DMCA Notice and Takedown Process and its Impact on Vietnam

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

DMCA Notice and Takedown

In 1998, the United States passed the Digital Millenium Copyright Act (“DMCA”) to protect copyright and neighboring rights (related rights) on the internet. The DMCA sets up a mechanism allowing right holders to request online service providers (OSPs) to take down copyright infringement including pirated contents. As a part of DMCA, Section 512 also establishes the limitations on liability relating to material online, also widely known as “safe harbor” provision,[1] which safeguards OSPs from being held liable for monetary relief (secondary liability) by reason of copyright infringement conducted by their users.[2] Accordingly, a DMCA takedown notice can be simply understood that infringing content is removed from a website or platform at the request of the owner of that content.

As provided by the DMCA, 3 out of 4 OSPs including “caching”, “on-demand digital content storage” (hosting), and “linking” must comply with the notice-and-takedown system. To enjoy the “safe harbor” provision, every OSP is required to designate an agent of service provider by registering it with the US Copyright Office to receive notifications of claimed infringement. To designate an agent, an OSP must do: (a) make certain contact information for the agent available to the public on its website; and (b) provide the contact information to the US Copyright Office along with a payment of 6 USD per designated agent valid in 3 years [online directory and register here:  DMCA Designated Agent Directory | U.S. Copyright Office].[3]

A DMCA notice-and-takedown process permits the right holder to submit a request [a form may be downloaded here: sample-notice.pdf (copyright.gov)] notifying an OSP of infringing materials appearing on its platform. Main contents of such request consist of: identification of the copyrightable work that is alleged to be infringing; identification of digital content or infringing activity (indications or links directing to such digital content); contact information of the right holder; a statement by the right holder asserting that the digital content used is not allowable by law or not authorized by the right holder; the right holder undertakes that the information stated in the request is truthful and is solely responsible for any incorrect declaration.

Upon receipt of the complaint, an OSP must promptly remove or disable access to the infringing digital content. Such OSP must also then notify the user who uploaded the digital content to the OSP platform that such digital content has been deleted or removed. Upon receiving a notice from an OSP states that deleted digital material has been removed, the user has the right to file a counter-notification [a form may be downloaded here: sample-counter-notice.pdf (copyright.gov)] along with a request to restore access to the posted material. A counter-notice should include identification of the digital content that was removed and the location where the digital content appeared prior to the removal; a statement that the removal may be made by mistake or that the right holder misidentified the subject of the removal request; approving the jurisdiction of the federal district courts.

An OSP must restore the removed or disable digital content within 10-14 working days unless the right holder notifies OSP that he has already filed a lawsuit to a court. In the event of a lawsuit, an OSP may still be liable for compensation if such OSP is found not to have met the conditions for enjoying ‘safe harbor’ provisions, or even though in the event that an OSP is entitled to enjoy ‘safe harbor’ provisions, the court can still force, eg. an OSP that hosts digital content on demand (hosting service) to take remedial action, such as disabling access to infringing digital content, or terminate the infringing user’s account.

DMCA’s Impact on Vietnam

In addition to being able to choose “72-Hour & 10-Working Day Process” or “24-Hour Process”[4] as provided by Decree 17/2023/ND-CP to protect copyright on the internet, Vietnamese right holders may adopt the DMCA notice-and-takedown system regardless of whether the DMCA is a US copyright act. This is because the internet is borderless, likely causing simultaneous infringement on a global scale, with the consequence that courts in different countries may have jurisdiction at the same time to handle copyright infringement claim brought by the right holder.

In other words, rights holders residing in Vietnam can sue an OSP before a Vietnamese court, or even in US courts because each cross-border platform, namely Facebook, YouTube, TikTok, Netflix, Instagram, LinkedIn, App Store, Google Play, etc. has from hundreds of millions to billions of users around the world, wherein includes tens of millions of users in Vietnam alone.

But conversely, the DMCA can also have an adverse impact on Vietnamese individuals, organizations, and OSPs that are using and exploiting digital contents. The adverse effect is that an OSP, in the absence of liability immunity, may become a defendant in a copyright infringement lawsuit in a foreign court even though they do not reside or do not have a business presence overseas as the recent lesson in the case of LANG VAN, INC. v. VNG CORPORATION No. 19-56452 (9th Cir. 2022).[5]

Bross & Partners, an intellectual property company ranked Tier 1 in 3 consecutive years (2020-2022) by Legal 500 Asia Pacific, has rich experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.