By Jeffrey A. Cohen
The Digital Millennium Copyright Act (DMCA) provides a mechanism for copyright holders to request the removal of allegedly infringing content from the internet. However, this process can be abused, with fraudulent takedown notices often being used to silence legitimate speech or competition. To help address this issue, section 512(f) of the DMCA allows for damages to be awarded to those who are harmed by fraudulent takedown notices. The common view of 512(f) is that the standard required to prevail, that the defendant “knowingly materially misrepresents” facts in the notice, leaves the section rather weak with some commentators even calling it dead. However, a recent judgment entered by the Central District of California, Hon. R Gary Klausner indicates that all might not be lost with respect to section 512(f). The case, Custom Family Gifts LLC v. Dominick Mattiello et al, (2:21-cv-02455-RGK-JC) involved allegations that a family gift shop on Etsy making personalized map gift products was attacked with a series of wrongful DMCA takedown notices including fake identities, fake email addresses and even one pretending to be from RandMcnally, the iconic map maker, which was proven false. Plaintiff’s claims including those under 512(f) were initially defended through counsel but the defense eventually abandoned the case leading to the striking of defendants pleadings and entry of judgment against them with the court awarding over $2.5 Million dollars in compensatory damages, attorneys fees and punitive damages, in addition to a permanent injunction against the defendants and those acting with them from issuing any further DMCA takedown notices absent prior approval from the court.
Jeffrey Cohen of the Cohen Business Law Group, apc which represented the Plaintiff, welcomed the decision as a significant victory for their client and for all those who have been affected by false DMCA takedown notices. He noted that this ruling represents an important step forward in protecting the rights of content creators and internet service providers and in helping to ensure that the DMCA is used in a fair and just manner. Cohen also highlighted the need for reform to Section 512(f) to address the overly high standard necessary to prevail in such a claim, noting that the facts of this case were particularly egregious. The court awarded $244,426 in special damages and approximately $80,000 in attorneys’ fees, as well as $2,199,841 in punitive damages, bringing the total award to over $2.5 million. The decision in Custom Family Gifts LLC v. Dominick Mattiello et al and particularly the punitive damage award sends a strong message to those who may be tempted to misuse the DMCA. Content creators and internet service providers can take some comfort in the fact that 512(f) still lives and in knowing that they may have some recourse under the law when they are unjustly targeted with fraudulent takedown notices. Ultimately, this decision represents an important victory among very few successful cases under 512(f) indicating that perhaps 512(f) remains a powerful tool for holding those who abuse the DMCA accountable.
Plaintiff was represented by Jeffrey A. Cohen and Torin Dorros of Cohen Business Law Group, apc. LLC in Los Angeles. Cohen Business Law Group, apc is a Business, corporate, IP and internet law firm based in Los Angeles, California. Jeffrey A. Cohen is Managing Partner and Torin A. Dorros is Of Counsel to the firm.