512(f) Claim Against Robo-Notice Sender Can Proceed–Enttech v. Okularity
Okularity “represents” several photography clearinghouses. This means that Okularity’s robots scour the Internet looking for clearinghouse photos and then send automated takedown notices for alleged infringements. “Okularity waits until the notices accumulate to the point when a social media platform disables the infringer’s account before contacting the purported infringer to initiate settlement negotiations.”
In this case, the target was the magazine Paper, and Okularity filed 48 takedown notices against it at Instagram. Instagram disabled the account, causing Paper to lose revenues. Okularity then offered to settle the matter for $1M. Paper asked Okularity for copies of the DMCA notices, but Okularity demanded Paper sign an NDA first. (Really? DMCA takedown notices aren’t confidential at all. Also, I’m not sure why Instagram wouldn’t provide them to Paper upon request. Instagram should join Lumen). For more case background, see the Techdirt writeup.
Paper sued Okularity and related folks for RICO and 512(f). Predictably, the court dismisses the RICO claim. The 512(f) claim, however, survives the motion to dismiss.
First, the court says that a 512(f) claim doesn’t need to establish fraud. Therefore, 512(f) claims are governed by the standard pleading rules in FRCP 8, not the more stringent requirements of FRCP 9(b) that apply to fraud claims.
Second, the court says that Paper properly pled 512(f)’s elements:
- Sending robo-notices may be a knowing and material misrepresentation about the sender’s good faith belief of unauthorized activity. “Read in the light most favorable to Plaintiff, such allegations constitute lack of a subjective good faith belief because if Okularity failed to consider fair use, it could not have formed a good faith belief that the images were infringing.” Cite to the Lenz case. In my blog post on Lenz, I explained why I doubt this angle will prove helpful for 512(f) plaintiffs. If the court concludes that robo-notices categorically don’t comply with Lenz, that would be a big deal. However, the Ninth Circuit refused to take that stance in Lenz, so I doubt that will be the results of this case.
- “Materiality” is shown by Instagram disabling Paper’s account.
- A 512(f) plaintiff doesn’t have to prove it didn’t infringe. Instead, the “only relevant inquiry under DMCA § 512(f) is whether Defendants formed a good faith belief that the images were infringing at the time they sent the take-down notices”
- The defense said it wasn’t sure which 48 notices were at issue in the case. This is an audacious argument because Okularity didn’t provide its notices to Paper (without an NDA, which I would have rejected too). The court is not amused either. It says Okularity obviously knew which notices it was asserting when it demanded a $1M settlement.
So Paper can proceed with its 512(f) case. Nevertheless, given the terrible track record of 512(f) cases to date, I’m skeptical that Paper will win in the end.
UPDATE: In response to a motion to dismiss the third amended complaint, the court doubled down on this ruling in ENTTech Media Group LLC v. Okularity, Inc., 2021 WL 916307 (C.D. Cal. March 10, 2021). The court says: “to plead a claim under § 512(f), it is enough for ENTTech to allege that Defendants did not consider fair use (sufficiently or at all) before issuing the takedown notices….it is generally a factual issue whether the Defendants’ analysis of the alleged infringing material was sufficient” ENTTech did not need to plead with heightened particularity.
Prior Posts on Section 512(f):
* 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