30

nature o f the u se, or whether the use would have a sig nificant impact on th e m a rket for the copy rig h ted work. 4 S

ee § 107. There is therefore no disputed issue of fact: Universal did not consider fair use before issuing a takedown notice.

Moreover, Universal knew it had not considered fair u se, because § 107 ex p l i ci tly supplies the factors that “shall” be considere d i n determining whether a u se is fair. Id

. I see no

reason in law o r l o g ic to ex cuse copy r ig ht holders f

r om the
g eneral principle that knowledg e of the law is presumed. See United S tates v

. I nt’l Minerals & Chem. Corp.
, 402 U.S. 558, 562–63 (1971) (holding that the u se of the word “knowing ly ” did not evince a leg islative intent to “carv[ e] out an ex c eption
to the g eneral rule that ig n o r ance o f the law is no ex cuse”). As ex plained above, that is sufficient in my view to conclude
t h a t U n i versal’s takedown notice was a knowi n g misrepresentation.

Ba s e d on Rossi ’s holding that a subjective g ood-faith b e l i e f i n i n f

r i n g e m e n t i s s u f

f i c i e n t t o s a t i s f

y § 512(c)(3)(A)(v), 391 F .3d at 1005, t h e m a jority disag rees. B u t t h e majority ’s reading of R o ssi would insulate from

4 Had Un iv ersal p ro p erly

co n sid ered th e statu to ry

elem en ts o f

f air u se, th ere is n o d o u

b t th at it w o u ld h av e co n clu d ed th at L en z’ s u se of L et’s Go Cra zy w as f

air. S ee, e.g

. , TCA Televisio n Co rp

. v

. M cCo llu m , 2 0 1 5 W L 9 2 5 5 3 4 1 (S.D.N

. Y

. Dec. 1 7, 2 0 1 5 ) (f in d in g o n a m o tio n t o d ism iss th at th e u se in a B ro ad w ay sh o w o f on e m i n u te an d sev en seco n ds o f th e A b bo tt an d Co stello ro u tin e W h o ’s On First? w as f

air b ecau se th e u se w as

“ h ig h l y tran sf

o rm ativ e” an d u n lik ely to u s u rp th e m ark et f o r th e o rig in al); S OFA En tm’t, In c. v. Do d g er Pro d s., In c. , 70 9 F.3 d 1 2 73 (9 th Cir. 20 1 3) (af f irm in g s u m m ary j u d g m en t th at u se o f a sev en

- seco n d clip o f Th e Ed S u lliva n Sh o w w as f

air f o r sim ilar reaso n s). Un iv ersal’ s “ sig n if ican t u se”

an aly sis, b y co n t

rast, is m ore lik e d eterm in in g w h eth er a u se is d

e m in imis
, a m u ch m o re strin g en t test th an f air u s e

. S

ee S a n d o va l v. New L in e Cin ema Co rp

. , 1 4 7 F.3 d 2 1 5 , 2 1 7 (2 d Cir. 1 9 9 8 ).L E N Z V

. U N I V E R S A L M U S I C 31

liability any subjective belief in infring ement, n o matter h ow poorly f o r m ed. Rossi did not abrog ate the statutory

r e q u irement that the belief be h eld in g ood faith. I wo u l d therefore hold that a b elief in infring ement formed consciously without cons i d e r i ng fair use is no g ood-faith belief at all. See Coop er , 1 11 U.S. at 1 55 (holding that such

a belief is a knowing misrepresentation). And to as s er t in
g ood faith that a use is not fair, a party must c onsider the statutory elements of fair u se set forth in § 107. Merely evaluating whether a use is “sig nificant” is not enoug h.

The majority ’s unfortunate interpretation of § 512(f) would permit a party to a void liability with o n l y the most perfunctory attention to fair use. Such a c onstruction eviscerates § 512(f) and leaves it toothless a g ainst frivolous takedown n otices. A nd, in an era wh e n a sig nificant proportion of media distribution a nd consumption takes place

o n third-party safe harbors such a s YouTube, 5 if a creative work can b e taken down without meaning full y considering fair use, then the viability of the concept of fair use itself is in jeopardy

. Such a construction of § 512(f) can n o t c omport with the intention of Cong ress.

* * *

I n sum: Universal represented that it had formed a g oodfaith b elief that L e n z ’ s video was an infring ement o f
copy rig ht—that i s , that the video was not fair use. B ecause

5 S ee S ta tistics
, Yo u Tu b e , h t tp s://w w w .y o u tu b e.co m /y t/p ress/ statistics.h tm l (last v isited Feb

. 2
, 20 1 6 ) (rep o rtin g th at “ ev ery d ay peo p le

w atch h u n d red s o f m illio n s o f h o u rs o n Yo u T u b e” an d th at Yo u T u

b e

“ reach es m o re 1 8

– 3 4 an d 1 8 –4 9 y ear- o ld s t h an an y cab le n etw o rk

in th e U.S.”).L E N Z V

. U N I V E R S A L M U S I C 32

Universal did not actually consider the factors constituting fair use, its representation was false—a misrepresentation. B ecause those f

actors are set forth in § 107 (and § 107

ex p ressly states that a fair u s e “ is not an infring ement o f
copy rig ht”), Universal’s m i s r e p r e s e n t a t i o n w a s k n o w i n g

. A nd because there is n o fur ther disputed issue of fact concerning liability , I respectfully

dissent.