Every hour of every day, millions of DMCA-style takedown notices flood into service providers all over the globe. Google alone has received a billion in the past 12 months.
While the majority of these notices comply with the law, a percentage are duplicates, erroneous, or flat-out malicious. Until recently, however, no one had ever been held to account for sending bad notices, but a case in Canada has changed that.
Whyte Potter-Mäl c Topdawg Entertainment Inc. is a curious case that has its roots back in 2011 when rapper Jonathan Emile asked fellow rapper and songwriter Kendrick Lamar to contribute to the track ‘Heaven Help Dem’. Lamar agreed and provided a verse in 2012.
“We sent [Lamar] an email outlining what we wanted to do and they got us on the phone and said they were feeling it and that they would go ahead and do the song,” Emile told Billboard.
“We paid Kendrick Lamar for a feature, and once we paid them, they basically stopped communicating with us altogether. It was understood that we’d take care of the paperwork with the lawyers, so we paid them and they basically disappeared… we couldn’t get in contact, so I just continued producing my album and with the verbal agreement we had, and we put out the song in 2015.”
Heaven Help Dem was supposed to be the lead track on Emile’s debut album, but instead it was quickly pulled from YouTube, iTunes, Soundcloud and other sites following bogus copyright claims from Lamar’s label Top Dawg Entertainment Inc., Interscope Records and Universal Music Group.
Emile says that after going back and forth with the labels, they realized that they had no right to take the track down. By then, however, the damage had been done and all momentum to promote the song had been lost. Also faced with the prospect of fans believing that he had stolen the verse from Lamar, Emile decided to take the labels to court in Canada.
In a case before the small claims division of the Court of Quebec, Emile asked for a token amount in damages – just CAD$15,000 – after the labels removed his work from the Internet for two months after bogus copyright claims. None appeared in court to defend themselves and Emile won by default.
“It’s only after the intervention of this lawyer that the song was reinstated on the social media,” the Court’s judgment reads.
“While the song was down, and even after it was reinstated, it is clear from the evidence provided that the incomes of the Plaintiff and his reputation was negatively affected from the false report of the Defendants.”
In most cases there would be earlier rulings to look back on, but the Montreal Court said that it was unable to find anything similar on file. Instead, it used Copyright Act to determine an appropriate damages award.
“In these circumstances, and after reviewing sections 28.1, 28.2, 34 of the Copyright Act, sections 6 and 49 of the Charter of human rights and freedoms and the Cinar judgment  from the Supreme Court, the Court will allow the discretionary amount of $5,000 as moral and material damages to be solidarily paid by the Defendants and an additional amount of $1,000 per Defendant as punitive damages,” the Court ruled.
Speaking with Legal Feeds, IP expert Noel Courage said he’d never seen a case where someone had been sued over a takedown notice.
“The Court seemed to say that the takedown affected the moral rights of the musician’s work or performance,” he said.
“Moral rights are the musician’s rights to the integrity of a work. These rights can be infringed if the work is modified without consent, and prejudices the musician’s reputation or honour. This is the first I have heard of the use of moral rights in response to a web music takedown.”
While the Court’s decision will be welcomed by those who believe the DMCA is too often used as a weapon, Courage said that the case doesn’t set a strong precedent due to it being heard before a low-level court.
However, “it may give companies pause before giving takedown notices.”