infringement – Attorney Evan Brown

November 19, 2024 Litigation, Unfair Competition

Beauty products company wins preliminary injunction against online sellers

conterfeit

Plaintiff sued a group of unnamed individuals, corporations, and online sellers, alleging that they were selling counterfeit versions of plaintiff’s patented beauty products through various e-commerce platforms. Plaintiff requested a preliminary injunction to immediately stop these activities and freeze defendants’ financial accounts. The United States District Court for the Southern District of Florida granted the request, seeking to protect plaintiff’s intellectual property rights while the case continued.

Plaintiff argued that defendants had infringed on its utility and design patents by manufacturing, promoting, and selling counterfeit products that mimicked its patented designs and technology. Investigators hired by plaintiff purchased items from defendants’ online stores and determined they were unauthorized copies. Plaintiff claimed these actions caused irreparable harm to its brand reputation and financial well-being.

The court evaluated whether plaintiff met the legal standard for a preliminary injunction, which requires showing a likelihood of success on the merits, irreparable harm without relief, a balance of hardships favoring plaintiff, and alignment with the public interest. The court found that plaintiff provided strong evidence that defendants were selling counterfeit goods in violation of its patents. Defendants had no authorization to use plaintiff’s intellectual property, and their activities risked confusing consumers and damaging plaintiff’s reputation.

The court determined that the harm to plaintiff outweighed any potential harm to defendants, especially since defendants were engaging in illegal activities. The public interest also supported the injunction, as it protected consumers from being misled into buying counterfeit products. The court froze defendants’ financial accounts to prevent them from transferring funds out of the court’s jurisdiction.

Why This Case Matters:

Intellectual Property Protection: The ruling reaffirms the importance of enforcing patent rights against counterfeiters in the e-commerce space.
Consumer Protection: By halting counterfeit sales, the court safeguarded consumers from buying inferior and unauthorized products.
Digital Enforcement Tools: The decision highlights the role of injunctions and financial account freezes as tools to combat online intellectual property infringement.

Foreo Inc. v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A, 2024 WL 4652093 (S.D. Fla. Nov. 1, 2024).

February 21, 2024 Copyright

Fourth Circuit overturns massive jury verdict in copyright case against internet service provider

music infringement

Plaintiff copyright holders sued defendant internet service provider alleging both vicarious and contributory copyright infringement liability arising from defendant’s customers downloading or distributing songs using BitTorrent. The jury found defendant liable and awarded $1 billion in statutory damages. Defendant sought review with the Fourth Circuit. On appeal, the court affirmed the jury’s finding of willful contributory infringement but remanded the action for a new trial on damages because it found plaintiffs failed to prove vicarious liability, as defendant did not profit from its subscribers’ acts of infringement.

No vicarious liability

Citing to Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) and CoStar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004), the court observed that “[a] defendant may be held vicariously liable for a third party’s copyright infringement if the defendant ‘[1] profits directly from the infringement and [2] has a right and ability to supervise the direct infringer.’” In this case, the court found that plaintiffs failed to prove that defendant profited directly from its subscribers’ copyright infringement.

The crux of the financial benefit inquiry was whether a causal relationship existed between the subscribers’ infringing activity and defendant’s financial benefit. To prove vicarious liability, plaintiff had to show that defendant profited from its subscribers’ infringing download and distribution of plaintiffs’ copyrighted songs. The court found that plaintiffs did not meet that burden.

The appellate court disagreed with the lower court’s determination that defendant’s repeated refusal to terminate infringing subscribers’ accounts was enough to show financial benefit for these purposes. Instead, the court found that continued payment of monthly fees for internet service, even by repeat infringers, was not a financial benefit flowing directly from the copyright infringement itself. “Indeed, Cox would receive the same monthly fees even if all of its subscribers stopped infringing.”

The court rejected plaintiffs’ alternative theories for financial benefit. Plaintiffs argued that the high volume of infringing activity on defendant’s network, with roughly 13% of traffic from peer-to-peer activity and over 99% of that being infringing, suggested that the ability to infringe attracted customers to defendant’s internet service. However, the evidence did not conclusively show that customers chose defendant’s service specifically for its potential to facilitate copyright infringement. The argument overlooked the fact that internet service is essential for many aspects of modern life, and there was no specific evidence that defendant’s internet service was selected over competitors due to a more lenient stance on copyright infringement.

Additionally, plaintiffs claimed that defendant’s subscribers were willing to pay more for internet services that allowed for copyright infringement, citing defendant’s tiered pricing and the correlation between peer-to-peer activity and higher data usage. However, there was no substantial evidence to support the claim that subscribers chose higher internet speeds with the intention of infringing copyright. Plaintiffs’ own expert acknowledged that increased data usage could be attributed to numerous legal activities like streaming and gaming. The argument failed to establish a direct link between the desire for higher internet speeds and the intent to infringe copyright, leaving plaintiffs’ assertion that defendant profited from copyright infringement unsubstantiated. Consequently, the court found no basis for vicarious liability on defendant’s part for its subscribers’ copyright infringements, making it necessary to overturn the lower court’s decision on this issue.

Contributory liability upheld

The court upheld the lower court’s determination that defendant was contributorily liable for its subscribers’ infringement, finding that defendant was aware of and materially contributed to the infringing activities. The court emphasized the need for defendant to have knowledge of specific instances of infringement and the substantial certainty of continued infringement by particular subscribers. Despite defendant’s tiered internet services and a variety of lawful uses, the evidence presented at trial demonstrated defendant’s knowledge of repeat infringements and its decision to continue providing service to infringing subscribers, primarily to avoid losing revenue. The court rejected defendant’s arguments against contributory liability, affirming that providing a service with knowledge of its use for infringement, especially when specific instances are known, constituted material contribution to infringement.

But what are the damages now?

Because the $1 billion damages award was not allocated between the two theories of liability, and the jury was instructed to consider various factors, including the profits defendant earned from the infringements, the court could be sure that the vicarious liability verdict did not impact the damages awarded. Given this uncertainty and the significant discretion granted to the jury in determining statutory damages, the court vacated the damages award and remanded for a new trial on the damages issue.

Sony Music Entertainment v. Cox Communications, Inc., 2024 WL 676432 (4th Cir., February 20, 2024)

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February 20, 2024 Trademarks

Peloton did not infringe trademark rights of fitness app maker

Plaintiff used the mark BIKE+ in connection with a fitness tracking app and obtained a federal registration for the mark. It sued defendant Peloton for trademark infringement over Peloton’s adoption and use of the mark PELOTON BIKE+. Defendant moved for summary judgment arguing, among other things, that there was no likelihood of confusion. The court granted defendant’s motion for summary judgment.

Sitting in the Ninth Circuit, the court embarked on an analysis under AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) to assess the likelihood of consumer confusion. It considered several factors, including the strength of the mark, the similarity of the products, marketing channels used, and the intent behind the choice of mark, among others. The court determined that plaintiff’s BIKE+ mark, being descriptive of the app’s functionality to enhance biking experiences, did not possess the inherent distinctiveness that warrants a broad scope of protection. This was compounded by the existence of similar marks in the app marketplace, further reducing the strength of plaintiff’s mark.

The court then looked to the relatedness of the goods offered by both parties, the similarity of the marks in appearance, sound, and meaning, and the absence of evidence of actual consumer confusion. Despite the complementary nature of the defendant’s physical product and the plaintiff’s app, and some similarities in the marks, the lack of actual confusion evidence, along with divergent marketing channels and the sophistication of the consumers, weighed against the likelihood of confusion. The defendant’s intent in selecting its mark did not suggest a deliberate attempt to create confusion, further diminishing the plaintiff’s stance.

Ultimately, the court concluded that the descriptive nature of the plaintiff’s mark, the lack of significant commercial strength, and the minimal impact of relatively recent development activity made confusion unlikely. Defendant’s commercial prominence and extensive marketing efforts did not overshadow the plaintiff’s app to a degree that would cause confusion among consumers. Given all the circumstances and the specific context of each factor considered, the court found confusion to be possible but not probable, leading to the grant of summary judgment in favor of defendant.

World Champ Tech LLC v. Peloton Interactive, Inc., 2024 WL 665181 (N.D. California, February 16, 2024)

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February 12, 2024 Copyright, DMCA, Litigation

DMCA subpoena to “mere conduit” ISP was improper

DMCA defamatory

Because ISP acted as a conduit for the transmission of material that allegedly infringed copyright, it fell under the DMCA safe harbor in 17 U.S.C. § 512(a), and therefore § 512(h) did not authorize the subpoena issued in the case.

Some copyright owners needed to find out who was anonymously infringing their works, so they issued a subpoena to the users’ internet service provider (Cox Communications) under the Digital Millennium Copyright Act’s (“DMCA”) at 17 U.S.C. § 512(h). After the ISP notified one of the anonymous users – referred to as John Doe in the case – of the subpoena, Doe filed a motion to quash. The magistrate judge recommended the subpoena be quashed, and the district judge accepted such recommendation.

Contours of the Safe Harbor

The court explained how the DMCA enables copyright owners to send subpoenas for the identification of alleged infringers, contingent upon providing a notification that meets specific criteria outlined in the DMCA. However, the DMCA also establishes safe harbors for Internet Service Providers (ISPs), notably exempting those acting as “mere conduits” of information, like in peer-to-peer (P2P) filesharing, from liability and thus from the obligations of the notice and takedown provisions found in other parts of the DMCA. This distinction has led courts, including the Eighth and D.C. Circuits, to conclude that subpoenas under § 512(h) cannot be used to compel ISPs, which do not store or directly handle the infringing material but merely transmit it, to reveal the identities of P2P infringers.

Who is in?

The copyright owners raised a number of objections to quashing the subpoena. Their primary concerns were with the court’s interpretation of the ISP’s role as merely a “conduit” in the alleged infringement, arguing that the ISP’s assignment of IP addresses constituted a form of linking to infringing material, thus meeting the DMCA’s notice requirements. They also disputed the court’s conclusion that the material in question could not be removed or access disabled by the ISP due to its nature of transmission, and they took issue with certain factual conclusions drawn without input from the parties involved. Additionally, the petitioners objected to the directive to return or destroy any information obtained through the subpoena, requesting that such measures apply only to the information related to the specific subscriber John Doe.

Conduits are.

Notwithstanding these various arguments, the court upheld the magistrate judge’s recommendation, agreeing that the subpoena issued to the ISP was invalid due to non-compliance with the notice provisions required by 17 U.S.C. § 512(c)(3)(A). The petitioners’ arguments, suggesting that the ISP’s assignment of IP addresses to users constituted a form of linking to infringing material under § 512(d), were rejected. The court clarified that in the context of P2P file sharing, IP addresses do not serve as “information location tools” as defined under § 512(d) and that the ISP’s role was limited to providing internet connectivity, aligning with the “mere conduit” provision under § 512(a). The court also dismissed the petitioners’ suggestion that the ISP could disable access to infringing material by null routing, emphasizing the distinction between disabling access to material and terminating a subscriber’s account, with the latter being a more severe action than what the DMCA authorizes. The court suggested that the petitioners could pursue the infringer’s identity through other legal avenues, such as a John Doe lawsuit, despite potential challenges highlighted by the petitioners.

In re: Subpoena of Internet Subscribers of Cox Communications, LLC and Coxcom LLC, 2024 WL 341069 (D. Hawaii, January 30, 2024)

December 28, 2023 Copyright, Trademarks

Online platforms will have to answer for sales of alleged counterfeit products

A federal court in New York has denied the motion to dismiss filed by Chinese online platforms Alibaba and AliExpress in a lawsuit brought by a toymaker alleging that these companies’ merchant customers were engaged in contributory trademark and copyright infringement through the online sale of counterfeit products.

Background of the Case

Plaintiff toymaker accused the Alibaba defendants of facilitating the sale of counterfeit products on their platforms. The lawsuit stemmed from the activities of around 90 e-commerce merchants who were reportedly using the platforms to sell to sell fake goods.

The Court’s Rationale

The court’s decision to deny the motion to dismiss turned on several allegations that suggest the Alibaba defendants played a more complicit role than that of a passive service provider. These allegations included:

Specific Awareness of Infringement: The Alibaba defendants were allegedly well-informed about the infringing activities of several merchants, including some named in the lawsuit. The Alibaba defendants should have known of these instances from orders in six separate lawsuits against sellers on the platforms.
Continued Proliferation of Infringing Listings: Despite this awareness, the platforms reportedly allowed the continued presence and proliferation of infringing listings. This included listings from merchants already flagged under Alibaba’s “three-strike policy” for repeat offenders.
Promotion of Infringing Listings: Plaintiff alleged the Alibaba defendants actively promoted infringing listings. The Alibaba defendants reportedly granted “Gold Supplier” and “Verified” statuses to infringing merchants, sold related keywords, and even promoted these listings through Google and promotional emails.
Financial Gains from Infringements: Crucially, plaintiff argued that the Alibaba defendants financially benefited from these activities by attracting more customers, encouraging merchants to purchase additional services, and earning commissions on transactions involving counterfeit goods.

DMCA Safe Harbor Provisions Not Applicable

The court rejected the Alibaba defendants’ argument that safe harbor provisions under the Digital Millennium Copyright Act (DMCA) applied at this stage of the litigation. The DMCA safe harbor is typically an affirmative defense to liability, and for it to apply at the motion to dismiss stage, such defense must be evident on the face of the complaint. The court found that in this case, it was not.

Implications of the Ruling

This decision is relevant to purveyors of online products who face the persistent challenges of online enforcement of intellectual property rights. Remedies against overseas companies in situations such as this are often elusive. The case provides a roadmap of sorts concerning the types of facts that must be asserted to support a claim against an online provider in the position of the Alibaba defendants.

Kelly Toys Holdings, LLC v. 19885566 Store et al., 2023 WL 8936307 (S.D.N.Y. December 27, 2023)

December 20, 2022 Trademarks

Does tagging the wrong account in an Instagram post show actual confusion in trademark litigation?

In a recent trademark infringement case, the court considered whether Instagram users tagging photos of one product with the account of another company’s product was evidence of actual confusion. In this case, the court found that it was not evidence of actual confusion.

Plaintiff makes premium tequila sold in bottles and defendant makes inexpensive tequila-soda product sold in cans. Plaintiff sued defendant for trademark infringement and sought a preliminary injunction against defendant. To support its assertion that it was likely to succeed on the merits of the case, plaintiff argued there was actual confusion among the consuming public. For example, on Instagram, at least 30 people had tagged photos of plaintiff’s products with defendant’s account.

The court found that in these circumstances, particularly where a marketing survey also showed less than 10% of people were confused by the defendant’s mark, that the incorrect tagging did not show actual confusion.

Though the bar for showing actual confusion is low, the court noted that a showing of confusion requires more than a “fleeting mix-up of names” and that confusion must be caused by the trademark used and must “sway” consumer purchase.

In this case, the court found that defendant’s evidence regarding mistaken Instagram tags did not establish a likelihood of trademark confusion that would result in purchase decisions based on the mistaken belief that the defendant’s tequila-soda product was affiliated with the plaintiff. At best, in the court’s view, the plaintiff’s evidence demonstrated a “fleeting mix-up of names,” which was not evidence of actual confusion.

The court likened this case to the recent case of Reply All Corp. v. Gimlet Media, LLC, 843 F. App’x 392 (2d Cir. 2021), wherein “instances of general mistake or inadvertence—without more—[did] not suggest that those potential consumers in any way confused [plaintiff’s] and [defendant’s] products, let alone that there was confusion that could lead to a diversion of sales, damage to goodwill, or loss of control over reputation.”

Casa Tradición S.A. de C.V. v. Casa Azul Spirits, LLC, 2022 WL 17811396 (S.D. Texas, December 19, 2022)

November 14, 2022 Blockchain, Trademarks

Meta prevails in trademark infringement litigation over its logo

In the case of Dfinity Foundation v. Meta Platforms, Inc., the court considered whether the new logo that Meta adopted after its 2021 rebranding infringed upon Dfinity’s trademark. In the infringement litigation that Dfinity brought over the issue, Meta moved to dismiss. The court granted the motion.

Dfinity operates the Internet Computer – a public blockchain network that seeks to provide developers and entrepreneurs with a public compute platform for building websites, enterprise systems and internet services within an open environment. Key to Dfinity’s efforts are “dapps” or decentralized applications. In 2021, the United States Patent and Trademark Office granted Dfinity a registration for the following mark: dfinity

When Meta rebranded in 2021, Mark Zuckerberg indicated, among other things, that the company would work with creators and developers in a decentralized fashion. In connection with the rebranding, Meta adopted and sought registration of this logo: meta logo

Dfinity sued in federal court in California alleging, among other things, trademark infringement. It alleged that the similarities between the marks, coupled with the related services and customer bases, will cause confusion because “consumers will mistakenly believe that Meta and its services … are connected with, sponsored by, affiliated with, or related to Dfinity and the Internet Computer.”

Meta moved to dismiss. In granting the motion to dismiss, the court found that confusion between Meta’s logo and Dfinity’s logo was unlikely as a matter of law.

Similarity of the marks

Employing the “sight, sound, and meaning” test, the court found the marks were dissimilar: Dfinity’s shape was a traditional infinity sign, with the lines crossing at the horizontal and vertical midpoint, rendered in a precise multicolor format that Dfinity instructs users of the logo not to alter. In the court’s view, the Meta logo looks different – while it includes two loops and bears some resemblance to an infinity sign, the lines cross above the vertical midpoint and the two loops are squished into vertical oblong shapes. Meta did not claim color as a feature of its mark.

Relatedness of services

On the question of whether the services provided under the two marks were similar, the court remained neutral. It noted that Dfinity has targeted developers interested in using blockchain to “build websites, enterprise systems and internet services within an open environment.” At the same time, “Meta targets everyone, including developers, some of whom presumably are interested in building their products within, or at least compatible with, such an ‘open environment.'” Meta argued that its products are antithetical to that vision, and there is no indication that it is interested in expanding into the realm occupied by Dfinity and the Internet Computer. But the court found that given Meta’s metamorphosis over the last few years, such a move is not implausible on the pleadings, particularly in light of Zuckerberg’s statement at the launch of the Meta brand.

Sophistication of users

The court then evaluated the types of users that would encounter the Dfinity and Meta logos, and whether, given their level of sophistication, confusion would be likely. The court found that because of the high level of sophistication, it is less likely one would be confused: “That these sophisticated people, immersed in the intricacies of the tech world, would be duped by a logo, particularly one that is not similar in key respects . . . borders on implausible.”

Actual confusion

Next the court considered whether purported instances of actual confusion weighed in favor of Dfinity. In this situation, Dfinity had provided six tweets that purported to show that users were confused. But the court disagreed. First, it noted that because the tweets were in reply to a Dfinity tweet, they did not express how the users would experience an encounter with the mark “organically”. And second, the court found that the content of the tweets indicated the users actually knew the difference between the two enterprises.

Marketing channels

Having found that the parties’ services were not “totally unrelated” at this stage, the court also found that the parties’ marketing channels were similar, but that this factor did not weigh as heavily as the others previously discussed.

Meta’s intent

Though Dfinity alleged “willful and wonton disregard of Dfinity’s established and superior rights” in its trademark, it did not provide evidence of that. And given that the court found the marks to be dissimilar, the court also found that Meta’s intent did not support a finding of likelihood of confusion.

Dfinity Foundation v. Meta Platforms, Inc., 2022 WL 16857036 (N.D. California, November 10, 2022)

Company successfully defends against trade dress and copyright infringement claims over online software tool

trade dress

A federal court in Delaware dismissed most of the intellectual property infringement claims concerning a competing online room-planning software tool. The court held that plaintiff’s trade dress infringement and breach of contract claims failed, and that its copyright infringement claims failed, except for those allegations relating to the copying of computer code.

No trade dress protection where look and feel was functional

On the trade dress claim, plaintiff had identified fifteen elements that formed a cohesive “look and feel” of its software. And the court found – based on extensive use, wide advertisement and appearance in industry publications – that the trade dress had acquired secondary meaning. But the court found that the look and feel was merely functional and not subject to trade dress protection.

Copyright infringement – mixed bag

Similarly, the court dismissed the copyright infringement claim regarding the selection, arrangement and coordination of visual elements of the program. In the court’s view, these elements were merely functional and thus not subject to copyright protection. The court dismissed the copyright infringement claim as well concerning the tool’s graphics. On this point the court was even more bold – it found after a visual comparison of the works that they simply were not similar.

The court allowed the copyright infringement claim concerning the program’s code to move forward. It found that plaintiff had alleged both access and similarity. Plaintiff had also alleged that defendant repeatedly accessed the program to stress test the design, and that there were extensive similarities in the tools’ mechanics. These allegations were enough to survive a motion to dismiss.

Browsewrap not enough

Finally, the breach of contract claim failed, not on the basis of preemption as one might expect, but because the court found plaintiff had not sufficiently alleged that a contract had been formed. Plaintiff asserted that its website’s terms of service prohibited copying of the software, and that defendant’s employees should have been aware of those terms on a browsewrap theory – there was a link to the terms at the bottom of the page. But the court would not find that plaintiff alleged enough facts to plausibly allege that defendant’s employees manifested assent to those browsewrap terms.

Design With Friends, Inc. v. Target Corporation, 2022 WL 4448197 (D. Delaware, September 23, 2022)

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Company president may be liable for vicarious copyright infringement

vicarious liability copyright

Plaintiff sued a company and its president for copyright infringement, over some photos that the company published online. The individual defendant moved to dismiss the claim against him, arguing that the complaint (1) did not plead any facts concerning action that he took, (2) did not try to pierce the company’s corporate veil, and (3) contained no facts to establish that the company is the alter ego of the individual defendant. Plaintiff conceded it was neither pursuing an alter-ego theory nor seeking to pierce the corporate veil. Instead, plaintiff argued that the individual defendant was vicariously liable for the company’s infringement. The court denied the motion to dismiss.

The court looked first to Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005), which provides that one infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it. But then it cited to later Tenth Circuit cases (e.g., Diversey v. Schmidly, 738 F.3d 1196 (10th Cir. 2013)) which state the test for vicarious liability a bit differently. Under Diversey, “[v]icarious liability attaches when the defendant ‘has the right and ability to supervise the infringing activity’ and ‘has a direct financial interest in such activities.” There is no mention of declining to exercise the right to stop or limit the infringement under this test, as there is in Grokster.

The court found that the plaintiff’s claims for vicarious liability against the individual defendant survive because the complaint alleged that defendant was the owner and president of the company, had the ability to supervise and control content on the website, and received a financial benefit from the operation of the website. It rejected the individual defendant’s argument that the claim should fail because there were no allegations that he declined to exercise the right to stop or limit the infringement.

Great Bowery v. Best Little Sites, 2022 WL 2074253 (D. Utah June 9, 2022)

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Can you sue a platform for not following DMCA takedown procedures?

platform DMCA takedown

Plaintiff sued YouTube after the platform took down one of plaintiff’s videos in response to a DMCA takedown notice. She claimed YouTube failed to follow the procedures in 17 U.S.C. §512 by, for example, not providing her with a physical signature of the copyright owner and otherwise not following the “exact course of the DMCA guidelines.” YouTube moved to dismiss and the court granted the motion.

It held that §512 serves to provide safe harbor protections from copyright infringement liability to platforms. Section 512 does not, however, give rise to a standalone basis to sue a platform.

When a copyright owner sends a DMCA takedown notice to a platform, it must include substantially the following:

A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

If the notification does not include substantially these items, then if the platform leaves the content up, the insufficient notification will not be considered to have placed the platform on notice of the alleged infringing activity. So if the copyright holder sues the platform for copyright infringement, it will have to plead other facts showing that the platform is liable for infringement. Relatedly, if the platform acts expeditiously to remove or disable access to allegedly infringing content when it gets knowledge via a valid takedown notice, it will have an affirmative defense to a claim of copyright infringement.

In this case, the court confirmed the notion that the DMCA provides this safe harbor to the platform but does not give the person whose content has been taken down the right to sue the platform. The court does not mention – but it remains relevant – that one whose content has been taken down can seek a remedy under 17 U.S.C. §512(f) against a party who sends a takedown notice while knowingly materially misrepresenting that the content is infringing. But that is not the course plaintiff in this case took – she sued YouTube for not following the requirements that apply to copyright holders. And she lost.

Finley v. YouTube, 2022 WL 704835 (N.D. Cal., March 9, 2022)