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DigitalRev.com served with DMCA takedown notice by GoPro for review (digitalrev.com)
159 points by choult on March 20, 2013 | hide | past | favorite | 57 comments



Trademarks are not the subject of DMCA protection, see: https://www.eff.org/wp/unsafe-harbors-abusive-dmca-subpoenas.... Even if they were, mentioning a trademark in a review is clearly not "use of a mark in commerce." Any shmuck can send you a letter under the color of authority, but this one clearly has no validity. The ISP is under no obligation to actually take down to content, and shouldn't have here.

As an aside: this is what happens when Congress "innovates" with the legal system. I'm sure someone thought it was a good idea to make take-down notices not be legal documents signed by a lawyer. But now any shmuck can send one without the threat of repercussions. When you have a device that invokes the color of state authority, you should have to jump through certain hurdles. Having to find a lawyer willing to risk sanctions putting a signed document in front of a judge is a powerful filter.


This isn't entirely correct. Per the DMCA (or, really, the Online Copyright Infringement Liability Limitation Act - OCILLA), the hosting provider must comply with a takedown notice should they receive it, regardless of how idiotic it appears, so long as the content that is claimed to be infringing is hosted by the provider and the notice is completed. It's up to the website owner to file a counter-notice in instances like this; once they do so, the hosting provider will re-enable the content within 14 days provided the original notice filer doesn't initiate legal action.

ChillingEffects has a long (but very informative) FAQ on the DMCA that dispels a lot of common misunderstandings.

Some bits that are of note in my opinion is the overview of the takedown process: http://www.chillingeffects.org/dmca512/faq.cgi#QID130

And the fact that the provider /must/ respond to the takedown notice: http://www.chillingeffects.org/dmca512/faq.cgi#QID129

And some information on the counter-notice procedure: http://www.chillingeffects.org/dmca512/faq.cgi#QID922


> This isn't entirely correct. Per the DMCA (or, really, the Online Copyright Infringement Liability Limitation Act - OCILLA), the hosting provider must comply with a takedown notice should they receive it, regardless of how idiotic it appears...

That's BS.

The hosting provider has every right to support their customer and keep the notice up. We've gone to court rather than do a takedown and prevailed on court costs, and we've persuaded upstream (colo and backbone) providers served by the same takedown notices to leave customers alone (e.g., not blackhole an IP) as well.

Btw, the number one most effective takedown avoidance tactic is to be an absolute stickler for the letter of the takedown requirements. We can usually get 5 or 10 business days of back and forth on our customers' behalf before the takedown mills manage to generate a fully compliant notice.

And if this notice really was just about a review mentioning a product by name, we would have ignored it or at the very least asked the sender to explain under penalty of perjury why the content was not protected under fair use.

Disclaimer: We're a registered hosting provider under the DMCA.


The provider does not have to take down the content. It's not doing so only affects whether it can raise the safe harbor defense of the DMCA in a subsequent suit. A simple reading of the notice would have revealed that it was invalid and thus could not possibly sustain a suit for copyright infringement. Indeed, since the DMCA safe harbor doesn't protect a hosting company from being sued for trademark infringement, the hosting company didn't even really cover its ass, legally, in this situation. If GoPro had sued the hosting provider for trademark infringement, its responding to the DMCA takedown notice would've had no relevance.


Pure BS. You can ignore legitimate DMCA notices, and there is no punishment for that per se at all. But then you are not immune from the contributory infringement liability in case it goes to court. If you obey the notice, then you cannot be sued. That is the difference. Spreading this false information here is actually harmful for the web community, since it encourages free speech suppression tactics by sending deficient copyright notices, by instilling fear in webmasters without access to proper legal resources. I wonder if your throwaway handle was created with that in mind.

Also, the note in question is clearly defective, since it does not properly identify copyrighted material to be removed. The fact that Softlayer threatened to turn off the service due to a defective notice means that it cannot be used as a reliable ISP. Use FusionStorm, they actually read and comprehend DMCA notices, and in cases like this do not even contact their customers.


But the takedown notice doesn't actually claim any content infringes on GoPro's copyrights, does it? There are zero allegations of copyright violation listed here, so it seems like zero pages should have been taken down. Is that not right? (Not a lawyer, just a question.)


>Per the DMCA (or, really, the Online Copyright Infringement Liability Limitation Act - OCILLA), the hosting provider must comply with a takedown notice should they receive it, regardless of how idiotic it appears, so long as the content that is claimed to be infringing is hosted by the provider and the notice is completed.

I don't think that's actually true in this case. The actual language of the law says that for a notification to be effective under the law, it must include identification of a the copyrighted work infringed. Since this notification does not identify copyrighted work (and explicitly refers to trademark), it technically isn't even a DMCA takedown notification, as defined under the law.


Probably not worth it to risk, but the notice from GoPro did not identify any copyrighted works that were being used. They only identified trademarks.


This is what I was wondering.

Maybe they decided to use the trademarks on the names in the article? Sounds like a catch22 if you ask me. Put the trademark on the word and they serve you up a DCMA. Don't put it on and then you rise the ire of GoPro since you didn't use the mark on the trademarked names of their products.

Eh, what a hassle.


Trademarks aren't copyrights, and trademark law is separate from copyright law right up to them being authorized by different sections of the US constitution. The DMCA is a copyright law and has no bearing on trademark issues, and there is no analog in trademark law for the DMCA takedown/safe harbor procedure beyond traditional C&D letters. To properly analyze who has what rights here, you need to completely ignore everything related to the DMCA, and then you come to the conclusion that a product review that properly identifies who made the product is of course free to use the trademarked name of the product to discuss it. (And little TM and (R) symbols have nothing to do with it.)


17 US 512: (f) Misrepresentations.— Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification,

shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

---

A take down notice that is so facially invalid may well qualify as knowing misrepresentation.


> A take down notice that is so facially invalid may well qualify as knowing misrepresentation.

Or simply show incompetence that supports a claim of lack of knowing misrepresentation.



I don't buy it.

They state:

> Thanks for the heads up on this issue. 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.

Original letter contains:

> Accordingly, we hereby demand that Softlayer.com immediately remove or disable access to the Infringing Material at:

> http://www.digitalrev.com/article/gopro-hero-3-vs-sony/Njk3M...


The guys on a few cycling forums aren't buying it either. This will hurt GoPro if they don't deal with it swiftly and in a positive way.


I believe it depending on the images used in the article. Everything I know about GoPro leads me to believe that they are just as controlling about their marketing as Red Bull is.


That or their lawyers got bored and said... who can we fuck. The communication failure was between the PR team and the lawyer team.


"But our letter did not clearly communicate this and that is something we will correct."

They should probably work on being super duper extra clear on legal notices sent to hosting providers that take down content.


Wow, that's a really mealymouthed response, isn't it?


This smells bad.

There is no DMCA basis for mentioning a third parties trademarked names in a review (there is in commercials you can't say "Cheerios" unless General Mills is ok with it, but you can say "That O shaped cereal", but no such restrictions editorial). Further the complaint is specious. Further the filing of a counter notice takes little time. (I can't see anyone pursuing the alleged infringement in court).

A simpler explanation for me, is a manufactured controversy to get use rage views to drive traffic to a reviews site (which lives and dies by its traffic numbers).

I'm taking a wait and see attitude here.


That hosting company is pretty pathetic for not having a lawyer even glance at the poorly assembled and obviously toothless complaint. That kind of notice is only good for sharing for laughs, and certainly didn't warrant passing along as a threat to the customer.


Per the DMCA, hosting companies have to act regardless of validity. The targeted user can file a counter-notification, which the hosting company has to automatically honor no less than 10 and no more than 14 days later.

After that it goes to the courts (if the DMCA complainant chooses to sue).

So, in short, when Congress built the DMCA, they made it possible to silence someone for a guaranteed 10 day period with a spurious DMCA request.


No, the hosting company is protected until they have actual notice or knowledge of infringement of copyrights, and the notice posted on the website fails to identify any copyrights that are alleged to be infringed.


In this particular case, yes, because GoPro's lawyer is apparently a moron who doesn't know the difference between trademark and copyright.

If they'd claimed a copyright infringement, though, the ISP has to act.


Is it GoPro's lawyer? Seems to me it might well be the CEO's fault for hiring marketing people who would send out such a takedown notice without running it by a lawyer.


The hosting company doesn't have to take down the content. Rather, if they don't take down the content and it is later found infringing, then the hosting company can't claim the protection of the DMCA safe harbor.


Which is functionally the same thing. A court making a stupid judgement would result in the entirety of SoftLayer losing the protection.

How many times have we gone "how the hell did that decision happen?" with a patent or legal case? Seems like it happens daily.


But the allegedly infringing content in the DMCA takedown in this case is (nonsensically) a trademark, so the safe harbor wouldn't protect SoftLayer against anything.


It's not functionally the same thing, because there is nothing here for them to be liable for. "entirety of SoftLayer losing the protection"? What are you talking about?


Sorry, this is completely false.

1. The hosting company does not have to act, ever. It just may cause them to be liable.

2. The hosting company can always push back on faulty notices, like this one, with no impact. There is nothing for them to be liable for, as the subject matter is not properly for a DMCA notice, and an invalid DMCA notice imputes no knowledge to them, even if the part that would normally give them notice is valid. This is actually well settled.

So, in short, no.


Reading the reddit thread on this, it seems that the DMCA takedown was because the review is using copyrighted images/material that is authorized for use by GoPro resellers, of which digitalrev.com is not one.

I found this comment by photoknut[1] summed up the story:

"I'm sure the DMCA was used a general way for GoPro to have this article pulled. Sure they could've had lawyer contact lawyers and go through all that, but I'm sure this was easier. They clearly don't allow unauthorized resellers to use their images, that definitely falls under the umbrella of a DMCA takedown notice. GoPro owns those images and says who can use them, DigitalRev clearly can not. "

He goes on to mention that digitalrev has a shady history of re-selling the camera they damage in reviews as a new product.

1: http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_l...


A shady history of reselling has nothing to with a DMCA takedown. A DMCA takedown notice that says nothing about copyrights is a nonsensical action to take to protect copyrights. Further, if this random internet person's conjecture was correct, the takedown notice would be for the images and not the article itself. That is, it can never legitimately be a way for them to 'have the article pulled.'

Yes, doing something completely incorrect is easier than hiring an expert. But GoPro isn't exactly a mom and pop shop these days, do you think they use this same 'this was easier' philosophy on reporting taxes?


Why not file a counter notification?

If you are a SoftLayer client and/or end user, i.e., subscriber, and you feel that material you have placed online that has been removed following an infringement complaint is in fact not an infringement, you may file a counter notification. 17 U.S.C. Section 512 (g)(3) requires that to be valid, the counter notification must be written and addressed to our agent (listed above) and must provide the following information (the list below comes straight from the statute; if you do not understand the language please seek independent advice):

A physical or electronic signature of the subscriber. Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled. A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled. The subscriber's name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber's address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person. SoftLayer is not required to respond to counter notifications that do not meet the requirements above.


I hope that there will be a positive flip side to these incidents. The swathes of negative publicity and often humiliating climb downs that follow, will make the DMCA a toxic legal tool for many companies. At least those that are concerned with good PR anyway.


They filed a copyright claim for a trademark violation?


One point that I find interesting is that the letter posted on the site is actually from the "Brand Manager" and not "General Counsel". Not having read the material on the site before, I would assume that the article that seemingly pits GoPro vs. Sony did not have an overwhelmingly positive review of GoPro and maybe pointed out some shortcomings of the product and potentially some flaws.

No need to define the role of Brand Manager here, but it would seem that this take down notice was done to censor a review that they did not find endearing.


Question: Do you have to be a lawyer to send a DMCA notice?

This one was sent by their "brand manager" called Patrick Hayes. I highly doubt they're a lawyer. Can anyone weight in on if this is lawful?


Anyone can send one. It's a legal document, made under risk of committing perjury (a serious criminal offence that carries jail time) so not getting legal advice before you send one off seems a bit silly.


Ah ok. Thanks.


That's got to be a fuck up, GoPro don't seem stupid enough to sic a DMCA on a review.


They already released a statement saying it was on purpose. They don't seem to think it was wrong.


I've just been reading the reasons behind it and it's so, so stupid.


This makes me mad. It's that simple.


This url would be banned since GoPro would use the same argument for not using *&tm; with GoPro


IS DMCA applicable worldwide?

Does DigitalRev have any US presence at all?

I see a customer service hotline and a US webstore, but they are based out of Hong Kong.

"2701-2705 Saxon Tower

Cheung Sha Wan

Kowloon

Hong Kong"

http://www.digitalrev.com/contact_us


They're hosted at a US company, SoftLayer, who has to comply.


Or would have to comply to gain safe-harbor against copyright infringement, if any copyright claims were made in the DMCA takedown notice. In this case, there were only trademark claims, and there is no DMCA safe harbor for trademarks.


We know a single side of this story.

Unless someone has the actual story. There may have been infringing content.


Nope. Any takedown notice or C&D that can't even keep straight whether it's talking about trademarks or copyrights is an empty threat. If this kind of thing were sent by a lawyer, that lawyer would need to be disbarred. There's just no room here for another side of the story to demonstrate some kind of competence on the part of GoPro.


Here's GoPro's story: http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_l...

"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."

(No representation is made herein as to the validity or invalidity of this side of the story.)


Why are the gopros on that site more than double the retail cost?


So we have a scammy grey market retailer advertising GoPro cameras using GoPro's official marketing material (mostly images). Perhaps GoPro sees this as brand damage and unleashes the DMCA, but using the wrong URL. Then the Internet misinterprets the attack as attempted censorship.


The pricing is definitely odd. Some are a lot more than retail, some are a bit more than retail.


Probably because DigitalRev is based in Hong Kong... just a guess, though.


Is it possible that someone claimed that GoPro issued a takedown notice when they did not? Just to make GoPro look bad and attract some publicity to this "GOPRO Hero 3 vs SONY HDR-AS15" article?


No, gopro has acknowledged it. I think it's a weak response, but here it is: http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_l...


In the reddit thread provided by dshankar it looks like they did send it. They acknowledge it and say it was for some images and branding they used on the review.




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