DMCA - Plaintiffs must mind 512(f)

CrossFit, Inc. v. Alvies, 13-3771 SC, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014)

From the court: 

Under the DMCA, specifically 17 U.S.C. 512(f), any person who knowingly materially misrepresents that material infringes on a copyright shall be liable for damages incurred by the alleged infringer.

...

Alvies [in counterclaims] has plausibly alleged that [CrossFit in its Complaint] materially misrepresented that Alvies's Facebook page infringed on a copyright, since CrossFit's claims are based only on its asserted trademark rights. 

...

Alvies's counterclaim for declaratory relief remains undisturbed.

Tushnet:

CrossFit argued that Alvies’s claim for violation of §512(f) should be dismissed.  The DMCA doesn’t provide trademark remedies, but CrossFit’s claims were based on trademark, not copyright.  CrossFit nonetheless argued that Facebook allows trademark takedown notices too.   The court responded: so what?  Alvies plausibly alleged a material misrepresentation of copyright infringement; “[w]hether CrossFit may have been able to convince Facebook to remove Alvies’s page on some other ground has no bearing on CrossFit’s compliance with the DMCA.” CrossFit argued that she wasn’t injured because if it hadn’t submitted a DMCA notice it would have submitted a trademark notice. The court refused to “hypothesize about what Facebook would or would not have done if it had received a trademark takedown notice regarding Alvies’s Facebook page.”