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Why potential claimants should take care with DMCA takedown demands

Justin Mulligan September 1, 2020
Source: Court Opinion

A recent decision shows why intellectual property owners need to verify the merit of their DMCA takedown notices before making them. Improper DMCA takedown notices can lead to costly litigation and potential liabilities.

The plaintiff in Beyond Blond Productions, LLC v. Heldman is a small business that acquires public domain videos and cartoon classics, makes compilations of them and then lists the works on video streaming platforms, such as Amazon. Between 2017 and 2019, the company uploaded six cartoon classic compilations to Amazon’s Prime Video service.

In March 2020, the defendant submitted takedown notices to Amazon on behalf of ComedyMX, LLC, which ran its own cartoon service, claiming infringement based largely on the similarity of ComedyMX’s logo and plaintiff Beyond Blond’s logo.

In response, Amazon removed the six cartoon compilations, and subscribers were instead directed to Beyond Blond’s competitors.

ComedyMX’s takedown demand was marginal at best. The DMCA, after all, is the Digital Millennium Copyright Act, and copyright doesn’t protect basic names like “Cartoon Classics.”  ComedyMX’s logos were, if anything, trademarks, unprotected by copyright law.

So it wasn’t surprising that Beyond Blond filed counter notifications with Amazon. The DMCA generally requires the challenged works to be restored upon a counter notification, unless the copyright owner brings an infringement suit. However, Amazon did not restore Beyond Blond’s videos and even took down more of its videos.

Beyond Blond then sued the defendant for various tort claims, and asked the court to order its videos restored. In granting preliminary relief, the court found that the defendant was not likely to prevail on its copyright infringement allegations, because its copyright registrations didn’t cover the “cartoon classics” logo. The court also found that the defendant was not likely to prevail on its trademark infringement allegation because the phrase “cartoon classics” is generic and in any event the parties’ logos were sufficiently dissimilar.

Now that Beyond Blond’s videos have been restored, the case is turning in a manner that ComedyMX must now justify initiating the improper takedown notice. As the court order indicated, a copyright owner should think carefully, and be sure it has a valid claim, before submitting a DMCA takedown notice. If not, it can face numerous claims and potential liability in court.

Justin Mulligan is an associate in Thompson Coburn’s Intellectual Property group.