USDC, S.D. New York, March 12, 2018

District court dismisses tortious interference counterclaim as pre-empted by Digital Millennium Copyright Act where rapper E-40 issued takedown notices to prevent sale of defendant’s book Captain Save a Hoe, based on E-40’s 1993 hit song of same title.

Earl Stevens, better known professionally as rapper E-40, brought an action for copyright and trademark infringement against author Erika Kane and several publishers, including Vodka & Milk LLC, after defendants published Captain Save a Hoe in 2017, a book that shares the title of Stevens’ 1993 hit song. Stevens issued takedown notices to online retailers directing them to cease sales of the book. Defendants filed a series of counterclaims, including one for intentional interference with contract under New York law, alleging that Stevens’ takedown notices caused the retailers to breach their contracts with defendants and that Stevens knew or should have known that defendants’ book did not infringe his copyright. Stevens argued that the Digital Millennium Copyright Act pre-empted the tortious interference counterclaim.

The district court analyzed the scope of the DMCA’s provisions and remedies, concluding that federal law leaves no room for state tortious interference claims. Section 512(c) of the DMCA creates a notice-and-takedown regime whereby internet service providers have limited protection from liability for infringing material on their sites unless they are notified by copyright holders of the infringing material. An individual who posted content that is subsequently removed by an ISP pursuant to a takedown notice receives an opportunity to contest the removal, and Section 512(g) of the DMCA establishes the process by which the content can be restored to the site. The DMCA also creates liability for individuals or entities that issue misleading takedown notices to ISPs, claiming that innocent content is infringing.

Taking into account the intricate protocol put in place by the DMCA to regulate instances of copyright infringement online, the court concluded that Congress exercised “field pre-emption” here. This occurs when Congress establishes a scope of federal regulation over a particular subject matter that precludes state regulation in the same arena. Here, the DMCA gives those who post online content means to counter unwarranted takedown notices, by contesting removal by the ISPs or by filing actions directly against issuers of fraudulent takedown notices. The court held these remedies to pre-empt defendants’ counterclaim for tortious interference, dismissing the counterclaim with prejudice.