GoPro Uses DMCA to Take Down Article Comparing Its Camera with Rival
petapixel.com
petapixel.com
However, in this case the form of the notification is not valid. By H.R.2281 Section 512 [1], under the heading "ELEMENTS OF NOTIFICATION", a DMCA notication must include:
Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
GoPro did not identify any copyrighted works. They identified trademarks, which is a whole nother segment of IP law. To give you an idea how how much the DMCA does not apply to trademarks, the word "trademark" appears only six times in the entire text of the law. Five of those times, it's part of the title "Commissioner of Patents and Trademarks", and the other time it just says that the bill doesn't annul or limit trademark rights.
So long story short, DigitalRev should not have honored this DMCA notification, because it simply isn't a valid notification. It'd be like if I filed a DMCA notice against my neighbor, and under "infringing material" I listed "He keeps letting his dog crap in my yard."
[1] http://thomas.loc.gov/cgi-bin/query/z?c105:H.R.2281.ENR: (sorry I can't link to the specific section because THOMAS is kinda backwards like that)
“GOPRO” Registered: 3/3/2009 US Registration# 3032989 “HERO” Registered: 12/20/2005 US Registration# 3308141
Based on the above, I have to agree the DMCA Notice seems to be embarrassingly improper as an attempt to enforce alleged TM violations. Even assuming the TMs above were actually CRs, it would still be improper to try to enforce a CR when the "alleged" infringement is obviously permissible under the Fair Use Doctrine.
Fair Use: In United States copyright law, fair use is a doctrine that permits limited use of copyrighted material without acquiring permission from the rights holders. Examples of fair use include commentary, search engines, criticism, news reporting, research, teaching, library archiving and scholarship. (http://en.wikipedia.org/wiki/Fair_use)
Subsequent followup by the company indicates they may have a valid IP claim on other materials (and may not, I don't know and frankly I don't care), but one that the DMCA can't be used to enforce.
GoPro could then sue DigitalRev and/or Softlayer, who could then use fair use as a defense, but it would proceed as in any copyright infringement suit.
This makes sense, since fair use is (mostly) an affirmative defense and has to be decided by a judge. On the other hand, the DMCA procedure gives much more power to the complaining party as they can use takedown requests to silence speech with little to no worry about the enforcement of perjury clauses as long as they can claim they didn't "knowingly materially misrepresent" their claim.
Edit: and to actually get to will_brown's point: it would therefore technically not be improper to serve a takedown notice on something that would be covered by fair use, as technically fair use is infringement (otherwise you wouldn't need a "fair use" of it).
However, the poster could then file a counternotice and get it restored in "not less than 10, nor more than 14, business days". If the complaining party then filed suit (against the poster, not the hoster), they would have to demonstrate infringement and the poster would have to demonstrate fair use (or the judge could throw it out if it was obvious).
It's that 10-14 days of silencing, even if the claimant never plans to file suit, that's the second biggest problem with the take down system (after the complete lack of penalties for that kind of misuse).
I do not think that is correct. According to 17 U.S.C. § 107:
Notwithstanding the provisions of sections 17 U.S.C. § 106 and 17 U.S.C. § 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. [Emphasis mine]
You do need to establish that a party is using something that you have a copyright claim to in a way that violates your exclusive rights as a copyright holder (17 USC § 106), otherwise there's no reason to establish fair use, because you have no grounds to sue for infringement in the first place. However, if you fall under fair use protections, you are not infringing that copyright, because you have "fair use" of that copyrighted work in that particular usage.
However, my point was more what I was getting at in my response to will_brown. Fair use is a determination made by a judge. All you have to do is disagree that the usage of a copyrighted work is fair use, and it is infringement again. Just the threat of a lawsuit (or stretching out a lawsuit through long discovery and threats of appeals) can be enough to stifle speech, and the legal remedies are not many, and are expensive (anti-SLAPP laws are difficult to get right and are not widespread in the US for a reason), without even a strong guarantee that you'll make your money back, let alone your time, stress, etc.
The DMCA in theory has a built in safeguard, but the "knowingly" is so tricky to demonstrate, and any meaningful damages are very difficult to establish in many takedown cases. Moreover, it's been well established in practice that you can get away with many invalid and valid-but-obviously-fair-use takedown notices with no repercussions, even if you were plainly very very wrong. AFAIK, many attorneys won't even try to make a case for that getting damages that way.
For example, the EFF has been fighting for damages in one DMCA case against Universal Media Group that has been going on for six years, and not only has the judge definitively said that the EFF would have to demonstrate "some actual knowledge of misrepresentation” on UMG's part (while also writing that there's no such thing as "self evident" fair use, btw), but, because it was a non-monetized youtube video, the damages that can be won will amount to "at least minimal expenses for electricity to power [Lenz's] computer, Internet and telephone, bills, and the like", while legal fees would be limited to the 4.25 hours spent filing the original counter notice, amounting to $1275 for the EFF[1] since the casework since then have been pro bono.
So it's not improper in the sense that it is how the legal system is actually functioning today.
[1] http://arstechnica.com/tech-policy/2013/01/six-year-old-danc...
No that is NOT my point, in fact I specifically said: "it would still be improper to try to enforce a CR when the 'alleged' infringement is obviously permissible under the Fair Use Doctrine". Although I think you knew that and did not intent to include the word "not" in the above statement, in which case, yes, it is improper to send out a DMCA Notice when you know the alleged CR is being used permissibly under Fair Use.
The same logic follows for all CR law, and law in general as a lawyer may not bring a case they know is frivolous or state a claim upon which relief can be granted. Improper behavior of this kind can open the door to Bar complaints against the lawyer; potential causes of action or sanctions against their client; and the awarding of attorney's fees against both the client and attorney personally.
>GoPro could then sue DigitalRev and/or Softlayer, who could then use fair use as a defense, but it would proceed as in any copyright infringement suit.
>If the complaining party then filed suit (against the poster, not the hoster), they would have to demonstrate infringement and the poster would have to demonstrate fair use (or the judge could throw it out if it was obvious).
Yes, Fair Use is a defense that would come into play in Court. However, keep in mind a Judge can award attorneys fees and if any set of facts supports awarding fees it is where: 1.) GoPro is improperly trying to use the DMCA Notice to enforce TM (assume there are valid CR also), 2. I am sure DigitalRev will respond to the DMCA Notice and the record will reflect DigitalRev explained to GoPro why this is Fair Use before any lawsuit was filed and 3.) any reasonable attorney should have known using a CR in a product review is Fair Use.
Thus, Fair Use can be very powerful in the case of a DMCA, even before the case is filed, at least a case with these facts, because it creates a record that the party knew or should have known the case was frivolous before filing. Attorney's know this and must advise their clients accordingly - a party will be less likely to file a CR infringement case if your attorney told is telling you the alleged violation is permissible under Fair Use and as such you are going to be exposed to paying the other parties fees? Moreover, what attorney would expose themselves to sanctions and paying attorney's fees, which they would do their client has nothing but frivolous arguments (not supported by fact or law) why this is not Fair Use? See how powerful alleging Fair Use can be on a DMCA matter before a case is even filed?
Sorry, my response was confusing. By "to actually get to will_brown's point" I meant "to address" your point, because then I did mean to disagree with you :)
I agree with you that fair use is almost certainly considered by attorneys before advising about filing suit, but unfortunately in practice, the repercussions for filing suit while on the wrong side of even obvious fair use are unlikely enough that it often is done.
There are of course always going to be legitimate disagreements over what constitutes "obviously permissible" under fair use, and cases that seem obvious to some will still end up in court.
But there are many, many flagrant abuses of the system, under the same kind of incentives that give us SLAPPs, with the same issues of not enough legal tools to fight them without also having plenty of money to back you up.
For some examples, check out this EFF article[1] after Rush Limbaugh used the DMCA last year to take down clips from his show used to criticize what he said after the whole Sandra Fluke testimony thing. It also includes a host of other examples of people using takedown notices in this way, from Uri Geller to network news programs.
It highlights the example of Michael Savage v the Council on American–Islamic Relations, where Savage did take them all they way to court after the notice/counternotice dance, the judge did dismiss the claims under fair use, but did not award attorneys fees. If CAIR had instead been an individual or a poor advocacy group, it's likely that Michael Savage would still have taken them to court, but there would be huge disincentives for that other party to allow the situation to escalate to that level. Better to not file a counternotice and just accept defeat than go into massive debt (hence the comparison to SLAPPs).
In any case, I do agree with you that that's how the law is structured, and there are likely many ethical lawyers out there going through exactly that decision process, and we never hear about it. My point is merely that, like the "knowingly materially misrepresent" clause in the DMCA, the disincentives to being a bad actor are often toothless (and just the threat of a fight are enough to prevent people from even getting to the stage where they do have any legal remedies), so there are plenty of bad actors. And unfortunately, the people most likely to want to trample fair use rights are also often able to afford a lawyer willing to make forays into expanding intellectual property rights in new directions at only a small to moderate risk.
[1] https://www.eff.org/deeplinks/2012/04/limbaugh-copies-michae...
Yes, that's one of the biggest problems with the DMCA. It could be solved by only having certain licenced people be allowed send DMCA take-downs (i.e. you need a DMCA licence to send it). All take downs would have to be filed with some central authority. You'd then have X% (e.g. 1%) of all DMCA take downs randomly examined to find misuse. If someone does ridiculusly stupid things, their DMCA licence is revoked. If someone recieves a DMCA take down notice, and they follow the law, they should also be allowed to have it examined to see if it's insane like this. Again, DMCA licences can be revoked. Someone with a DMCA licence will not send stupid take downs since it would affect them.
Initially it shouldn't take much time to examine these cases, since initially you're just looking for stupid cases like this.
Exactly, see my quote:
"I have to agree the DMCA Notice seems to be embarrassingly improper as an attempt to enforce alleged TM violations."
>Subsequent followup by the company indicates they may have a valid IP claim on other materials
That is exactly why I included the hypothetical legal analysis to assume arguendo that the TMs are also CR[1] or simply other material was CR. See:
"Even assuming the TMs above were actually CRs, it would still be improper to try to enforce a CR when the "alleged" infringement is obviously permissible under the Fair Use Doctrine."
[1] It is not common that a TM to be related and identical to a Copyright - here is an example Nirvana may have a TM for their band name "Nirvana", but may hold CR for their self titled album "Nirvana".
Plus why does someone have to be an authorised retailer to sell a product? Once GoPro sells it to a wholesaler it literally isn't their stuff any more (first sale doctrine), now there are certain laws protecting GoPro from things like counterfeiting or trademark violations (basically still just counterfeiting) but that doesn't apply here (since they're selling the original product).
Does this also mean that if someone buys a GoPro and decides to sell it on eBay second hand GoPro are going to try and have it taken down? Haven't the courts found that that is unlawful (there was a big Oracle case about it I believe[1])?
In general GoPro just took a huge nosedive in terms of my opinion of them. Their statement actually lowers my opinion more than the original DMCA notice did.
[1]http://www.techdirt.com/articles/20120703/11345519566/eu-cou...
I maybe mistaken here, but I'm fairly sure reporting / reviews are classed as 'fair use'.
If this was ever to go to court, then I'm certain the judge would just throw the case out. However GoPro would never push it that far, their aim is just to take the review offline for the immediate 2 weeks in the hope that when it goes back online, most people would have moved on. Ironically though, GoPro have attracted significantly more attention to the article by trying to bury the review.
I say "ironically", but "deservedly" equally works. I hope this serves as a warning to other companies wishing to abuse DMCA take downs (though I doubt it will).
The only thing I can think of that would even be plausible is if the review site used official images of the product in its review without authorization. But the notice doesn't even begin to hint at that theory.
I'd tend to agree that this doesn't extend to straightforward images used to identify the product in a consumer review, but I'm not so sure it's as cut an dry a case as you think.
Right, if the photograph amounts to a reproduction of something that is itself copyrightable then it is copying and could be infringement. But a camera isn't copyrightable.
Elsewhere in this comment page, someone notes that the review is actually strongly favors the GoPro. Maybe this is some kind of incredibly perverse strategy...?
On the other hand, their brand recognition may go up...
I think it's more like "Only authorised online retailers can use GoPro's images to advertise GoPro products." Which is fair enough, since GoPro owns their photos, although seems like it will only hit the lowest effort retailers.
Either way, their DMCA notice was horribly worded.
The only thing GP does really better, IMO, is that it records at a true 1080p60fps. The sony can record in slowmo, ie capturing at 1080p60 and recording at 1080p30, slowed down.
(Then again maybe that's because I've no use of the features such as the wifi remote)
Is this the same Sony that rootkits users' machines and added the "You cannot sue us" clause in their PlayStation Network EULA after they botched data security?
It's getting harder to find companies who don't demonstrate a skeevy side.
Sony is such a huge conglomerate, you have different types of managers with different morals doing what they feel is right to do.
As of GoPro, they are currently in very strong position. My Orlando Florida BestBuy bud told me they sell five of those per day, comparing to one camcorder/camera a day of all other brands. You could imagine with such a strong position on the market, you have room to act as a FDA, like Jobs would say.
OK, true, but they're not all they same, and not all transgressions are of equivalent morality. They may all be guilty, but they're not all equally guilty.
At the end of the day people have to decide where to draw they line and just stop giving money to certain companies because of their behavior.
Use DMCA, lose me as a customer.
Any idea what product the original review recommended over GoPro?
Not sure, but the Contour ROAM line is one of their bigger competitors. Sony also has a line of compact HD camcorders in the same class.
EDIT:
Now that I actually bothered to RTFA, it appears the original comparison was with one of the Sony cameras.
No, clearly not. They were incredibly incompetent in both the writing of the takedown and their attempt at a public PR response. However, it's pretty clear they're not on a mission to police the usage of their name, someone too 'smart' for his/her own good probably just thought of a misguided idea to try to tackle grey market resellers.
This company is supposedly rolling in dough, with a stake from FoxConn and talk of an upcoming IPO. Why don't they have (or use if they do have) proper legal and PR resources?
So where else is it amateur hour at this company? Is someone competent doing their accounting, or is their comptroller also their head of social media or something?
They are now basically an amateur camera that has been well marketed unfortunately.
> Perhaps the strangest part of it all is that the review highly recommends the Hero3 Black edition is the clear winner between the two.
as per the article of this thread
Never attribute to malice that which is adequately explained by stupidity.
This is an obvious sign that a company is scared of their shitty product (see the recent LayerVault fiasco).
Also, DigitalRev is not the type of digital publication you would want to get on the wrong side of. They have a huge consumer base.
"The Sony does have one feature that sets it apart from the Hero3 cameras, inbuilt image stabilization. This is not optical, but it does take care of a lot of low level vibration and really works very well. The Sony battery surpasses that of the Hero3. Sony is claiming 13 hours of battery life at 1080p which is great for those who may be out shooing in conditions where you will not have access to charging batteries supply. The waterproof housing for the Sony relies on you taking the front off to put the camera into it. The problem is the front of the housing is only ..."
I think someone at GoPro just got pissed at DigitalRev because they don't care if they sell GoPros or Sonys.
“The letter that was posted next to the review on DigitalRev was not sent in response to the review. Obviously, we welcome editorial reviews of our products. This letter was sent because DigitalRev is not an authorized reseller of GoPro products and they were using images and had incorrect branding and representation of our product in their online commerce store. As part of our program – we ask merchants who are selling our product to use authorized images. That is why DigitalRev was contacted. But – our letter did not clearly communicate this and that is something we will correct.”
If you read the DMCA takedown, you'll see that it refers specifically to the URL of the review, not to any other URL, and certainly not to the location of any product sold on any e-commerce site.
In fact, their e-commerce site still contains GoPro products. http://www.digitalrev.com/search?t=pro&q=gopro
In short, either GoPro are lying through their teeth, or their legal team engaged in a monumental cock-up. In either case, this looks like a clear-cut misuse of the DMCA, a claim that can easily be supported by GoPro's own words, if you take them at face value. I don't.
Seems like an easy mistake to make.
[1] Screenshot: http://i.imgur.com/PWJp2BU.png
Their "clarification" isn't.
http://chillingeffects.org/dmca512/faq.cgi#QID569
So yeah pretty much nothing holds up.
[1] http://www.digitalrev.com/product/gopro-hero3-black-edition/...
An obnoxious use of an obnoxious piece of legislation, followed by a smokescreen. More likely cock-up than conspiracy, but leaves a nasty taste.
Question: What are the counter-notice and put-back procedures? Answer: In order to ensure that copyright owners do not wrongly insist on the removal of materials that actually do not infringe their copyrights, the safe harbor provisions require service providers to notify the subscribers if their materials have been removed and to provide them with an opportunity to send a written notice to the service provider stating that the material has been wrongly removed. [512(g)] If a subscriber provides a proper "counter-notice" claiming that the material does not infringe copyrights, the service provider must then promptly notify the claiming party of the individual's objection. [512(g)(2)] If the copyright owner does not bring a lawsuit in district court within 14 days, the service provider is then required to restore the material to its location on its network. [512(g)(2)(C)]
A proper counter-notice must contain the following information:
The subscriber's name, address, phone number and physical or electronic signature [512(g)(3)(A)] Identification of the material and its location before removal [512(g)(3)(B)] A statement under penalty of perjury that the material was removed by mistake or misidentification [512(g)(3)(C)] Subscriber consent to local federal court jurisdiction, or if overseas, to an appropriate judicial body. [512(g)(3)(D)] If it is determined that the copyright holder misrepresented its claim regarding the infringing material, the copyright holder then becomes liable to the person harmed for any damages that resulted from the improper removal of the material. [512(f)]
I extend my thanks to GoPro's legal team for so efficiently delivering this information, saving us the trouble of reading a whole article ourselves or buying an inferior device.