An internet service provider, weary of hearing complaints from a music rights-management organization, tried to get a federal court in Manhattan to stop in advance what it felt was the group’s sing-song whining about improper online postings of copyrighted songs. But the judge decided the request by Windstream Services for a preemptive declaratory judgment against BMG was way out of tune.

The court found Windstream’s request “un-tethered” to any specific claim of copyright infringement and said it could be construed to absolve the ISP of not only past but also future actions. That, like performing in the wrong key, can’t be allowed, the court said in a case that offers some important reminders about parties following procedures detailed in the Digital Millennium Copyright Act.

Safe harbors, repeated complaints

In Windstream Services, LLC v. BMG Rights Management, LLC and Rightscorp, Inc.the ISP plaintiffs expressed exasperation that BMG, as it is supposed to do, kept sending take-down notices claiming infringement by the services’ users. They were, BMG asserted, accessing BitTorrent, a peer-to-peer file-sharing website, to download, pirate, then to post to Windstream sites music with copyrights that the rights management group owns.

But Windstream disliked BMG’s harping on its claims, and the ISP asked a federal court for a declaratory judgment finding the service was acting in neutral fashion, simply providing a place for users to post robust, varied content — the very behavior that Congress had sought to protect by giving ISPs DMCA safe harbors from infringement suits.

Although Congress had intended to offer some shelter to companies like Windstream, which provide online products like mobile phone service, cable television, and voice over internet protocol (VOIP) landlines, ala Verizon or AT&T, the court noted that ISPs don’t get absolute safe harbors protection. This is especially true if the services’ users repeatedly rely on controversial sites like BitTorrent to download and then re-post others’ protected products, especially if the ISPs are informed repeatedly and know they may be carrying customers’ infringing works.

Take-down notices

Under the DMCA, rights holders like BMG are required to send sites notices asserting infringements and other breaches of the Copyright Act, and demanding that services removed disputed works or face legal consequences. The DMCA details what the notices must spell out, including the asserted infringement (time, place, and location) and the material purported to be infringed on. The act outlines how sites must respond, and it gives posters of disputed materials opportunities for appeal, too.

But rather than handling each of several BMG take down notices, Windstream wanted the court to issue an advance statement absolving the ISP of any wrongdoing.The court declined, saying Windstream had failed a legal basic, requesting it to judge even one specified claim of infringement. U.S. District Judge Kimba Wood further said the court couldn’t rule preemptively because that also would shield Windstream in future infringement claims, too.

While some might criticize Judge Wood’s holding, arguing take-down letters amount to a case-in-controversy, this view may miss the court’s larger point. Windstream’s counsel tried to rely on  Veoh Networks, Inc. v. UMG Recordings, Inc., to support the ISPs’ point of view. Although Veoh carries similar facts, the appellate court ruled that plaintiffs wrongly tried to use declaratory relief as a sword rather than a shield, again un-tethered to any claims of actual infringement. Both courts say the DMCA’s safe harbor provisions are affirmative defenses, not tactics for services to use on legal offense. Meantime, if ISPs want the safe harbor protections, they need to follow the law as Congress and the courts already have outlined it.