Court Says CrossFit May Have Violated Copyright Act by Basing Takedown Notice on Trademark Rights

The US District Court for the Northern District of California has ruled that the exercise company CrossFit may have violated the Digital Millennium Copyright Act (DMCA) when it submitted a takedown notice to Facebook based on alleged infringement of its trademark rights rather than on a violation of its copyrights.

The case arose out of a dispute between CrossFit and Jennie Alvies, a mother of four. Alvies wrote a blog at the URL and also created a Facebook page called “CrossFit Mamas.” She shared with her readers updates about her high-intensity interval training regimen.

Alvies also used her blog to sell fitness-related products and advertisements using Google AdWords.

CrossFit contacted Alvies and demanded that she stop using their name. Alvies agreed, but CrossFit sued her anyway, alleging causes of action for trademark infringement, trademark dilution, cyberpiracy, and false description of origin.

CrossFit also submitted a takedown notice to Facebook, asking the company to remove Alvies’ page.

Under a “Safe Harbor” provision of the DMCA, an online service provider (OSP) may avoid liability for copyright infringement due to material posted on its site by third parties if the OSP:

  • does not receive a financial benefit directly attributable to the infringing activity,
  • is not aware of the presence of the infringing material, and
  • upon receiving a notice from a copyright owner, acts expeditiously to remove the allegedly infringing material.

Alvies filed a counterclaim against CrossFit alleging that its takedown notice violated the DMCA.

The DMCA imposes liability on a party that knowingly makes a takedown request based on material misrepresentations. Alvies claimed that CrossFit’s claims based on trademark infringement, rather than copyright infringement, were improper under the DMCA.

CrossFit moved to dismiss Alvies’ counterclaim, arguing that Facebook allowed trademark-based takedown notices as well as copyright-based takedown notices. Thus, said CrossFit, Alvies suffered no injury due to the DMCA request because Facebook would have taken her page down anyway.

The court denied CrossFit’s motion, finding that Alvies had a viable claim. The court noted that it could not be assumed that Facebook would necessarily have taken down her page pursuant to a trademark-based takedown request.

If you have questions about takedown requests based on either copyright or trademark law, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

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Photo Attribution: “Force athlétique” by Greg Westfall is licensed under CC BY 2.0.


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