USDC, C.D. California, February 2, 2018

District Court denies defendants’ motion to dismiss plaintiff’s claim for relief under DMCA, finding that plaintiff does not need to be copyright owner in order to sue for false copyright takedown notice.

Plaintiff ISE Entertainment Corp. is the owner, creator and copyright holder of the television series “The Weekend in Vegas,” which aired on the ABC affiliate station in Las Vegas and was available for download on Amazon.com. Defendant Jeff Civillico is the co-producer and host of the television series, and defendant Gerald A. Longarzo Jr. is Civillico’s attorney.

On Aug. 18, 2017, Amazon Video Direct sent an email to ISE indicating Amazon Video had received a complaint from Longarzo, Civillico’s attorney, claiming that the distribution of “The Weekend in Vegas” was not properly authorized by the appropriate rights holder. As a result, Amazon suspended distribution of the series. ISE filed an action against defendants asserting four causes of action: a claim for declaratory relief, damages for false notice pursuant to the Digital Millennium Copyright Act, breach of contract and fraud.

Defendants moved to dismiss plaintiff’s claims.

The court first addressed the claim for damages for false notice pursuant to DMCA. ISE alleged that when defendants filed the notice with Amazon, they could not have reasonably believed that ISE did not hold the copyright to the television series. By filing the notice, ISE claimed, defendants knowingly misrepresented that the distribution constituted copyright infringement, in violation of DMCA.

Defendants countered that ISE never registered “Weekend in Vegas” for copyright protection and had no standing to make a DMCA claim under Section 512(f). The court disagreed, siding with ISE: “Based upon the plain language of the statute — which provides that an ‘alleged infringer,’ among others, may recover damages when it is harmed by a fraudulent takedown notice . . . the Court concludes that neither copyright ownership nor registration are prerequisites to bringing a section 512(f) action.” As an “alleged infringer,” ISE had standing to sue under Section 512(f).

Defendants next argued that, because ISE was not in possession of Longarzo’s communication to Amazon, ISE had not plausibly alleged that Amazon removed “Weekend in Vegas” as a result of a DMCA takedown notice. The court quickly rejected this claim, holding it would make little sense to require a plaintiff to plead what a defendant did or did not include in their communications with an internet service provider.

The court denied defendants’ motion to dismiss, concluding that ISE had standing to bring its DMCA claims and had stated a viable Section 512(f) claim.

The court granted defendants’ motion to dismiss ISE’s claim for breach of contract, holding that the state law claim was pre-empted by the Copyright Act, because the rights ISE asserted in connection with its breach of contract claim are equivalent to rights conferred by the Copyright Act. It also dismissed ISE’s claim for fraud, noting that to establish the claim, the misrepresentation must be made to plaintiff rather than to some third party, and plaintiff must have relied upon the misrepresentation to its detriment. In this case, however, plaintiff’s fraud claim was entirely premised upon allegedly false statements made to Amazon, not to the ISE.

Lastly, the court dismissed ISE’s claim for declaratory relief because a plaintiff, through a declaratory relief claim, may not seek resolution of issues that will necessarily be decided in connection with its other substantive claims. ISE had a viable substantive claim under DMCA Section 512(f), and to resolve that claim the court would need to determine who has rights to the television series.