According to a January 22, 2014 ruling from the U.S. District Court for the Northern District of California, an incorrectly-chosen takedown notice may constitute a violation of the Digital Millennium Copyright Act (DMCA).
CrossFit and its DMCA takedown notice
In Crossfit, Inc. v. Alvies, plaintiff CrossFit, Inc. brought a trademark infringement action against Jenni Alvies for content posted on Alvies’ Facebook page and Blogspot blog. CrossFit, the company that created the very popular fitness training program and training certification program, currently owns multiple federal trademark registrations and applications for the mark CROSSFIT, including in connection with fitness training services, nutritional shakes and software to track workout progress. Alvies, allegedly without authorization from CrossFit, created the blog “crossfitmamas.blogspot.com” and a “CrossFit Mamas” Facebook page, on which she posted daily workout routines and on which other individuals would post updates on their workout progress. Alvies additionally sold nutritional shakes through the blog and paid for Google AdWords advertising for her websites.
During the course of several exchanges – including demands from CrossFit that Alvies remove all use of the CROSSFIT trademark from these sites and cease sales and advertising – CrossFit sent a takedown notice to Facebook under the DMCA, requesting the removal of Alvies’ “CrossFit Mamas” page.
CrossFit eventually sued Alvies for trademark infringement and dilution (among other causes of action), and Alvies made several counterclaims. Among them, Alvies requested a declaratory judgment regarding CrossFit’s decision to file a takedown notice under the DMCA, which provides remedies to copyright infringement, when CrossFit was in fact asserting infringement of its trademark rights.
In relevant part, the DMCA holds that any proprietor who materially misrepresents that certain material infringes its copyrights is liable for damages incurred by the alleged infringer. 17 U.S.C. § 512(f). Alvies claimed that CrossFit made a material misrepresentation by invoking the DMCA to assert its trademark rights, which are not covered by the Act. CrossFit moved to dismiss this counterclaim, arguing that Facebook offered a similar takedown notice for trademark rights, and thus Alvies did not incur any damages, since the allegedly infringing content would have been removed regardless.
The Court denied CrossFit’s motion to dismiss the counterclaim, holding that it would not speculate about what action Facebook would have taken had Facebook received a trademark takedown notice. The Court held that Alvies allegedly received income from her activities, and thus arguably suffered damage when the source of this income was removed via an improper DMCA takedown notice.
Lessons for removing content from social media websites
Notwithstanding any future appeal by CrossFit, the Alvies opinion may allow some social media users who have infringed another’s copyright or trademark rights to place monetary liability on the holders of those rights. Thus, companies seeking to remove material from social media websites such as Facebook should read carefully which procedures to follow for which types of rights the company is asserting. Such procedures are usually provided via an online form or in detailed instructions provided by the social media company itself. For the reader’s reference, the following links (current as of the date this article was posted) provide information on procedures and requirements for assertion of intellectual property rights violations by social media users:
Facebook: https://www.facebook.com/legal/copyright.php?howto_report
Twitter: https://support.twitter.com/forms/
Instagram: http://help.instagram.com/454951664593304
Pinterest: http://about.pinterest.com/copyright/; http://about.pinterest.com/trademark/
Read the full Alvies opinion here.
This article was prepared by Justin Haddock (justin.haddock@nortonrosefulbright.com / +1 512 536 3024) is a lawyer in Norton Rose Fulbright’s Austin intellectual property practice.
