Court docket Order Rightholder to Revoke DMCA Takedown Notifications to Amazon – Past Blond v. Heroman
In this case, it's an Amazon seller, the plaintiff, who is packaging and republishing cartoon public domain videos like Bugs Bunny, Popeye, and Mighty Mouse. The defendant is a rights holder who claims that the Amazon seller is violating their rights. Based on this, the rights holder has sent several DMCA deactivation notifications to Amazon. The plaintiff noted, but Amazon denied the contraindications, so the plaintiff sued.
It appears that the rights holder claims copyrights and trademarks to the term "cartoon classic" and an associated logo, both as a word mark and as a trademarked and copyrighted logo. The court has many concerns about the logo as copyright, ranging from the question of whether simple logos are copyrighted at all to the question of whether the copyright registrations of entire videos can be used to protect only the logo on its own. Thus the court declares that the copyright has not been infringed.
The court also rejects the trademark claims for the term “cartoon classics”. The court says the phrase is generic because it answers the question "What are you?" The logos were so different that the likelihood of a mix-up analysis was negated:
On this basis, the court stated that the plaintiff did not infringe the trademark rights of the rights holder.
(There are some dastar angles on this case. Maybe Rebecca will weigh Tushnet).
The rightsholder's DMCA deactivation notifications harmed the plaintiff because the notifications removed the plaintiff's target items from the Amazon catalog and Amazon no longer recommended the plaintiff's other videos. After the court has denied the copyright and trademark positions of the rights holder, it issues the following injunction:
Within 15 days of this ruling, Defendants notify Amazon that, without prejudice to the re-filing, if they ultimately prevail on this lawsuit, they will withdraw their intellectual property notices or deregistrations with the following (seven) Amazon case numbers …
The withdrawal request should 1) ask Amazon to restore the plaintiff's videos with the same rankings, customer ratings, and customer comments as they were prior to dismantling, and 2) include a copy of that order.
IT IS FURTHER ORDERED that Defendants and their respective officers, directors, employees, agents, subsidiaries, attorneys, and any person who actively collaborates with or participates in Defendants, provisionally refrain from posting notices through the seven videos or videos described above of any other notification from Amazon that the defendants have copyrights or trademarks in the videos offered for sale by the plaintiff and that the sales of the plaintiff infringe those copyrights or trademarks.
A few days later, the court retried the lawsuit. The rights holder attempted to dismiss plaintiff's claims of illicit interference, unfair competition, and commercial defamation based on 17 USC 512 (f) anticipating claims under state law. I've previously complained about this situation – that 512 (f) anticipates claims under state law, but it is impossible to win 512 (f) claims, so legal system 512 (f) of the DMCA is the victims of abuse of Leaves shutdown messages WORSE than if 512 (f) did not exist. Unfortunately, this court joins the list of courts that conclude that 512 (f) precludes state legal claims. To the extent that the rights owner's acceptance notices were based in whole or in part on trademark interests, 512 (f) is not excluded.
So where is the argument? Plaintiff has already beaten back the copyright and trademark bases for the rights owner's efforts to shut it down on Amazon – at least for the seven videos, although I suspect the rights holder continues to harass the plaintiff over other videos – so this is already positive was move for the plaintiff. But will the plaintiff receive financial relief for the disorder he suffered? 512 (f) will almost certainly fail and the equivalents of state law have been partially eliminated. So I wouldn't be surprised if the rights holder leaves this dispute unscratched. Nonetheless, this case is a good reminder that sending acceptance notices is a big deal and doesn't have to be done casually as it can have serious legal ramifications with longer term and potentially expensive implications.
Historical note: This argument reminded me a little of the horses and rabbits that saw Palooza on Second Life a decade ago.
Previous contributions to Section 512 (f):
* Another 512 (f) claim fails – Ningbo Mizhihe versus Doe
* Video excerpts are deemed fair use (and another 512 (f) claims fail) – Hughes v. Benjamin
* How have the cases in Section 512 (f) developed since 2017? (Spoiler: Not good)
* Another section 512 (f) fails – ISE v Longarzo
* Another 512 (f) case fails – glove v. Perret
* A DMCA section 512 (f) survives layoff – ISE vs Longarzo
* DMCAs unhelpful 512 (f) prevents helpful state legal claims – Stevens vs Vodka and Milk
* Section 512 (f) appeal survives motion to reject – Johnson v New Destiny Church
* "Reaction" video protected by fair use – Hosseinzadeh v. Small
* 9. Fairly used advertising pages in the dancing baby takedown case
* Two 512 (f) judgments in which the litigants contest copyright
* To win a 17 USC 512 (f) Case-Automattic against Steiner, a standard judgment is required
* Vague takedown notice targeting Facebook pages leads to potential liability – CrossFit vs Alvies
* Another claim of 512 (f) fails – Tuteur versus Crosley-Corcoran
* 17 USC 512 (f) is dead – Lenz versus Universal Music
* 512 (f) Plaintiff cannot make any discovery to support allegations of false shutdowns – Ouellette v Viacom
* Updates to cross-border copyright enforcement on "Grandma Was Run Over by a Reindeer" – Shropshire v. Canning
* 17 USC 512 (f) Prevents state legal claims for fake copyright removal notices – Amaretto vs. Ozimals
* 17 USC 512 (f) claim against "Twilight" studio survived motion for rejection – Smith v Summit Entertainment
* The Cease & Desist letter to iTunes is not covered by 17 USC 512 (f) – Red Rock versus UMG
* Copyright takedown notice can only be implemented if there is an actual takedown amaretto against Ozimals
* Second Life was instructed to disregard a copyright holder's takedown notice – Amaretto Ranch Breedables v. Ozimals
* Another copyright owner sent a notice of improper dismantling and faced 512 (f) Liability – Rosen vs HSI
* Furniture dealers excluded from sending eBay VeRO communications – Design Furnishings v. Zen Path
* YouTube uploader cannot sue sender for incorrect takedown notification – Cabell v. Zimmerman
* Rare Decision on Damage When Sending Fake Copyright Takedown Notice – Lenz v. Universal
* 512 (f) lawsuit dismissed on grounds of jurisdiction – Project DoD v Federici
* Dismissed Biosafe-One against Hawks
* Michael Savage takedown letter could violate 512 (f) – Brave New Media v Weiner
* Copyright holder of 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 false VeRO notification of an alleged non-appealable violation – Dudnikov v MGA Entertainment