Plaintiffs Make Some Progress in 512(f) Cases

This post recaps some recent 512(f) cases that have hit my alerts. Surprisingly, all of the decisions involve a positive ruling for the plaintiff, which is different from the typical past outcomes. Maybe the jurisprudential tide is turning?

Bungie, Inc. v. Minor, 2024 WL 965010 (W.D. Wash. March 6, 2024)

Bungie makes videogames, including Destiny 2. Bungie encourages fan engagement with its copyrighted material, subject to some limits. If the engagement exceeds those limits, Bungie issues DMCA takedown notices. Bungie sent a takedown on Minor’s YouTube video, even though it had been online for 8 years. In retaliation, Minor created an account pretending to be a Bungie employee and issued 96 unauthorized takedown notices to YouTube targeting Destiny 2 fan engagement. Unsurprisingly, Minor’s takedown notices caused consternation in the Destiny 2 community. “Minor has admitted he “gravely messed up and fully accept[s] that this is [his] fault.”…Minor has admitted he was “oblivious to the reprehensible damages [he] was causing to the community.””

For reasons that are unclear to me, the case proceeded to an uncontested summary judgment, rather than settling. With Minor’s admissions (sufficient to overcome the otherwise typically insurmountable 512(f) scienter requirements), lack of opposition, and extreme facts, this turns into an easy 512(f) win for Bungie:

The undisputed record before the Court shows that Minor violated the DMCA by knowingly, intentionally, and materially misrepresenting to YouTube that the takedown notifications were authorized by Bungie and that the material itself was infringing. Bungie has provided evidence that the materials at issue did not violate its IP Policy, and that the DMCA notices were not properly issued. And, crucially, Minor admits that he had no authority to issue the notices, that he intentionally and knowingly issued the notices, and that he “gravely messed up.” The evidence here shows that the violations of Section 512(f) were intentional, and that Minor lacked a subjective, good faith belief that the targeted material was infringing. Bungie has also provided evidence that the fraudulent notices harmed its reputation and caused it to devote significant resources to attempt to remediate the harm.

512(f) wins are so rare that each one is noteworthy. But Minor’s wrongheaded vigilante efforts aren’t likely to occur often in other cases, so this may be a unique one-off. The parties quickly settled after this ruling (why did they wait?).

MFB Fertility, Inc. v. Action Care Mobile Veterinary Clinic, LLC, 2024 WL 1719347 (N.D. Ill. April 22, 2024)

The parties both sell tests for determining when a woman is ovulating. MFB sent takedown notices to Amazon alleging Action Care infringed its copyrights in its FAQs and similar disclosures 🙄. Amazon immediately took down Action Care’s product listing page, and 174 units got stranded or lost. Action Care counternoticed. MFB then sued Action Care for copyright and trademark infringement, including this chart of alleged infringement:

Seriously? The copyright claim is easily dismissed: “To the extent that Action Care has directly copied from MFB, its copying is limited to fragments that are descriptive of its product and is compelled by the legislature.”

Action Care counterclaimed for 512(f) and other things. The court unusually bends 512(f)’s knowledge standard, saying that willful blindness could suffice. (Yay for the broader standard, but boo for more embrace of the “willful blindness” standard). With that relaxed scienter standard, which essentially becomes an objective standard instead of Rossi’s subjective scienter standard, Action Care survives the motion to dismiss:

a DMCA notice submitter like MFB must proactively consider the potential that similarities in materials are unprotectable. Failure to do so can form the basis of a finding of willful blindness and, therefore, knowledge for purposes of Section 512(f). Action Care alleged that MFB’s takedown notice misrepresented that it maintained a subjective good-faith belief that Action Care copied “all” of MFB’s wording because there is no genuine indication that Action Care copied MFB beyond what was medically and legally necessary. Given the discrepancy between “all” and, apparently, no copying, there is a triable issue as to whether the MFB formed a subjective good faith belief that Action Care’s sale of its OvoProof was infringing, or if instead MFB were willfully blind to the fact that Action Care was not infringing in violation of 512(f).

The court also survives Action Care’s defamation and tortious interference claims, both predicated on MFB’s DMCA takedown notice to Amazon. The court doesn’t acknowledge the cases saying that 512(f) preempts state law claims.

Doeman Music Group Media and Photography LLC v. DistroKid LLC, 2024 WL 1703117 (S.D.N.Y. April 17, 2024)

The case involves George’s 3 second vocal contribution to a song. George was paid for her contribution, got named in the song credits, and allegedly operated under the direction of the song creator (but apparently without a license?). George later demanded that her name be removed from the credits. When rebuffed, George sent takedown notices to various services, claiming copyright ownership of the song. (Wow, this is a deja vu of Innocence of Muslims). The record label sued George for 512(f).

Apparently George doesn’t maintain a regular physical address, so the record indicates that attempts to serve her were dubious–but apparently good enough for the court, who proceeded to a default judgment even though we have no reason to believe George ever knew about the lawsuit. 🤷‍♂️

The court’s analysis:

Plaintiff alleged that prior to making a takedown notification, Ms. George had communicated to Mr. Wilson that if he did not remove her name as a featured artist on the relevant song, she would “issue a take down.” Plaintiff further alleged that Mr. Wilson had “asserted [to Ms. George] that [she] could not submit a takedown because he was the rightful copyright owner, [and] Ms. George responded by blocking [him].” Plaintiff further alleged that “Ms. George falsely represented [in the takedown request] that she was the copyright holder of the song.” Plaintiff alleged that “Ms. George’s [takedown request] knowingly misrepresented that [Plaintiff’s song] was infringing,” and that “Ms. George was and is well aware that [Plaintiff] and Mr. Wilson had the rights in [the song]—and she did not care but rather acted out of personal animus and spite.” As such, Plaintiff has adequately alleged that Ms. George made a knowing misrepresentation in the takedown notification….

the Complaint and the documentary evidence provide for a reasonable inference that certain streaming platforms and stores removed or disabled access to Plaintiff’s song in reliance on Ms. George’s takedown request(s). The Complaint in combination with Mr. Wilson’s declaration—which describes the lost streams, lost performances, and other damages incurred as a result of the song being removed from streaming platforms and stores—sufficiently establishes the elements of the claim and that some amount of damages were suffered.

As an outsider to the case, it seems possible that George retained copyright ownership of the 3-second vocal clip. If so, her takedown notices would be legitimate. I would argue that a 3-second clip typically isn’t eligible for copyright protection at all, and George may have granted express or implied licenses to use it, but the court didn’t engage with any of these nuances at all.

Source Capital Funding Inc. v. Barrett Financial Group, LLC, 2024 WL 1856552 (D. Ariz. April 29, 2024)

Prior blog post. The court says Source Capital sufficiently alleged “that the takedown notices caused Google to delist and deindex several of its most important websites, resulting in economic harm.” More surprising is that the plaintiff pleaded sufficient scienter:

the SAC has sufficiently pleaded facts to support a plausible inference that Search Control knew the DMCA notices were false when it sent them. The SAC now alleges that Search Control “maintained and built portions of” Barrett’s websites and “obtained the banner and text from Source Capital’s websites.” Therefore, it is plausible that Search Control knew, contrary to its representations in the DMCA notices, that Source Capital was not copying the banner and text from Barrett

This is an unexpected result on two levels. First, it’s hard to allege subjective scienter without a smoking gun. Here, the judge makes some big plaintiff-favorable inferences. Second, the judge had dismissed a prior version of the complaint for inadequate pleading, so the plaintiff was able to turn this around in an amended complaint and revive the claim. I am not sure the plaintiff will win in the end, but they are making more progress than expected.

Prior Posts on Section 512(f)

* 512(f) Doesn’t Restrict Competitive Gaming of Search Results–Source Capital v. Barrett Financial
* 512(f) Once Again Ensnared in an Employment Ownership Dispute–Shande v. Zoox
* Surprise! Another 512(f) Claim Fails–Bored Ape Yacht Club v. Ripps
* You’re a Fool if You Think You Can Win a 512(f) Case–Security Police and Fire Professionals v. Maritas
* 512(f) Plaintiff Must Pay $91k to the Defense–Digital Marketing v. McCandless
* Anti-Circumvention Takedowns Aren’t Covered by 512(f)–Yout v. RIAA
* 11th Circuit UPHOLDS a 512(f) Plaintiff Win on Appeal–Alper Automotive v. Day to Day Imports
* Court Mistakenly Thinks Copyright Owners Have a Duty to Police Infringement–Sunny Factory v. Chen
* Another 512(f) Claim Fails–Moonbug v. Babybus
* A 512(f) Plaintiff Wins at Trial! –Alper Automotive v. Day to Day Imports
* Satirical Depiction in YouTube Video Gets Rough Treatment in Court
* 512(f) Preempts Tortious Interference Claim–Copy Me That v. This Old Gal
* 512(f) Claim Against Robo-Notice Sender Can Proceed–Enttech v. Okularity
* Copyright Plaintiffs Can’t Figure Out What Copyrights They Own, Court Says ¯\_(ツ)_/¯
* A 512(f) Case Leads to a Rare Damages Award (on a Default Judgment)–California Beach v. Du
* 512(f) Claim Survives Motion to Dismiss–Brandyn Love v. Nuclear Blast America
* 512(f) Claim Fails in the 11th Circuit–Johnson v. New Destiny Christian Center
* Court Orders Rightsowner to Withdraw DMCA Takedown Notices Sent to Amazon–Beyond Blond v. Heldman
* Another 512(f) Claim Fails–Ningbo Mizhihe v Doe
* Video Excerpts Qualify as Fair Use (and Another 512(f) Claim Fails)–Hughes v. Benjamin
* How Have Section 512(f) Cases Fared Since 2017? (Spoiler: Not Well)
* Another Section 512(f) Case Fails–ISE v. Longarzo
* Another 512(f) Case Fails–Handshoe v. Perret
* A DMCA Section 512(f) Case Survives Dismissal–ISE v. Longarzo
* DMCA’s Unhelpful 512(f) Preempts Helpful State Law Claims–Stevens v. Vodka and Milk
* Section 512(f) Complaint Survives Motion to Dismiss–Johnson v. New Destiny Church
* ‘Reaction’ Video Protected By Fair Use–Hosseinzadeh v. Klein
* 9th Circuit Sides With Fair Use in Dancing Baby Takedown Case–Lenz v. Universal
* Two 512(f) Rulings Where The Litigants Dispute Copyright Ownership
* It Takes a Default Judgment to Win a 17 USC 512(f) Case–Automattic v. Steiner
* Vague Takedown Notice Targeting Facebook Page Results in Possible Liability–CrossFit v. Alvies
* Another 512(f) Claim Fails–Tuteur v. Crosley-Corcoran
* 17 USC 512(f) Is Dead–Lenz v. Universal Music
* 512(f) Plaintiff Can’t Get Discovery to Back Up His Allegations of Bogus Takedowns–Ouellette v. Viacom
* Updates on Transborder Copyright Enforcement Over “Grandma Got Run Over by a Reindeer”–Shropshire v. Canning
* 17 USC 512(f) Preempts State Law Claims Over Bogus Copyright Takedown Notices–Amaretto v. Ozimals
* 17 USC 512(f) Claim Against “Twilight” Studio Survives Motion to Dismiss–Smith v. Summit Entertainment
* Cease & Desist Letter to iTunes Isn’t Covered by 17 USC 512(f)–Red Rock v. UMG
* Copyright Takedown Notice Isn’t Actionable Unless There’s an Actual Takedown–Amaretto v. Ozimals
* Second Life Ordered to Stop Honoring a Copyright Owner’s Takedown Notices–Amaretto Ranch Breedables v. Ozimals
* Another Copyright Owner Sent a Defective Takedown Notice and Faced 512(f) Liability–Rosen v. HSI
* Furniture Retailer Enjoined from Sending eBay VeRO Notices–Design Furnishings v. Zen Path
* Disclosure of the Substance of Privileged Communications via Email, Blog, and Chat Results in Waiver — Lenz v. Universal
* YouTube Uploader Can’t Sue Sender of Mistaken Takedown Notice–Cabell v. Zimmerman
* Rare Ruling on Damages for Sending Bogus Copyright Takedown Notice–Lenz v. Universal
* 512(f) Claim Dismissed on Jurisdictional Grounds–Project DoD v. Federici
* Biosafe-One v. Hawks Dismissed
* Michael Savage Takedown Letter Might Violate 512(f)–Brave New Media v. Weiner
* Fair Use – It’s the Law (for what it’s worth)–Lenz v. Universal
* Copyright Owner Enjoined from Sending DMCA Takedown Notices–Biosafe-One v. Hawks
* New(ish) Report on 512 Takedown Notices
* Can 512(f) Support an Injunction? Novotny v. Chapman
* Allegedly Wrong VeRO Notice of Claimed Infringement Not Actionable–Dudnikov v. MGA Entertainment