2:37pm PT by Eriq Gardner
TV Show Host, Lawyer Can't Dodge Claim of Submitting False Copyright Takedown
A California federal judge has ruled that one needn't be a copyright owner to sue over a false copyright takedown.
ISE Entertainment is the plaintiff in the case. The company says it owns rights to The Weekend in Vegas, which airs on an ABC affiliate in Las Vegas. Until recently, the show was also available for download on Amazon.com. But then, the show's co-producer and host, Jeff Civillico, and his attorney, Gerald Longarzo, Jr., caused removal of the show on Amazon by submitting an infringement notice pursuant to the Digital Millennium Copyright Act. They are now being sued.
Civillico apparently came to the conclusion that he owned rights to Weekend in Vegas because ISE was allegedly in breach of a deal for the show and had no authority to use his work and image. ISE was run by an individual named Gary Harmon, who reportedly is facing criminal charges for allegedly defrauding investors by, among other things, exaggerating relationships with celebrities.
After Longarzo submitted a DMCA notice, ISE responded that the DMCA notice was false and that Civillico held no intellectual property rights to the program. ISE demanded a retraction.
"Thank you for your letter," Longarzo wrote back. "The information in your letter is not accurate, but we thank you and Gary for your continued interest in Jeff. If you find yourself in the Las Vegas area, please let us know and we would gladly provide complimentary tickets to one of Jeff's shows. Again, thank you for your support."
The kiss-off didn't work.
ISE then sued both Civillico and Longarzo on various claims including that the two allegedly violated DMCA section 512(f) by knowingly materially misrepresenting copyright infringing activity.
In response to the lawsuit, defendants' attorney Bryan Freedman stated that ISE had never registered Weekend in Vegas for copyright nor even applied for a registration. Thus, he argued, ISE had no standing to make a 512(f) claim. To hold otherwise, Freedman continued, anyone could make an end-run around registration requirements to file a copyright lawsuit since it would be possible to just file a lawsuit in response to a DMCA counter-notification.
It's a clever argument, but in a decision on Friday, U.S. District Court Judge Michael Fitzgerald rejects it.
"Based upon the plain language of the statute — which provides that an 'alleged infringer,' among others, may recover damages when it is harmed by a fraudulent takedown notice — and the lack of any authority supporting Defendants’ position, the Court concludes that neither copyright ownership nor registration are prerequisites to bringing a section 512(f) action," writes the judge in the ruling. "As an 'alleged infringer,' ISE has standing to sue under section 512(f)."
The judge then goes on to conclude that ISE has stated a viable 512(f) claim even if the plaintiff, he writes, "may struggle to produce evidence of subjective bad faith" on the part of Longarzo.
Civillico and Longarzo are at least able to beat for now claims of breach of contract and fraud. See here for the full ruling.