United States: "Facebook Said I Could" Defense Fails To Justify Digital Millennium "Trademark" Notice

Last Updated: February 26 2014
Article by David A. Kluft

CrossFit, Inc., the fitness training company, licenses its trademarked name and goodwill to over eight thousand affiliates worldwide at $3,000 per year per affiliate. When non-affiliate Jenni Alvies began posting on Facebook about fitness under the name "Crossfit Mamas" (including selling exercise apparel bearing the same name), CrossFit felt Alvies was infringing its mark.

So CrossFit did what anyone would do in this day and age. A CrossFit paralegal reviewed Facebook's infringement policy and then sent Facebook a takedown notice pursuant to the Digital Millennium Copyright Act (DMCA), demanding that all materials related to the trademark infringement be removed. Facebook complied and suspended the page.

What's that you say? You didn't know the DMCA applied to trademarks? Well, maybe it doesn't, but the DMCA is a quick way to get infringing material taken down from the internet, and Facebook didn't seem to mind. So what's the harm?

CrossFit may be about find out.

When CrossFit sued Alvies for trademark (and not copyright) infringement in the Northern District of California, Alvies snapped back with a counterclaim for damages under Section 512(f) of the DMCA. As we have previously discussed in some detail, this section imposes civil liability (including damages and attorneys' fees) on a party whose DMCA takedown notice "knowingly materially misrepresents" that copyright infringement has occurred. According to Alvies, because CrossFit never accused her of copyright infringement, purporting to issue a takedown notice under the provisions of the Digital Millennium Copyright Act was a knowing material misrepresentation.

CrossFit moved to dismiss the counterclaim. According to CrossFit, Facebook policy allows both copyright and trademark violations to be reported and taken down. CrossFit could have issued a notice that was pursuant only to this policy and had Alvies' page suspended without any muss or fuss. So, even if CrossFit's takedown notice mistakenly invoked the DMCA instead of Facebook's policy, this mistake caused no harm because either way the page would have been suspended.

But Judge Samuel Conti disagreed and refused to dismiss the Section 512(f) counterclaim. According to Judge Conti, the "Facebook said I could" defense is a non-starter. "Whether CrossFit may have been able to convince Facebook to remove Alvies' page on some other ground has no bearing on CrossFit's compliance with the DMCA."

Barring an early settlement, the parties presumably will now head to discovery.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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