4 ms·

>We have a good faith belief that the Internet site found at digitalrev.com infringes the rights of the Company by using the following trademarks of the Company

>We have a good faith belief that the Internet site found at digitalrev.com infringes the rights of the Company by using the following trademarks of the Company: “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 http://en.wikipedia.org/wiki/Fair_use)

jerf 14y ago
Fair use doesn't apply here. Fair use is a defense that can be used if charged with copyright violation that would otherwise be a violation of the copyright. It doesn't relate to trademarks. In terms of trademarks, it simply isn't illegal to mention the product by its trademarked name, so no defense is necessary in the first place as it is not even a valid charge. 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.
- mistercow 14y ago
  I think will_brown's point is that in order for the DMCA to apply, we have to charitably assume that the trademarks are also covered by copyright, in which case fair use would apply.
  - magicalist 14y ago
    Fair use still doesn't matter in the case of the DMCA. DigitalRev can ignore the takedown notice because they believe that it is fair use, but they then open themselves to liability because they lose their safe harbor protections (or their ISP does. It's not clear to me that a publication has safe harbor over their own articles in the first place, since presumably they are posting their articles with full knowledge that they are posting them...aka the articles aren't user generated content). 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).
    - mistercow 14y ago
      >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). 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]
      - magicalist 14y ago
        So, this kind of comes down to sloppy wording. 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-dancing-baby-lawsuit-set-for-jury-trial/ http://arstechnica.com/tech-policy/2013/01/six-year-old-danc...
- will_brown 14y ago
  >In terms of trademarks, it simply isn't illegal to mention the product by its trademarked name, so no defense is necessary in the first place as it is not even a valid charge. 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".

jerf 14y ago

Fair use doesn't apply here. Fair use is a defense that can be used if charged with copyright violation that would otherwise be a violation of the copyright. It doesn't relate to trademarks. In terms of trademarks, it simply isn't illegal to mention the product by its trademarked name, so no defense is necessary in the first place as it is not even a valid charge. 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.

mistercow 14y ago
I think will_brown's point is that in order for the DMCA to apply, we have to charitably assume that the trademarks are also covered by copyright, in which case fair use would apply.
- magicalist 14y ago
  Fair use still doesn't matter in the case of the DMCA. DigitalRev can ignore the takedown notice because they believe that it is fair use, but they then open themselves to liability because they lose their safe harbor protections (or their ISP does. It's not clear to me that a publication has safe harbor over their own articles in the first place, since presumably they are posting their articles with full knowledge that they are posting them...aka the articles aren't user generated content). 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).
  - mistercow 14y ago
    >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). 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]
    - magicalist 14y ago
      So, this kind of comes down to sloppy wording. 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-dancing-baby-lawsuit-set-for-jury-trial/ http://arstechnica.com/tech-policy/2013/01/six-year-old-danc...
will_brown 14y ago
>In terms of trademarks, it simply isn't illegal to mention the product by its trademarked name, so no defense is necessary in the first place as it is not even a valid charge. 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".