Sometimes the best response to a censorious threat of litigation — especially when the saber-rattler has a lengthy history of filing dumb lawsuits — is to show up first and put them on the defensive.
Roca Labs’ litigation history is fairly extensive for the short period of time in which they’ve made the courts their sandbox, so I won’t repeat it here, but Techdirt’s coverage has been fairly comprehensive and is well worth perusal. In short, Roca Labs is a Florida company which produces a nutritional supplement purporting to allow amazing weight loss, but it’s so amazing that in order to buy it, you have to promise not to criticize the company. Roca has issued threats of defamation lawsuits against many critics and has followed through on some of them, including a series of lawsuits targeting consumer gripe site PissedConsumer.com and reviewers who criticized Roca on that site. These lawsuits are frivolous abuses of the legal system designed to intimidate critics into silence.
Around the time that Roca Labs was losing its quest for a court order mandating that PissedConsumer stop letting people criticize the company, Roca issued a demand under the DMCA, asserting that PissedConsumer was using a thumbnail version of Roca’s logo and a photograph of Roca’s product. Plus, the complaint continued, PissedConsumer was infringing on Roca’s trademark by using its name “in the URL and pages.”
Had Google accepted Roca’s complaint, it likely would have resulted in Google removing the PissedConsumer criticism of Roca Labs from Google’s search results. Of course, this is exactly what Roca is trying to do, as it has gone as far as to file a lawsuit with that explicit goal. And, of course, it didn’t work.
Now PissedConsumer is going on the offensive, filing a lawsuit in the Southern District of Florida under the DMCA. PissedConsumer alleges that Roca Labs knew or should have known that its DMCA takedown notice was frivolous, as the use of the logo was clearly a fair use, rendering Roca Labs liable for damages caused under 512(f). While there are some potential pitfalls for this claim — I won’t help Roca by pointing them out here — there is some support for the notion that a takedown notice issued against clear fair uses runs afoul of 512(f). Plus, PissedConsumer has added a cause of action for Roca Labs’ attempted use of the DMCA to assert a trademark right, which was clearly an inappropriate use of the DMCA takedown mechanism.
PissedConsumer is also seeking declaratory relief that its use of Roca’s name did not infringe on its trademark, as well as declaratory relief that various statements — for example, that “Roca Labs […] believes that it can silence you through fear and intimidation directed at Pissed Consumer” — are not defamatory. Because they aren’t. PissedConsumer also asserts that Roca’s conduct has amounted to an abuse of process. Which it is.