The Software IP Report

Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

By Charles Bieneman

Categories: Copyright, The Software IP Report, Trademarks

In Fischer v. Forrest, 14 Civ. 1304 (PAE); 14 Civ. 1307 (PAE) (S.D.N.Y. Jan 13, 2015), the court denied a Rule 12(b)(6) motion to dismiss a suit alleging copyright and trademark infringements. Of particular interest in this post is the pleading required to state a claim for remove of Copyright Management Information (CMI) under the DMCA. Also of interest is the way in which the facts supporting this claim were intertwined with a claim for trademark infringement under the Lanham Act.  Finally, this case offers a lesson for drafting choice of law provisions in confidentiality agreements — make them broad enough to cover related tort claims in addition to breach of contract claims.

The plaintiff held a valid federal copyright registration for text and images used on his website, and a valid federal trademark registration for his honey harvesting product for beekeepers called Bee-Quick®. The plaintiff authorized the defendant to use the trademark name, images and text to sell Bee-Quick® through the defendant’s website. After eight years, the defendant terminated the business relationship with the plaintiff, but allegedly continued using the copyrighted text, images and trademark on his website and catalogs to market his own product. Specifically, the plaintiff alleged that the defendant violated the federal Copyright Act, 17 U.S.C § 101; the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1201; and the Lanham Act, 15 U.S.C. § 1051.

A quick review of the basics: copyright infringement requires that the defendant has copied the plaintiff’s work, and that there is a “substantial similarity between the defendant’s work and the protectable elements of plaintiff’s.” Exhibits attached to the complaint “strongly support[ed] the inference” that the defendant “retained the text and image used to sell Bee-Quick” but swapped out the product name for the defendants. The court made it a point to say that the defendant’s work is not merely “substantially similar,” but “literally identical to the text and image” in the plaintiff’s protected work.

To effectively state a claim for the removal of Copyright Management Information (CMI) under the DMCA, the plaintiff must adequately allege the existence of CMI, and that it was removed and/or altered intentionally. The plaintiff alleged that the defendant removed multiple forms of CMI from the plaintiff’s documents which the defendant then used to sell his own “competing, knock-off product.” The CMI was in the form of the copyright notice, plaintiff’s name, the statement “All Rights Reserved,” and metadata. The defendant allegedly published materials stripped of the CMI, “both online and in print,” for more than three years – even after the plaintiff sent a cease-and-desist letter. The court held that these allegations “supply a solid basis on which to infer that [the defendant] removed the CMI intentionally.”

Lastly, under the Lanham Act, the owner of a valid trademark can seek civil damages against those who use the mark without the owner’s consent in a manner “likely to cause confusion, or to cause mistake, or to deceive.” The plaintiff alleged that the defendant used a photograph of the Bee-Quick® bottle on a competing webpage. Also alleged was the Bee-Quick® name being used in the defendant’s Uniform Resource Locator (URL) which “would make consumers ‘victims of a bait-and-switch’ by leading individuals searching for Bee-Quick to a webpage selling” the competitor’s product. The court held that these allegations “suffice to state a claim” under Section 32 of the Lanham Act.

Thanks to law clerk Robert Billings for his assistance in preparing this post