Using a DMCA takedown notice to assert a trademark claim may lead to section 512(f) liability

In 2011, Jenni Alvies launched a blog at "crossfitmamas.blogspot.com" and created a "CrossFit Mamas" Facebook page, where she posted exercise routines and related information. Alvies' use of the term "CrossFit" came to the attention of CrossFit, Inc. ("CrossFit"), which is in the business of developing fitness-training regimens and certifying personal trainers.

CrossFit demanded that Alvies stop using the "CrossFit" name. CrossFit also sent a takedown notice to Facebook pursuant to the Digital Millennium Copyright Act ("DMCA") requesting a takedown of Alvies' "CrossFit Mamas" Facebook page.

When CrossFit sued Alvies for trademark infringement, Alvies counterclaimed, arguing that CrossFit violated § 512(f) of the DMCA by making material misrepresentations in the DMCA takedown notice it sent to Facebook. A violation of §512(f) can have serious consequences including payment of damages, costs, and attorneys' fees to the alleged infringer by a copyright owner that sends a materially false takedown notice. Alvies asserted that CrossFit’s DMCA notice was misleading because it asserted trademark claims, rather than copyright claims.

A federal district court in California agreed that CrossFit's use of a DMCA takedown notice to resolve a trademark matter may violate § 512(f) and refused to dismiss Alvies' counterclaim, explaining that she "plausibly alleged" a material misrepresentation. The lesson here is that a DMCA takedown notice should be used only to address copyright violations.

The court's opinion is CrossFit, Inc. v. Alvies, No. 13—3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014)