Court Says Takedown Notice May Have Violated DMCA

According to a recent ruling in the US District Court for the Northern District of California, CrossFit may have violated the Digital Millennium Copyright Act (DMCA) by submitting a DMCA takedown request to Facebook based on trademark rights instead of copyrights. The case is a reminder that there are consequences under the DMCA for companies that fail to exercise caution when policing their trademark rights and copyrights on the Internet.

The dispute stems from trademark infringement claims brought by CrossFit, Inc., the developer of the popular exercise program, against a mother of four in California named Jenni Alvies. Alvies ran a blog located at “” and also created a Facebook page called “CrossFit Mamas” where she posted regular updates about her high-intensity interval training exercise routines. Alvies also started using the blog to sell fitness-related products and added advertising through Google AdWords. After CrossFit contacted Alvies to demand that she stop using the CrossFit name, Alvies agreed to change the name of her blog, but CrossFit eventually filed suit anyway on the basis of trademark infringement, trademark dilution, cyberpiracy, and false designation of origin. CrossFit also submitted a request to Facebook pursuant to the DMCA to take down the Facebook page.

After CrossFit filed suit, Alvies brought a counterclaim against the company arguing that its takedown request to Facebook violated the DMCA. Under the DMCA’s “safe harbor” provision, an Internet service provider (such as Facebook) cannot be held liable for copyright infringement as long as it meets certain requirements, including responding “expeditiously” to requests to take down or remove infringing content. However, under another section of the DMCA, 17 U.S.C. § 512(f), a party making a takedown request can be held liable if they knowingly make material misrepresentations in connection with the request. Alvies noted that, because CrossFit’s claims in the takedown request were based on an assertion of trademark rights instead of copyrights, the use of the DMCA was improper and entitled her to damages. In a motion to dismiss Alvies’ counterclaim, CrossFit contended that the claim was implausible because Facebook allows trademark takedown notices as well as DMCA copyright takedown notices. Therefore, according to CrossFit, Alvies was not injured by the DMCA takedown request because Facebook would have taken her page down under its trademark procedures even if it hadn’t done so under the DMCA procedure.

The Court denied CrossFit’s motion to dismiss, finding that Alvies had a viable claim that CrossFit’s takedown request violated the DMCA. In particular, the Court rejected CrossFit’s argument that Alvies suffered no injury from the improper DMCA takedown request because CrossFit could have had the page taken down under a trademark takedown request. The Court said it would not assume that Facebook would have agreed to take the page down if CrossFit had used the proper procedure. Accordingly, the Court allowed the DMCA counterclaim to proceed.

Companies that enforce their trademark rights and copyrights on social media must carefully weigh the pros and cons of the fights they choose to pick. In addition to the potential for negative publicity, companies must ensure that their trademark and copyright prosecution actions are fully compliant with legal and regulatory requirements