sending DMCA notices about uncopyrightable work might be willful blindness, or not

Leszczynski v. Kitchen Cube LLC, 2025 WL 2551098, No. 8:23-cv-01698-MEMF-ADS (C.D. Cal. Apr. 4, 2025)

Previous discussion. I find this case interesting because of the underlying gadget, the Kitchen Cube, which has depressions on different sides corresponding to different standard measurements. Leszczynski alleged that he posted the 3D print files for the Cube online, and that various defendants downloaded the 3D print files and used the files to produce their own versions of the Cube, which they then sold for profit; the court allowed a breach of contract claim but rejected Lanham Act claims on summary judgment. Some of the defendants counterclaimed that Leszczynski issued take-down notices to Amazon containing material misrepresentations; the court found that material factual issues remained for trial.

Leszczynski applied a Creative Commons Attribution-Non Commercial-No Derivatives License to the 3D print files he uploaded. He’s never commercialized the cube and abandoned attempts to do so in 2018, though he’d like to do so in the future.  

In his take-down notices, Leszczynski stated “I am the creator and copyright owner of the cube design.” Counterclaimants claimed impairment to their sales. Leszczynski’s 2023 application for copyright registration for the cube was denied on the grounds that it was a useful article (without separability), and his request for reconsideration did not change things. Even though there was no copyright infringement claim in the case, this was relevant to whether his 512 notices were sent in good faith; he didn’t update or retract his notices after the Copyright Office ruled. In an email sent to defendants prior to filing suit, Leszczynski stated to defendants that “I have consulted with IP attorneys who specialize in this area, and they have affirmed the validity of my claims.” Later, in his deposition, Leszczynski testified that the conversation with an attorney prior to filing suit was “rough” and brief.

The court first ruled that the breach of contract claim wasn’t preempted by the Copyright Act. Contract claims, which have the extra element of agreement/the existence of a contract and ab breach thereof, are “generally” not preempted. “[I]mportantly Leszczynski does not seek to prohibit anyone from reproducing the text of his 3D print files, from distributing the files, from publicly displaying the files, or other possible uses of the files.” [The copyright in the files is distinguishable from the copyright in the cube—we don’t really know what the Office would think of the files, and just because they produce a useful article doesn’t mean there’s nothing copyrightable in the files themselves. I’m not sure that matters here, though.] The court further reasoned:

The rights Leszczynski asserts are far narrower than those that a copyright would grant. Although there is some overlap (particularly as to derivative works), Leszczynski does not assert most of the rights that are at the core of a copyright—namely reproduction of an idea in fixed media or public displays and performances thereof. He asserts a significantly different right by seeking to control certain uses of physical objects that can only be created using the code in the 3D print files. Further, he does not claim an exclusive right to be asserted against the world, and instead claims a right that can only be asserted against people who (purportedly) entered into a contract with him by downloading the file.

Unauthorized use of software’s end product is not the same thing as unauthorized copying of code.

Lanham Act: Failed for lack of harm. Because he never sought to sell the cube, he couldn’t show lost sales. His intent to commercialize the Cube in the future was speculative, and there was no evidence of harm to future sales. He also didn’t show that he ever had any reputation to harm nor that such a reputation suffered any harm. The Cube was downloaded 500,000 times, but there was no evidence on whether that number of downloads would lead to a reputation or how strong it would be. Even if people didn’t know that he was the original designer of the Cube, that would not show reputational harm. “It might be different if he had previously been well regarded and then Defendants caused people to lose respect for him.”

DMCA counterclaim: The undisputed facts didn’t definitively show whether Leszczynski knowingly made misrepresentations. The evidence suggested that when Leszczynski issued the take-down notices, his copyright application had not yet been ruled upon. But his lack of a registration, on its own, didn’t show knowing misrepresentation, since copyright arises “immediately upon the work’s creation.” “The fact that Leszczynski later learned that the work in question was not copyrightable does not retroactively make his statements knowing misrepresentations.” Also, there was no statutory requirement that he update or retract his take-down notices when his application was rejected; “the statute requires that the knowledge of falsity coincide with the submission of the take-down notice.”

Still, there was some evidence of knowledge, to wit, his statement that “I have consulted with IP attorneys who specialize in this area, and they have affirmed the validity of my claims.” He later testified that he had “two-minute conversations” with a lawyer or lawyers, whom he didn’t hire. The tension here could let the jury find knowledge or willful blindness. To act “knowingly” means not only to act with actual knowledge, but also to act “with an awareness of the high probability of the existence of the fact in question.” But a jury could also find otherwise.