asserted in the counter-notice. The plaintiff had pled that that communications between its
representative and the defendant prior to the counter-notice established that the defendant knew
the material had not been removed due to a mistake or misidentification. Specifically, the
amended complaint alleged that the plaintiff’s representative had contacted the defendant several
times to inform him that the “Grandma” song video infringed the plaintiff’s copyright and that
the defendant needed to obtain a license before issuing a counter-notice. The representative had
also explained to the defendant the difference between rights to a copyrighted sound recording
and a copyrighted composition, thereby clarifying to the defendant how the plaintiff could have a
copyright interest in a recording performed by the Irish Rovers. Finally, the defendant had sent
an email to the plaintiff stating “[g]o ahead, contact the Video site managers and get my video
removed.”^2950
The court, however, granted the defendant’s motion to dismiss insofar as it was based on
a statement in the counter-notice that “[n]o sound was copied, no visuals were copied.” The
court found it was clear in context that this statement was referring to the fact that the audio in
the defendant’s video had been performed by the Irish Rovers and not copied from any video of
performance of the Grandma song by the plaintiff. The court also interpreted a related statement
in the counter-notice – that “no part of [the] Grandma video is a copy of any original work made
by Elmo” – in a similar fashion. Accordingly, the court granted the defendant’s motion to
dismiss to the extent the Section 512(f) claim was based on these statements.^2951
(xiv) Rock River Communications v. Universal Music
Group
The case of Rock River Communications, Inc. v. Universal Music Group, Inc.^2952
presented an interesting interpretation of the types of takedown demands to which Section 512(f)
applies. The plaintiff created in 2006 certain remixed recordings of reggae music originally
recorded by Bob Marley and the Wailers between 1969 and 1972. Universal Music Group
controlled the rights to a large percentage of Marley’s recordings and claimed it had acquired an
exclusive interest in the recordings. Universal sent a cease and desist letter to Apple with respect
to the sale of the plaintiff’s album in Apple’s iTunes online store. The plaintiff contended that
Universal’s letter contained knowing misrepresentations that the album was infringing, and that
it was a takedown notice pursuant to Section 512(c)(3) and therefore subject to the prohibitions
of Section 512(f).^2953
The court granted summary judgment to Universal on the Section 512(f) claim on the
ground that the cease and desist letter was not a DMCA takedown notice issued pursuant to
Section 512(c) because it was not directed against materials posted at the direction of users.
Rather, the recordings had been posted on iTunes by Apple, not its users, as Apple chose all
(^2950) Shropshire v. Canning, 809 F. Supp. 2d 1139, 1141, 1148 (N.D. Cal. 2011).
(^2951) Id. at 1149.
(^2952) 2011 U.S. Dist. LEXIS 46023 (C.D. Cal. Apr. 27, 2011).
(^2953) Id. at *2-3, 48-49.