Legal Issues

by Mike Masnick

Filed Under:
dmca, jurisdiction, takedown

Court Says DMCA Takedown Recipients Can Fight Back On Their Home Turf

from the watch-out-for-unintended-consequences dept

Someone who prefers to remain anonymous notes that a recent decision in the 10th Circuit holds that "when a company uses the DMCA to take down stuff from eBay on grounds of copyright infringemen, the company can be sued in the state where the target resides." Specifically, the copyright holder for artist Erte sent a DMCA takedown notice for someone selling products on eBay using a variation of an Erte design. The copyright holder also sent a letter threatening a lawsuit. The eBay seller responded by suing in the local, Colorado, courts, asking for a declaratory judgment that the products did not infringe, claiming fair use. The case here isn't about whether or not there was infringement, but what's the right location for the lawsuit. The copyright holders were based in Connecticut and the UK, and claimed that Colorado wasn't the right jurisdiction for the lawsuit. However, the Circuit court found otherwise, noting that it was clear that the sellers were in Colorado (it said so on their auctions) and the takedown notice clearly impacted people in Colorado.

The post on the topic concludes: "The outcome is a harsh lesson for copyright holders who send cease and desist letters willy-nilly." That basically suggests that perhaps those who rush out to send DMCA notices won't be so eager to dash them off, knowing they may be sued at the location of the recipient. However, I'd suggest that a different result is likely -- and it isn't a good thing. Rather than just sending off nasty letters threatening to sue, expect DMCA takedown notices to be followed quickly by actual lawsuits. We're already seeing this in the patent world. Patent holders who are afraid that someone they want to sue will sue for declaratory judgment in a more friendly jurisdiction simply decide to sue first in a favorable location (East Texas), without providing much warning at all. So, the end result of this might not be those issuing DMCA takedowns become more careful, but that they start filing more lawsuits.

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  • identicon
    Greg, 11 Feb 2008 @ 8:28pm

    unintended consequences

    That could be true in some cases, but the real problem with the DMCA is it gives content owners a way to get content taken down based on claims that would never hold up in court. If content owners sue, they'll at least be in the same position they were in before the DMCA.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 11 Feb 2008 @ 8:56pm

    It's about the Accused

    Sometimes, like with this story, I love Judges. Essentially what this ruling seems to be about is that whomever is being accused can't be bullied. And this can easily extend into those pesky patent lawsuits that are always filed in Marshal, Texas of all places.

    Here's why I say this: The person who filed the lawsuit was responding to an accusation of copyright infringment. The person who was originally accused is going to be able to defend himself against the copyright holders without being stuck having to say fly out to the UK thanks to their accusations.

    This is empowering to me. A ruling like this makes perfect sense, and is fair and fits the heart of the system. If you've studied how the Constitution was designed, and the philosophies of the Founding Fathers you should see this readily.

    The whole POINT is that presumption of innocence, and empowering the innocent. The way it was MEANT to be is 9 guilty men go free just so that 1 innocent man keeps his liberty. The full burden is supposed to be on the person ACCUSING, NOT on the ACCUSED.

    Take a look at how murder trials are done. The DA has to convince you that a man is guilty. All the hardwork is on his shoulders, though the accused man is obviously going to be a little stressed about it. Then take a look at civil trials of copyright infringment. The RIAA gets to run around and the burden of proof is on the accused entirely. The RIAA tends to have very little evidence, and that evidence is usually questionable.

    This is a small step towards changing all that. I fully heartedly approve this ruling. I just hope Mike is wrong and it doesn't lead to them filing lawsuits immediately after sending a notice.

    Chances are, to me, it won't because the person has to have been given ample time to comply with the notice (and since they sent it to Ebay it was complied with ASAP) and if the notice is complied with they can't sue the person over that instance. If they repost it they can. Just goes to show, file a lawsuit in your local or state court if some asshat sends a DMCA takedown notice at you inappropriately.

    Oh and before we all rag on the DMCA, just rememeber MOST of it is actually good. It's just a handle full of mostly recently added provisions that screw it up.

    reply to this | link to this | view in chronology ]

  • identicon
    Robert Loblaw, 12 Feb 2008 @ 7:45am

    Patents are different

    I don't think we need to worry to much about races to the courthouse in the copyright context. I agree with the first poster that many of these cease and desist letters are based on infringement claims that would never hold up in court, and the senders know that.

    In contrast, the science and the law behind patent litigation is so tough that patent holders aren't worried about having their claims laughed out of court, and they rarely have to worry about summary judgment either. Plus, the incentives in patent law are different. For example, patent holders can use discovery to get a peek into what their competitors are doing.

    In my experience, patent holders don't send C&D letters until they've decided they are going to sue, and they have the complaint prepared and ready to file. The only reason they send a C&D letter is to establish proof of willfulness (more damages) and then they file suit as soon as they reasonably can. The recipients of the letters know this, so they scramble too. It's an entirely different dynamic.

    reply to this | link to this | view in chronology ]

  • identicon
    Fernando, 12 Feb 2008 @ 12:58pm

    The DMCA *took away* the ability to file those lawsuits you predict.

    reply to this | link to this | view in chronology ]

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