Choosing the correct legal basis for Facebook takedown notices: distinguishing trademark infringements and copyright infringements

business-dreyfus-81-150x150On January 22, 2014, the U.S. District Court for the Northern District of California ruled on whether a takedown notice submitted to Facebook was in violation of the Digital Millennium Copyright Act (DMCA), a US statute enacted in 1998 to combat copyright violations.
CrossFit created a fitness training program and owns the trademark CROSSFIT. Jenni Alvies, without CrossFit’s consent, set up a blog “” and a Facebook page “CrossFit Mamas” on which workout routines and personal comments were posted. In addition, Alvies sold various products through her blog and was remunerated through Google AdWords ads.
After several exchanges, CrossFit sent a takedown notice to Facebook requesting the removal of the contents published on Alvies’ page on the grounds of a violation of the DMCA.
CrossFit eventually decided to sue Alvies before the Courts for trademark infringement. In response, Alvies argued that the DMCA only covers copyright infringements. Thus, by relying on the infringement of its trademark rights, CrossFit submitted an erroneous takedown notice to Facebook. CrossFit, on the other hand, argued that Facebook offers the option to submit notices based on either copyrights or trademark rights.
The District Court rejected CrossFit’s argument. Even though CrossFit did convince Facebook to remove Alvies’ page, the Court did not take this into consideration and highlighted the copyright violation by CrossFit. Besides, the Court found that Alvies, who received income through her Facebook page, would have suffered unreasonable damage due to the unlawful removal of the contents of her page.
Right owners must thus remain vigilant with regards to the wording of, and legal basis used in, takedown notices, to make sure they are not rejected.