DMCA takedown notice to Facebook. The defendant asserted that CrossFit’s invocation of the
DMCA was improper and misleading because CrossFit’s claims were based on the assertion of
trademark rights, not copyrights.^2981
CrossFit moved to dismiss the counterclaim, arguing that the defendant’s claim was
implausible because Facebook allowed trademark takedown notices as well as DMCA copyright
takedown notices. The court rejected the argument. As an initial matter, the court found it
unclear why it should take judicial notice of Facebook’s internal compliance procedures, which
was not a fact generally known within the court’s discretion. But even if judicial notice were
appropriate, the court found the defendant had plausibly alleged that CrossFit materially
misrepresented that the defendant’s Facebook page infringed on a copyright, since CrossFit’s
claims were based only on its asserted trademark rights. Whether CrossFit may have been able
to convince Facebook to remove the defendant’s page on some other ground had no bearing on
CrossFit’s compliance with the DMCA.^2982
CrossFit also contended that the defendant’s counterclaim failed because she was not
injured by the DMCA takedown notion. CrossFit argued that if it had not submitted a DMCA
takedown notice, it could have submitted a trademark takedown notice that would have had the
same effect. The court rejected this argument, finding that, essentially, CrossFit was asking the
court to find that the defendant’s Facebook page infringed on CrossFit’s trademarks, and had
CrossFit submitted a trademark takedown notice, Facebook would have removed the defendant’s
page. The court noted that it could not adjudicate the merits of CrossFit’s trademark claims on a
motion to dismiss the defendant’s counterclaim, let alone hypothesize about what Facebook
would or would not have done if it had received a trademark takedown notice regarding the
defendant’s Facebook page. Accordingly, the court denied CrossFit’s motion to dismiss.^2983
(5) Other ProvisionsSection 512(g) provides that a Service Provider shall not be liable for the good faith
disabling of access to or removal of material or activity claimed to be, or appearing from the
facts and circumstances to be, infringing (regardless of whether the material or activity is
ultimately determined to be infringing). However, if such removal is taken pursuant to a notice
given to the Service Provider pursuant to the provisions of the third safe harbor (which will be
referred to herein as the “safe harbor notice”), then Section 512(g)’s limit on liability is
conditioned upon compliance with the following. The Service Provider must (i) take reasonable
steps to promptly notify the subscriber that it has removed or disabled access to the subscriber’s
allegedly infringing material; (ii) upon receipt of a counter notification from the subscriber
stating under penalty of perjury that it has a good faith belief that the materials were removed or
disabled as a result of mistake or misidentification of the material, provide the person who
submitted the safe harbor notice with a copy of the counter notification and inform that person
that the Service Provider will replace the removed material or cease disabling access to it in ten
(^2981) Id. at 2-5, 6-7.
(^2982) Id. at 6-7.
(^2983) Id. at *7-8.