USCA11 Case: 21-14236 Date Filed: 08/17/2022 Page: 1 of 12
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`In the
`United States Court of Appeals
`For the Eleventh Circuit
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`____________________
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`No. 21-14236
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`Non-Argument Calendar
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`____________________
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`ALPER AUTOMOTIVE, INC.,
`A Florida Corporation
`d.b.a. AA Ignition,
`
` Plaintiff-Counter Defendant-Appellee,
`
`versus
`DAY TO DAY IMPORTS, INC.,
`A California Corporation,
`
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` Defendant-Counter Claimant-Appellant.
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`In the
`United States Court of Appeals
`For the Eleventh Circuit
`
`____________________
`
`No. 21-14236
`
`
`
`Non-Argument Calendar
`
`____________________
`
`
`ALPER AUTOMOTIVE, INC.,
`A Florida Corporation
`d.b.a. AA Ignition,
`
` Plaintiff-Counter Defendant-Appellee,
`
`versus
`DAY TO DAY IMPORTS, INC.,
`A California Corporation,
`
`
` Defendant-Counter Claimant-Appellant.
`
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`
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`USCA11 Case: 21-14236 Date Filed: 08/17/2022 Page: 2 of 12
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`Opinion of the Court
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`21-14236
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`____________________
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`Appeal from the United States District Court
`for the Southern District of Florida
`D.C. Docket No. 9:18-cv-81753-BER
`____________________
`
`Before WILSON, JORDAN, and NEWSOM, Circuit Judges.
`PER CURIAM:
`
`Defendant-Appellant Day To Day Imports, Inc. (DDI) ap-
`peals the district court’s order, after a bench trial, that found DDI
`violated Section 512(f) of the Digital Millennium Copyright Act
`(DMCA). After careful review, we affirm.
`I.
`BACKGROUND
`The basis for this copyright litigation is a set of replacement
`stickers for the dashboard climate controls for certain General Mo-
`tors (GM) vehicles. In 2011, Harold Walters incorporated original
`artwork behind the set of those replacement stickers. Walters be-
`gan selling his stickers through online markets and submitted his
`design to the U.S. Copyright Office in 2017.1 The U.S. Copyright
`Office granted a copyright for Walters’s design.
`
`In 2016, DDI began selling a similar set of climate control
`stickers but without Walters’s artwork through online markets,
`
`1 In his application, Walters put 2017 as the date of original design, but that
`was amended to 2011.
`
`
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`USCA11 Case: 21-14236 Date Filed: 08/17/2022 Page: 3 of 12
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`21-14236
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`Opinion of the Court
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`3
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`including Amazon. Walters submitted a Takedown Notice to Am-
`azon. Under the DMCA, a person who believes his copyright is
`being infringed can notify the online market in writing and must
`identify the allegedly infringing listing with particularity. 17 U.S.C.
`§ 512(c). DDI received notification that Amazon had taken down
`the listing due to copyright infringement.
`DDI, through counsel, reached out to Walters to address
`how DDI allegedly infringed Walters’s copyright. Walters ex-
`plained to DDI that he had a valid copyright and provided DDI
`with his copyright registration numbers. But Walters did not pro-
`vide DDI with a copy of his design nor did DDI request a copy of
`the design from the U.S. Copyright Office. After negotiating with
`Walters, DDI paid Walters to license the copyrights and allowed
`Walters to continue to sell his stickers on eBay while DDI would
`sell the licensed stickers on Amazon. Walters permitted DDI to
`submit a Takedown Notice to Amazon.
`
`In April 2018, Plaintiff-Appellee Alper Automotive, Inc.
`(Alper) began selling a sticker that contained the same dashboard
`climate controls as DDI and Walters but also included another de-
`cal. On May 8, 2018, DDI’s counsel sent a Takedown Notice to
`Amazon that identified Alper’s sticker as infringing DDI’s license of
`Walters’s copyright. At first, Amazon did not remove the listing
`until DDI sent another Takedown Notice on May 15, 2018. Ama-
`zon took down Alper’s listing on May 17, 2018.
`On May 17, 2018, Alper received notice that DDI had re-
`ported the copyright infringement and that Amazon had removed
`
`
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`Opinion of the Court
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`21-14236
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`Alper’s listing. Alper’s counsel contacted DDI’s counsel to address
`the alleged copyright infringement. Throughout the discussion,
`DDI explained that it did not have a copy of Walters’s design sub-
`mitted to the U.S. Copyright Office but had seen the work and
`claimed Alper’s stickers were identical. Ultimately, Alper and DDI
`did not resolve the alleged copyright infringement.
`On June 7, 2018, Alper emailed Amazon and disputed the
`Takedown Notice, specifically that the work was not identical to
`DDI’s work nor was DDI’s work entitled to copyright protection
`because it was standard dashboard icons. Amazon reinstated
`Alper’s listing on June 22, 2018. This cycle of DDI sending a
`Takedown Notice and Alper disputing that notice occurred with
`DDI’s August 2 and November 1 Takedown Notices.2
`On November 19, 2018, DDI again sent a Takedown Notice
`that again included Alper’s reinstated listing. On November 29,
`2018, Amazon removed Alper’s listing, and Alper immediately ap-
`pealed. Alper’s counsel contacted DDI’s counsel at this time to dis-
`cuss the changes Alper made to its sticker and to hopefully settle.
`Amazon reinstated Alper’s listing on December 2, 2018. On De-
`cember 5, 2018, after discussing the issue with other attorneys and
`Amazon Legal, Alper’s counsel rescinded the settlement proposal.
`Alper’s counsel explained that Alper’s listing does not infringe on
`
`
`2 These Takedown Notices also included listings from other companies that
`were not reinstated by Amazon.
`
`
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`21-14236
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`Opinion of the Court
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`5
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`DDI’s copyright and that if DDI continued to file invalid Takedown
`Notices, Alper would take legal action.
`On December 23, 2018, DDI’s counsel received an email
`from Amazon stating it received DDI’s reports of infringement and
`had acted against the infringers, including Alper. Alper appealed
`and Amazon reinstated Alper’s listing.3
`On December 27, 2018, Alper sued DDI in the Southern Dis-
`trict of Florida for five claims, including 17 U.S.C. § 512(f) about
`DDI’s submitted Takedown Notices. DDI counterclaimed for cop-
`yright infringement and joined Walters to the suit. Relevant to this
`appeal, the district court conducted a three-day bench trial on
`Alper’s Section 512(f) claim only.4
`After the bench trial, the district court entered its Findings
`of Facts and Conclusions of Law. Ultimately, the district court
`found that the May, August, and November 1 Takedown Notices
`did not violate Section 512(f). However, the district court found:
`
`12. When it submitted the November 19 DMCA
`Takedown Notice, Defendant [DDI] had a subjective
`
`
`3 As the district court noted, the December emails were a technical glitch by
`Amazon but would not have happened but for the November 19, 2018
`Takedown Notice.
`4 Alper’s remaining claims and DDI’s counterclaims were handled either by
`settlement or through summary judgment.
`
`
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`Opinion of the Court
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`belief that Plaintiff’s [Alper’s] Sticker Sheet infringed
`the Subject Design.
`13. That subjective belief was the result of willful
`blindness.
`14. By this point, in addition to the information
`known
`to Defendant after
`the May DMCA
`Takedown Notice, Defendant knew that Plaintiff’s
`Amazon listing had been reinstated three times. De-
`fendant had not tried to find out why Amazon kept
`reinstating Plaintiff’s listing. Defendant had not ob-
`tained the Deposit Design from the Copyright Office.
`And, the November 19 DMCA Takedown Notice
`acknowledged that many of the ASINs listed in the
`Notice were ones that had already been taken down
`and are “back up somehow.” All of these facts placed
`Defendant on actual notice that it was highly likely
`that, in fact, Plaintiff’s Sticker Sheet was not infring-
`ing the Subject Design. It also put Defendant on
`acute notice that there was a problem with its copy-
`right infringement claim. Therefore, Defendant’s de-
`cision to not pursue information that would have
`helped confirm whether Plaintiff was infringing on a
`protected copyright constituted willful blindness.
`15. I further find that by November 19, 2018, Defend-
`ant had a motive not to investigate further – filing
`DMCA Takedown Notices was less expensive and
`
`
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`Opinion of the Court
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`7
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`more immediate than pursuing a claim for copyright
`infringement on the merits. In making this finding I
`draw an adverse inference from Defendant’s failure
`to initiate litigation against Plaintiff. In a May corre-
`spondence, Mr. Kaufman said, “We are a few weeks
`away from filing suit against all the infringers.” Yet,
`as of the November 19, 2018, seven months later, De-
`fendant had not filed suit against Plaintiff, even
`though Plaintiff was persisting in having its Amazon
`listing reinstated. See Online Policy Group v.
`Diebold, Inc., 337 F. Supp. 2d 1195, 1204–05 (N.D.
`Cal. 2004) (“The fact that Diebold never actually
`brought suit against any alleged infringer suggests
`strongly that Diebold sought to use the DMCA's safe
`harbor provisions—which were designed to protect
`[Internet Service Providers], not copyright holders—
`as a sword to suppress publication of embarrassing
`content rather than as a shield to protect its intellec-
`tual property.”). I find that by November 19, 2018,
`Defendant was using the DMCA Takedown Notices
`to suppress a market competitor rather than to en-
`force a legitimate good faith claim of copyright in-
`fringement.
`16. The November 19, 2018, DMCA Takedown No-
`tice violated § 512(f). I find by a preponderance of the
`evidence that Defendant knowingly and materially
`
`
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`Opinion of the Court
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`misrepresented that Plaintiff was infringing a valid
`copyright, that Amazon relied on that misrepresenta-
`tion, and that Plaintiff was injured as a result of its list-
`ing being down from November 29, 2018 to Decem-
`ber 2, 2018.
`The district court awarded Alper $351.95 in lost profits and $45 for
`Alper’s counsel’s time in getting the Amazon listing reinstated.
`DDI timely appealed.
`II.
`STANDARD OF REVIEW
`“On appeal of a district court order from a bench trial, we
`review the court’s conclusions of law de novo and its findings of
`fact for clear error.” HGI Assocs., Inc. v. Wetmore Printing Co.,
`427 F.3d 867, 873 (11th Cir. 2005). “We will not find clear error
`unless our review of the record leaves us ‘with the definite and firm
`conviction that a mistake has been committed.’” Coggin v.
`Comm’r of Internal Revenue, 71 F.3d 855, 860 (11th Cir. 1996)
`(quoting United States v. Gypsum Co., 333 U.S. 364, 395 (1948)).
`III. ANALYSIS
`DDI argues the district court erred in two ways. First, the
`district court erred in using the willful blindness standard to sup-
`port DDI’s liability for a knowing misrepresentation under 17
`U.S.C. § 512(f). Second, even if the willful blindness standard ap-
`plies, the district court clearly erred in finding DDI was willfully
`blind. We will address each argument in turn.
`
`
`
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`Opinion of the Court
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`A.
`DDI argues that it is unprecedented for the district court to
`use the willful blindness standard as this court has not addressed
`the knowledge requirement under Section 512(f). Although DDI
`is correct that this court has not addressed the willful blindness
`standard under Section 512(f), the parties stipulated to this standard
`as the law that the judge would use during the bench trial. Specif-
`ically, in the Amended Joint Pretrial Stipulation, the parties agreed
`that “[w]illful blindness serves as a substitute for actual knowledge
`for a DMCA misrepresentation claim.” DDI also discussed the will-
`ful blindness standard to the district court in its opening and closing
`statements. DDI further argued in its closing that Alper failed to
`meet the requirements for willful blindness.
`
`Although DDI argues that the district court should have not
`used the willful blindness standard, it does not argue that holding
`DDI to that standard is manifest injustice. As a general rule, parties
`are bound by stipulations made before trial. G.I.C. Corp., Inc. v.
`United States, 121 F.3d 1447, 1449–50 (11th Cir. 1997). “Before
`agreeing to a stipulation, a litigant has a duty to satisfy himself con-
`cerning the matters which his opponent proposes for stipulation.
`Down v. Am. Employers Inc. Co., 423 F.2d 1160, 1164 (5th Cir.
`
`
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`1970).5 But a court may disregard issues of law stipulated by the
`parties to grant a party relief from that stipulation to prevent man-
`ifest injustice. Equitable Life Assurance Soc’y v. MacGill, 551 F.2d
`978, 983–84 (5th Cir. 1977).
`Considering DDI stipulated to the use of willful blindness as
`a substitute for actual knowledge before trial and then repeatedly
`discussed that standard at the trial, we will hold DDI to that stipu-
`lation. Nor was it manifestly unjust to use a willful blindness stand-
`ard because we have adopted that doctrine to show knowledge in
`other intellectual property cases. See Luxottica Grp., S.P.A. v. Air-
`port Mini Mall, LLC, 932 F.3d 1303, 1312 (11th Cir. 2019) (applying
`willful blindness in a contributory trademark infringement action);
`see also Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 768
`(2011) (applying willful blindness in induced patent infringement
`case).
`
`B.
`DDI argues that the district court clearly erred in finding that
`DDI was willfully blind for two reasons. First, DDI argues that the
`district court’s order now requires any party, including DDI, to
`contact the U.S. Copyright Office to determine whether there is a
`valid copyright rather than go on the subjective belief of a licensor,
`in this case Walters. DDI misrepresents what the district court
`
`5 We are bound by decisions of the former Fifth Circuit handed down before
`October 1, 1981. Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir.
`1981) (en banc).
`
`
`
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`Opinion of the Court
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`order stated. The district court order did not hold that DDI, or
`future parties, must contact the U.S. Copyright Office before filing
`a Takedown Notice under the DMCA. Rather, the district court
`explained that considering the many times Alper’s listing was taken
`down and put back up that Alper’s sticker likely did not infringe on
`DDI’s design. As a result, DDI should have pursued information
`to determine whether Alper was actually infringing a protected
`copyright. One way that DDI could have done so was to contact
`the U.S. Copyright Office, but DDI could have also reached back
`out to Walters to get as much information as it could have from his
`copyright application, including Walters’s submitted designs.
`Next, DDI argues that the district court erred in applying the
`willful blindness standard. In order to show willful blindness, a
`party must establish two factors: “(1) the defendant must subjec-
`tively believe that there is a high probability that a fact exists and
`(2) the defendant must take deliberate actions to avoid learning of
`that fact.” Glob.-Tech Appliances, 563 U.S. at 769.
`Looking at the first factor, the district court explained that
`by November 19, DDI was placed on actual notice that Alper’s
`sticker likely did not infringe on DDI’s sticker. Before making this
`finding, the district court, in great detail, explained the many
`Takedown Notices, Alper’s appeals of those notices, and ultimately
`Amazon’s reinstatement of Alper’s listings. The district court also
`noted that many of the other listings that DDI included in its
`Takedown Notices were not being reinstated on Amazon, which
`
`
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`increases the probability that DDI knew there was likely no in-
`fringement by Alper.
`After months of sending Takedown Notices, only for Alper’s
`listings to be reinstated, DDI should have pursued information to
`determine why Amazon kept allowing reinstatement. Further, in
`one email, Amazon explained that it would not act on the
`Takedown Notice because “the notices [DDI] reported to Amazon
`are invalid and/or inaccurate.” These facts allow the inference that
`DDI was intentionally insulating itself from knowledge about pos-
`sible the likelihood that Alper was not infringing Walters’s copy-
`rights. See United States v. Dean, 487 F.3d 840, 851 (11th Cir. 2007).
`Therefore, there is substantial evidence to support the district
`court’s finding of willful blindness.
`IV. CONCLUSION
`Thus, the district court’s comprehensive order is affirmed.
`The district court did not err in using the willful blindness standard
`as a substitute for actual knowledge in a misrepresentation claim
`under 7 U.S.C. §512(f) and DDI has not shown manifest injustice
`because DDI stipulated to the standard before trial and then made
`arguments at trial using that standard. And the district court did not
`clearly err in determining that DDI’s conduct for the November 18,
`2018 Takedown Notice was willfully blind.
`
`AFFIRMED.
`
`
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