From The Field

December 9, 2020

In Beyond Blond Productions, LLC v. Edward Heldman III et al., (C.D. Cal., CV 20-5581, August 14, 2020), the plaintiff owner of video compilations obtained an injunction directing the defendant, a copyright owner, to withdraw the takedown notices the defendant sent to non-party Amazon under the Digital Millennium Copyright Act (DMCA).  The case provides an interesting example of how a party wrongfully accused of copyright infringement, after having its products removed by a competitor using the DMCA takedown process, might regain the right to offer products on Amazon or other platforms.  Under the DMCA statutory scheme, once a party whose content is removed provides a “counter-notification,” the service provider retains its liability exemption only if it timely replaces the removed content on its service, unless the party who sent the takedown notice informs the service provider that it has filed a copyright infringement action.   

Plaintiff Beyond Blond Productions LLC (“Beyond Blond”) is a small business that acquires and purchases public domain videos and cartoon classics (such as Mighty Mouse, Bugs Bunny, and Popeye), makes video compilations of same, and lists these works on video streaming platforms.  Beyond Blond uploaded six of these cartoon classic compilations to Amazon’s Prime Video Direct (“Amazon Video”) streaming service between 2018 and 2019.

Defendants Edward Heldman III, Comedy MX, Inc., and ComedyMX LLC (“Heldman”) viewed Beyond Blond’s videos on Amazon Video and issued DMCA takedown notices to Amazon.  Heldman stated that it was a holder of two copyright registrations that were infringed by Beyond Blond, and requested removal of Beyond Blond’s six videos from Amazon Video.

After Amazon complied with Heldman’s DMCA takedown notices and removed the videos, Beyond Blond filed counter-notifications with Amazon in accordance with the DMCA, but Amazon responded that it would not restore Beyond Blond’s videos to Amazon Video unless Heldman withdrew the DMCA takedown notices.  Beyond Blond then brought a declaratory judgment action against Heldman requesting relief, including a declaration of copyright and trademark non-infringement and an injunction ordering Heldman to withdraw its DMCA takedown notices to service provider Amazon.

The district court held that Beyond Blond was likely to succeed on its declaratory relief claim of copyright non-infringement, which supported Beyond Blond’s request for an injunction ordering Heldman to withdraw its DMCA takedown notices to Amazon.  First, the court found that Beyond Blond was entitled to a declaration that its videos did not infringe Heldman’s copyright registrations.  Heldman’s copyright registrations are both Performing Arts (PA) copyright registrations that cover audiovisual “works of the performing arts,” and do not provide protection for Heldman’s “cartoon classic” logo contained in the video.  The court also held that Heldman’s logo itself was a combination of public domain fonts and generic clip art that was not sufficiently original to merit copyright protection.  The court further found that Beyond Blond had met its burden of showing that it had independently created its videos from public domain footage.

Second, although Beyond Blond’s declaratory relief claim of trademark non-infringement was not required to support its claim for injunctive relief ordering Heldman to withdraw its DMCA takedown notices to Amazon (because those only involved allegations regarding copyright infringement), the district court also held that Beyond Blond was entitled to a declaration that its videos, which included a “cartoon classics” logo, did not infringe Heldman’s “cartoon classics” logo trademark.  The court noted that both Beyond Blond’s and Heldman’s marks include the generic phrase “cartoon classics” and substitute the two “o’s” in “cartoon” with eyes.  However, Beyond Blond presented evidence that substituting the two “o’s” in “cartoon” with eyes is a feature contained in many USPTO records of abandoned or canceled marks and is not distinctive.  The court therefore found that Beyond Blond’s logo was not confusingly similar to Heldman’s logo.

After addressing the substantive merits, the district court further found that Beyond Blond had established a likelihood of irreparable harm if Heldman did not withdraw its DMCA takedown notifications to Amazon.  Beyond Blond’s Amazon listings were listed in user searches as unavailable for download, and the same searches directed users to Beyond Blond’s competitors. The district court also found that the balance of hardships tipped in Beyond Blond’s favor, as Heldman could obtain money damages if Beyond Blond was in fact infringing Heldman’s copyrights or trademark, and that Amazon’s decision to act on the defendant’s DMCA takedown notices was in the meantime causing irreparable harm to Beyond Blond’s business.

The district court noted that the requested injunction was consistent with the statutory scheme set up by the DMCA.  Here, Amazon, as the service provider, did not maintain its liability exemption as it declined to reinstate Beyond Blond’s content on its Amazon Video service, even though Heldman did not initiate a copyright infringement action.  Nonetheless, the court noted that the balance struck by Congress under the DMCA encouraged rightsholders to bring any disputed copyright claims to court and not rely solely on DMCA notifications to pursue alleged infringers.

Author: Elaine Lee