Kifle v. Youtube LLC

Background

Elias Kifle, proceeding without a lawyer, sued YouTube LLC and Does 1–19 for copyright and trademark infringement. Kifle alleged that YouTube users copied more than 300 videos from his website and television channel and uploaded or streamed them on YouTube without permission. He alleged that YouTube received copyright notices and a trademark cease-and-desist letter but continued providing service to the users.

Kifle alleged that he owned copyrights in his broadcasts and website content. He also alleged that he owned the marks “Mereja TV” and “ነጭ ነጯን ከዘመዴ ጋር,” which he said had acquired distinctiveness through public recognition. The court had previously dismissed an earlier complaint, allowing Kifle to amend the copyright and trademark claims. The earlier order had dismissed his contract claim with prejudice.

Copyright Claim

The court applied Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not state a legally sufficient claim. The court held that Kifle again failed to plausibly allege compliance with 17 U.S.C. § 411, a statute requiring copyright registration before filing an infringement action, subject to limited exceptions.

For prerecorded videos, Kifle did not allege that he had obtained copyright registrations. The court therefore concluded that § 411(a) barred claims based on those works. For live broadcasts, Kifle relied on the exception for simultaneous transmissions. That exception requires advance notice to the person responsible for the infringement and, when required, registration within three months after the first transmission.

The court found that Kifle alleged notice to YouTube, but not notice to the users who allegedly directly infringed his broadcasts. Kifle stated that YouTube had refused to provide the users’ contact information, but the court concluded that he still could not satisfy the statutory notice requirement. The court held that further amendment would be futile and dismissed the copyright claim with prejudice. In the conclusion, the court stated that it granted the motion to dismiss Kifle’s copyright and trademark claims.

Trademark Claim

The court reconsidered whether “Mereja TV” was a protectable mark in light of an Office Action from the United States Patent and Trademark Office. The court deferred to the agency’s classification decision and concluded that Kifle no longer plausibly alleged that “Mereja TV” was protected. The court therefore focused on the other mark, “ነጭ ነጯን ከዘመዴ ጋር.”

For contributory trademark infringement, a theory that can impose liability on a party that knowingly continues supplying services to a specific infringer, the plaintiff must plausibly allege particularized knowledge of the infringement and continued service to the specific infringer. The court found that Kifle’s updated notices improved his allegations by identifying a protectable interest and naming specific YouTube channels. But the complaint still did not adequately allege that YouTube knew, or had reason to know, that those specific users were infringing the mark, or that YouTube continued providing service to those users.

The court also found no facts plausibly suggesting that YouTube intentionally induced trademark infringement. It dismissed the contributory trademark infringement claim but granted leave to amend. The court stated that Kifle could potentially cure the deficiencies by identifying evidence showing that the links he sent to YouTube contained the protectable mark and that YouTube continued serving the identified channels. The court allowed him to file an amended trademark complaint within 30 days.

Disposition

The court granted YouTube’s motion to dismiss the copyright and trademark infringement claims. The copyright claim was dismissed with prejudice. The trademark claim was dismissed with leave to amend.