
GoPro Uses DMCA to Take Down Article Comparing Its Camera with Rival - jamesbritt
http://www.petapixel.com/2013/03/20/gopro-uses-dmca-to-take-down-article-comparing-its-camera-with-rival/?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+PetaPixel+%28PetaPixel%29
======
mistercow
Under the safe harbor provisions of the DMCA, DigitalRev doesn't have _much_
wiggle room for not honoring a DMCA notification. They can't, for example,
investigate to see if the claims in the notification are true. As long as the
_form_ of the notification is valid, they have to honor it.

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)

~~~
will_brown
>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>)

~~~
jerf
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
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
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).

~~~
will_brown
>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?

~~~
magicalist
> _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._

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...](https://www.eff.org/deeplinks/2012/04/limbaugh-copies-michael-
savages-bogus-copyright-theory)

------
UnoriginalGuy
Online retailers can only use "authorised images" to advertise GoPro products?
That is more than a little sketchy. They cannot use their own original
photographs that they have taken and own the copyright to?

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...](http://www.techdirt.com/articles/20120703/11345519566/eu-court-says-
yes-you-can-resell-your-software-even-if-software-company-says-you-cant.shtml)

~~~
laumars
_> Online retailers can only use "authorised images" to advertise GoPro
products? That is more than a little sketchy. They cannot use their own
original photographs that they have taken and own the copyright to?_

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).

~~~
rayiner
Discussing this is hard because it's not even clear what the legal theory is
behind the notice. You cannot claim copyright over someone else's picture of
your product. As for trademark--you can only sue for trademark infringement if
your mark is used _as a mark in commerce_. A trademark holder doesn't own the
mark itself, just the right to use the mark to label its products.

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.

~~~
ajross
I think the first bit isn't strictly true. You _can_ claim copyright over
images of your product to the extent that the product image is copyrightable.
You can't publish photographic prints of copyrighted artwork, for example. And
I think there's case law about photographs of publicly-visible architecture as
well, but someone will have to confirm that.

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.

~~~
rayiner
> I think the first bit isn't strictly true. You can claim copyright over
> images of your product to the extent that the product image is
> copyrightable. You can't publish photographic prints of copyrighted artwork,
> for example. And I think there's case law about photographs of publicly-
> visible architecture as well, but someone will have to confirm that.

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.

------
ceejayoz
All of their arguments are bullshit for one big reason: they talk only about
trademark violations in the notification, while DMCA covers copyright
violations. They appear to claim no copyright violations, which makes it
totally invalid.

~~~
lutorm
Yeah, I read the notice and was thinking "are they _really_ claiming that
reproducing the name of the product is a copyright violation?"

------
electic
Safe to say I won't be buying GoPro. This is similar to the record industry
and I stopped buying music due to these shenanigans.

~~~
zobzu
The Sony is actually a better buy in many cases - and twice cheaper.

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)

~~~
jamesbritt
_The Sony is actually a better buy in many cases - and twice cheaper._

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.

~~~
joering2
They all do. So once again dealing with any company proves we live in multi-
colorred world; not only black/white, yes/no, good/bad.

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.

~~~
jamesbritt
_They all do. So once again dealing with any company proves we live in multi-
colorred world; not only black/white, yes/no, good/bad._

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.

------
threepipeproblm
Why call Mr. Hayes, who will be motivated to downplay this PR debacle and
abuse of the law? My company was planning on buying a couple of these to
document an R&D project... I just called sales and told them why I was no
longer planning on ordering. (415) 738-2480, then 1, then 3, then 1.

Any idea what product the original review recommended over GoPro?

~~~
commandar
>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.

------
anigbrowl
I had been planning on picking up one of these for an upcoming film project
(my 'day job'). Thansk to this, I've become aware of the Sony AS15 and decided
it suits my needs better. Smooth move, GoPro!

<http://en.wikipedia.org/wiki/Streisand_effect>

~~~
analog
Also worth looking at are the Drift HD, Contour+2, Panasonic A100 HD.

~~~
anigbrowl
Thanks, good suggestions all.

------
DigitalSea
Seems like the cool GoPro company is just another company after all. I
honestly thought GoPro were different from other companies, grounded and in
touch with what their customers actually want but after hearing of this my
view of the company I admired has been forever tarnished. Even if this DMCA
was just an accident, it's a pretty big accident. As pointed out in another
comment GoPro didn't actually supply a valid DMCA request, they didn't cite
what exactly was being infringed upon and instead spoke of trademarks which
are separate. Are Hacker News and everyone here who mention GoPro going to get
DMCA notices too for using their trademarks under fair-use?

~~~
analog
The recent launch of the Hero 3 was pretty terrible. The CEO had to issue a
public apology. [1] Plenty of problems that made the cameras unusable.

They are now basically an amateur camera that has been well marketed
unfortunately.

[1] <https://www.facebook.com/gopro/posts/271125813016872>

~~~
DigitalSea
As a GoPro Hero 3 owner I know all too well of the botched launch of the Hero
3. It was almost rendered useless until they acknowledged the issues and
released updated firmware to fix the issues. What makes matters worse in that
situation is I and many others contact their customer support for help and
they would not acknowledge it was a known or widespread problem until
obviously things reached boiling point. The camera is much better now, but
having said that it is obvious the company is being run by the wrong people.

------
ssimpson
I have a friend that sells car parts online and one of the companies whom he
was an authorized retailer for, did a DMCA takedown because he used their
logo. They contacted the hosting company who took down the whole server. his
store was down for several days while we worked out the issues. kind of
ridiculous.

------
deel
I don't own a GoPro, but wanted one badly until I read that. In fact I was one
of those people who would suggest it as a great camera for other people who
wanted a water-proof action oriented camera. 2 of my close friends own GoPro's
because of me and my big mouth. I doubt GoPro will be reading this as they
have their heads up their asses, but I'll be using my big mouth to scare
people away from GoPro from here on out.

~~~
paganel
I'm in the opposite situation, sort of, as in one of my friends was always
giving praise to GoPro cameras, so much so that I was really intending to buy
their latest model. After reading some of the comments in here and then going
and reading Amazon reviews from other GoPro customers suffice is to say that
I'm not going to buy any of their products anytime soon.

------
yock
I wonder what GoPro would think of a positive review from a retailer who
didn't use approved images and branding.

~~~
codesuela
well that's the odd thing

> 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

~~~
notahacker
Of all the dubious DMCA takedowns I've seen, this one has to take the Hanlon's
Razor prize:

 _Never attribute to malice that which is adequately explained by stupidity._

------
x0r
You only have to look on YouTube for comparison videos and you will see that
the Sony is a far superior camera. Especially the steady shot functionality
which should be mandatory for "action" footage.

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.

------
MrQuincle
Picture from google instant preview:
[http://www.dumpt.com/img/viewer.php?file=i3m7hqw4p1l437153by...](http://www.dumpt.com/img/viewer.php?file=i3m7hqw4p1l437153bye.png)

"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.

------
protomyth
Seems GoPro issued a statement (see bottom of [http://fstoppers.com/gopro-
issuing-dmca-notices-for-use-of-g...](http://fstoppers.com/gopro-issuing-dmca-
notices-for-use-of-gopro-and-hero) ), but it still is a poor and stupid way to
go about things.

~~~
supercanuck
The important part:

“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.”

~~~
jeremysmyth
Nice bit of spin from GoPro.

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](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.

~~~
citricsquid
If you look at the DigitalRev website you'll see the product widget in the
side bar[1], this lists the products they have for sale relevant to the
article. Why would a GoPro employee be looking at digitalrev.com? Probably to
look at reviews of their products. If they were on that review page and
spotted the GoPro being sold with unlicensed images (or whatever the problem
is) they're likely to link to the page they were looking at when contacting
their lawyers, correct? This seems like an unfortunate oversight; the person
that "discovered" the GoPro licensing issue linked to the page they saw it on,
not considering the potential confusion because they're linking to an
_article_ about GoPro.

Seems like an easy mistake to make.

[1] Screenshot: <http://i.imgur.com/PWJp2BU.png>

~~~
jeremysmyth
That logic might be acceptable if the DMCA takedown mentioned the images. It
doesn't. It specifically references the trademarks "GoPro" and "Hero".

Their "clarification" isn't.

~~~
yasth
It should be noted that there is no such thing as a DMCA takedown for
trademark infringements.

<http://chillingeffects.org/dmca512/faq.cgi#QID569>

So yeah pretty much nothing holds up.

------
jasonlingx
From <http://www.chillingeffects.org/question.cgi?QuestionID=132>:

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)]

------
rmc
GoPro seem to be radically misunderstanding what copyright is and the DMCA

------
beedogs
Well, GoPro's just been added to my shit-list, joining the illustrious ranks
of Sony, GoDaddy, and Chick-Fil-A. Well done, guys. I was actually considering
purchasing one of your products at some point.

------
tlrobinson
This is diassapointing. I've been a fan of GoPro for awhile, but between this
and their poor customer service I'll definitely consider other options next
time.

------
mk3
Seems like a legit way to loose hardcore fans. People generally do not like
corporations acting like d __ks.

------
alexvr
You would think GoPro would see this coming. If I were CEO of the review
company, I would _demand_ that the article be reinstated and hope to God that
GoPro sued me so I could get some extra cash and teach them a lesson. What on
Earth were they thinking? Hire a lawyer for God's sake.

------
rplnt
I really love DMCA. It does not work in cases it should work, it can be abused
for basically everything, it's misrepresented as some kind of international
law, ... It's so stupid it hurts.

------
XEKEP
Let's just hope that this GoPro's f@#kup will make some corporate lawyers to
think twice before trying DMCA takedowns.

------
guelo
Isn't there a big penalty for issuing DMCA notices maliciously?

------
vaadu
Are we sure the takedown wasn't sent by Sony to get sympathy?

------
rdl
I wonder if Softlayer leaned on DigitalRev at all.

------
kubatyszko
Never liked GoPro (it just looks soo stupid regardless of mounting option).
Now they gave me a reason to continue my feeling indefinitely.

------
uribs
So I assume this means that Sony camera are better than GoPro ones.

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.

