Court Orders Rightsowner to Withdraw DMCA Takedown Notices Sent to Amazon–Beyond Blond v. Heldman

August 22, 2020 · by · in Copyright, E-Commerce, Trademark

This case involves an Amazon seller, the plaintiff, who packages and republishes public domain cartoon videos, like Bugs Bunny, Popeye, and Mighty Mouse. The defendant is a rightsowner who claims that the Amazon seller infringes its rights. On that basis, the rightsowner sent multiple DMCA takedown notices to Amazon. The plaintiff counternoticed, but Amazon rejected the counternotices, so the plaintiff sued.

It appears the rightsowner is claiming copyright and trademark rights in the term “cartoon classics” and an associated logo, both as a word mark and a trademarked and copyrighted logo. The court has many concerns about the logo as a copyright, ranging from whether simple logos are copyrightable at all to whether the copyright registrations of entire videos can be used to protect just the logo on a standalone basis. Thus, the court declares copyright non-infringement.

The court also rejects the trademark claims for the term “cartoon classics.” The court says the phrase is generic because it answers the “what you are” question. The logos were sufficiently dissimilar to defeat the likelihood of confusion analysis:

On that basis, the court declared that the plaintiff wasn’t infringing the rightsowner’s trademark rights.

(There are some Dastar angles about this case. Maybe Rebecca Tushnet will weigh in).

The rightsowner’s DMCA takedown notices hurt the plaintiff because the notices removed the plaintiff’s targeted items from Amazon’s catalog, plus Amazon stopped recommending the plaintiff’s other videos. Having rejected the rightsowner’s copyright and trademark positions, the court grants the following preliminary injunction:

Within 15 days of this Order, Defendants shall notify Amazon that they are withdrawing, without prejudice to re-filing if they ultimately prevail in this lawsuit, their intellectual rights notices or takedown notices involving the following [seven] Amazon Case Numbers…

The withdrawal request should 1) request that Amazon restore Plaintiff’s videos with the same rankings, client reviews, and customer comments as prior to the takedown and 2) include a copy of this Order.

IT IS FURTHER ORDERED that Defendants, and their respective officers, directors, employees, agents, subsidiaries, attorneys, and all persons in active concert or participation with Defendants, are preliminarily enjoined from issuing takedown notices concerning the seven videos described above or otherwise notifying Amazon that Defendants have copyrights or trademarks in the videos offered for sale by Plaintiff and that Plaintiff’s sales violate those copyrights or trademarks.

A few days later, the court revisited the lawsuit. The rightsowner sought to dismiss the plaintiff’s claims for tortious interference, unfair competition, and trade libel because 17 USC 512(f) preempts state law claims. I’ve complained before about this situation–that 512(f) preempts state law claims, but it’s impossible to win 512(f) claims, so the DMCA’s 512(f) statutory scheme leaves the victims of takedown notice abuse WORSE off than if 512(f) didn’t exist. Sadly, this court joins the list of courts concluding that 512(f) preempts state law claims. However, to the extent the rightsowner’s takedown notices were based in whole or in part on trademark interests, 512(f) does not preempt.

So where does this leave the dispute? The plaintiff has already beat back the copyright and trademark bases for the rightsowner’s efforts to shut it down at Amazon–at least for the seven videos, though I suspect the rightsowner might keep harassing the plaintiff regarding other videos–so this has already been a positive move for the plaintiff. But will the plaintiff get any financial relief for the disruption it’s suffered? 512(f) will almost certainly fail and the state law equivalents have been partially knocked out, so it wouldn’t surprise me if the rightsowner walks away from this dispute unscratched. Even so, this case is a good reminder that sending takedown notices is a Big Deal, and not something to be done casually, as they can trigger serious legal consequences with longer-term and potentially expensive effects.

Historical note: This dispute reminded me a little of the horses and bunnies takedown notice palooza at Second Life from a decade ago.

Case citation:

Prior Posts on Section 512(f):

* 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
* 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
* 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
* 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