11th Circuit UPHOLDS a 512(f) Plaintiff Win on Appeal–Alper Automotive v. Day to Day Imports

I’m going on a limb and saying that I believe this is the first appellate court upholding a 512(f) plaintiff win. The closest plaintiffs have gotten in the past is the Ninth Circuit’s Lenz case, which had plaintiff-favorable language but did not rule on the merits (that case eventually settled). Here, the 11th Circuit, in a per curiam unpublished decision, upholds the plaintiff’s 512(f) win at trial and greenlights the plaintiff for damages, costs, and possibly attorneys’ fees. However, for reasons I’ll explain below, this case does not portend future 512(f) successes.

The Lower Court Ruling

This is a messy case with complex facts. Start with my prior blog post. The case involves stickers for automobile climate control dashboards. The Copyright Office registered this work:

The registration makes sense with the landscape backgrounds. But the rightsholder asserted its rights against dashboard stickers without the background, including sending repeated takedown notices to Amazon targeting a rival seller. (I’m simplifying a lot–see my prior blog post for the gory details). Even though the rival successfully counternoticed each time, its items were down for a total of 44 days.

The lower court took the unusual step of saying that the sender’s “willful blindness” would satisfy 512(f)’s stringent scienter requirements. The court said that the sender’s fourth notice met that scienter requirement (the first three did not). This led to a rare 512(f) win at trial. The court then awards damages of about $400 (not a typo).

The Appellate Ruling

In my prior post, I raised the concern that “willful blindness” was not the standard scienter requirement for 512(f), so that could be vulnerable on appeal. As it turns out, the parties stipulated pre-trial that the willful blindness standard would apply to the case. I’m not sure how that deal came about, but from my outsider’s perspective without having all of the facts, that looks like a mistake on defense counsel’s part. Most 512(f) cases have failed because the scienter standard is so high, so any concession on scienter opens up the door more widely than it needed to be.

In any case, it makes for an easy question for the appellate court, which says it will not second-guess the parties’ stipulation. Does this mean that willful blindness is the right standard for future cases? The appellate panel doesn’t need to decide that question; instead, it murkily says “Nor was it manifestly unjust to use a willful blindness standard because we have adopted that doctrine to show knowledge in other intellectual property cases.” If willful blindness becomes the prevailing scienter standard for 512(f) cases, that would be noteworthy because  (as I wrote in my prior post) it would “open up the door for the judge to evaluate the defendant’s behavior objectively despite the Rossi case.”

The appellate panel says that the district court had sufficient evidence to find the defense engaged in willful blindness in this case.

Implications

So where does this ruling leave 512(f) jurisprudence? Plaintiffs now can point to a 512(f) win at trial and on appeal, with a potentially lightened scienter requirement and a grant of damages. But who thinks the plaintiff got a good outcome in court here? $400 in damages after 4 years of litigation won’t put a smile on anyone’s face. I also doubt future 512(f) defendants will stipulate to the willful blindness standard, and we don’t know if other courts will adopt the standard based on the 11th Circuit’s squishy endorsement in an unpublished opinion. So it’s hard to see how this outcome hearkens a new era of 512(f) jurisprudence.

[UPDATE: The district court awarded the plaintiff $273k of attorneys’ fees (2022 WL 3904327) and costs of $10k (2022 WL 3904329). This demonstrates how the parties were really fighting over attorneys’ fees, not damages, and I’m a little surprised the court didn’t have problems with the sheer mismatch of damages and attorneys’ fees. Further, the plaintiff asked for over $350k, so we don’t know if the plaintiff’s lawyer feels fully compensated. Because the attorneys’ fee award presumably compensates the lawyer and not the plaintiff, it doesn’t change the $400 calculus for the plaintiff.]

Case citation: Alper Automotive, Inc. v. Day to Day Imports, Inc., 2022 WL 3418643 (11th Cir. Aug. 17, 2022)

Prior Posts on Section 512(f)

* 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