

DigitalRev.com served with DMCA takedown notice by GoPro for review - choult
http://www.digitalrev.com/article/gopro-hero-3-vs-sony/Njk3MDQ3MDg_A

======
rayiner
Trademarks are not the subject of DMCA protection, see:
[https://www.eff.org/wp/unsafe-harbors-abusive-dmca-
subpoenas...](https://www.eff.org/wp/unsafe-harbors-abusive-dmca-subpoenas-
and-takedown-demands). 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.

~~~
pcrumm
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>

~~~
koenigdavidmj
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.

~~~
at-fates-hands
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.

~~~
wtallis
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.)

------
bradleyjg
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.

~~~
antiterra
> 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.

------
dshankar
GoPro response:
[http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_l...](http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_like_you_to_use_their_name_dmca_abuse/c8z8hdm)

~~~
xentronium
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...](http://www.digitalrev.com/article/gopro-hero-3-vs-
> sony/Njk3MDQ3MDg_A)

~~~
MikeKusold
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.

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

------
ChuckMcM
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.

------
engtech
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...](http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_like_you_to_use_their_name_dmca_abuse/c8z9j8e)

~~~
antiterra
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?

------
wtallis
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.

~~~
ceejayoz
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.

~~~
wtallis
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.

~~~
ceejayoz
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.

~~~
MaysonL
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.

------
nzealand
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.

------
MrScruff
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.

------
ceejayoz
They filed a copyright claim for a trademark violation?

------
veritas20
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.

------
UnoriginalGuy
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?

~~~
DanBC
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.

~~~
UnoriginalGuy
Ah ok. Thanks.

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

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

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

------
marshallford
This makes me mad. It's that simple.

------
manaskarekar
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>

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

~~~
antiterra
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.

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

------
dubcanada
We know a single side of this story.

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

~~~
wtallis
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.

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

~~~
wmf
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.

------
jedmeyers
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?

~~~
platypii
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...](http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_like_you_to_use_their_name_dmca_abuse/c8z8hdm)

