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Use of a DMCA Takedown Notice to Enforce a Trademark Could Expose California Business to Sanctions

A California business, alleging that a Facebook page infringed its trademark, sent a takedown notice under the Digital Millennium Copyright Act (DMCA) to Facebook. It then filed suit in federal court against the blogger who created and maintained the page. The blogger filed a counterclaim, alleging in part that the use of a DMCA takedown notice in a trademark claim was materially false, and that the business was therefore liable for damages. A federal judge ruled earlier this year that the blogger had stated a plausible claim and denied the plaintiff’s motion to dismiss that part of the counterclaim. CrossFit, Inc. v. Alvies, No. 4:13-cv-03771, order (N.D. Cal., Jan. 22, 2014).

The plaintiff has developed a well-known fitness program, CrossFit, which includes exercise routines and a certification program for personal trainers. It has registered the word mark CROSSFIT with the U.S. Patent and Trademark Office, and it has filed “intent-to-use” applications for possible future uses of the mark, such as books, apparel and accessories, and computer software. The defendant, described by the court as a “stay-at-home mother of four children,” id. at 2, started a blog using the URL “” and a Facebook page called “CrossFit Mamas.” She posted daily workouts on the blog, and readers posted their progress in the comments. The blog potentially generated revenue from sales of nutritional products on the site and Google AdWords advertising.

A representative of the plaintiff contacted the defendant in May 2013 to demand that she stop using the CrossFit name. The plaintiff moved her blog to the domain “,” but the plaintiff allegedly continued to make demands, including the removal of the AdWords account and the deletion of blog posts covering a two-year period. At some point after the plaintiff first contacted the defendant, it sent a DMCA takedown notice to Facebook requesting removal of the plaintiff’s page.

Service providers that allow users to post material to the internet, such as Facebook, are shielded by the DMCA from liability for users’ copyright infringement, provided that they designate an individual as agent to receive reports of copyright infringement, and that they promptly remove, or disable access to, allegedly infringing material. 17 U.S.C. ยง 512(c). A copyright owner must send the designated agent a “takedown notice” with a description of the material in question and a statement that the information is accurate. Section 512(f) of the DMCA allows an alleged infringer to recover damages, costs, and attorney’s fees if the takedown notice makes material misrepresentations regarding the alleged infringement.

The plaintiff eventually filed suit for trademark infringement and other claims. The defendant counterclaimed, seeking, in part, a declaratory judgment that the plaintiff had violated Section 512(f) by using a takedown notice under the DMCA, which only applies to copyright, for alleged trademark infringement. The plaintiff moved to dismiss the counterclaim, but the court denied the motion. It found that the defendant had “plausibly alleged that [the plaintiff] materially misrepresented that [the defendant’s] Facebook page infringed on a copyright.” CrossFit, order at 5-6. The counterclaim may therefore proceed to discovery and, if necessary, trial.

If you or your business is facing an intellectual property dispute or another business matter, a skilled business and commercial attorney can advise you of your rights and protect your interests. Cirrus Law PC has represented Bay Area businesses since 1976. To schedule an initial confidential consultation to see how we can help you, please contact us today online or at (925) 463-1073.

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