4 ms·

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

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
  >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). 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?
- rmc 14y ago
  (after the complete lack of penalties for that kind of misuse). 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.

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
>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). 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?
rmc 14y ago
(after the complete lack of penalties for that kind of misuse). 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.