Copyright Owner Enjoined from Sending DMCA Takedown Notices–Biosafe-One v. Hawks

By Eric Goldman

Biosafe-One, Inc. v. Hawks, 2007 WL 4212411 (S.D.N.Y. Nov. 29, 2007)

This case involves competitors in the septic system cleaning products business (a topic of apparent personal interest to William Patry). Defendant acted as the plaintiff’s mortgage broker and then, 18 months later, launched a competing business. The correlation is a little suspicious on its face, and the plaintiff believed there was causality: the plaintiff alleges that the defendants impermissibly used data from the mortgage application (and supporting documentation) to help launch the rival. Unfortunately for the plaintiff, the court concluded that this argument wasn’t credible.

The plaintiff also claimed that the defendant cut and paste content from the plaintiff’s website to the defendant’s website. The defendant admitted to copying some text, but that text has been removed, and the court deemed it inconsequential, so the court denied the plaintiff’s preliminary injunction request. Patry and Brown discuss this in a little more detail.

As part of its attack on the defendants’ competing website, the plaintiff sent DMCA takedown notices to the defendants’ web hosts, both of whom complied. In response, the defendant moved its hosting offshore (thus out of reach of the takedown notices, but at a higher cost), and as a counterclaim brought a 512(f) claim for false takedown notices. The court rejects that claim because the plaintiff had some justification for the takedown notices; after all, the defendant had copied some material. As the court says: “Defendants have not submitted any evidence that plaintiffs were aware or understood that they were misrepresenting the fact that defendants’ website was infringing when they filed their notices. Plaintiffs have submitted ample evidence in their moving papers and by Jorgensen’s testimony that they believed, and continue to believe, that defendants’ website violated their copyright when they filed the notices.”

In addition to the 512(f) claim, the defendants sought an injunction against future takedown notices and an order that one of the web hosts restore service. The court granted both. With respect to the injunction, the court says “if plaintiffs continue to send DMCA notices defendants will be burdened, financially and otherwise, with arranging for alternative companies to host their website outside the country. A preliminary injunction barring plaintiffs from sending additional DMCA notices, absent court approval, however, would impose little or no burden on plaintiffs.”

To my knowledge, this is the first time a court has enjoined the delivery of future takedown notices (please email me if I’m forgetting something). Removing the plaintiff’s ability to seek extra-judicial recourse is a pretty powerful remedy, making it a potentially very useful tool to combat takedown notice abuses. Perhaps this will become standard relief sought by defendants–at least during the pendency of an action, when the court is being asked to evaluate the merits of the copyright complaint. In this sense, I’m reminded a little of how UDRPs go on hold once a case goes to court; the extra-judicial process is no longer appropriate once the parties are squaring off in court.

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