Digital Camera Review Taken Down By A Botched DMCA Notice That Makes Claims Of Trademark Infringement

from the IP:-it's-all-so-much-peanut-butter-and-chocolate,-apparently dept

We've seen the DMCA takedown process abused to stifle criticism or remove unflattering content from the web. Knowing that, the first reaction to reading about a website being forced to remove a product review after being hit by a DMCA notice is to assume some overzealous representative of the affected company is simply using copyright's powers for evil.

DigitalRev recently posted a review comparing GoPro's Hero 3 camera with Sony's HDR-AS15. Not long after that, a DMCA notice arrived from GoPro (or rather, its "brand representative"), demanding that the review be taken down. So far, so censorious. But the DMCA notice sent didn't describe any sort of copyright violation. Instead, it headed off into a completely different IP area.

The notice starts out like many others:

We are providing you this letter of notification pursuant to the Digital Millennium Copyright Act 17 USC??512(c) to make Softlayer.com aware of material on its network or system that infringes the exclusive copyrights of Woodman Labs, Inc d/b/a GoPro (“Company”). We hereby affirm that the undersigned is authorized to act on behalf of Company whose exclusive intellectual property rights we believe to be infringed as described herein.
Barring the extraneous question marks, this all looks perfectly normal. But the next paragraph reroutes the entire DMCA.
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
At this point, the notice's issuer, Patrick Hayes (Brand Manager for Woodman Labs), is in uncharted territory. The Digital Millennium Copyright Act notice is for copyright violations only, as can readily be determined by name of the notice itself. Hayes reasserts his trademark violation claim a few paragraphs later, along with a sentence that briefly raises copyright again before returning to the misguided effort at hand.
As you may know, if this information is not removed after notice that complies with the DMCA, the Internet Service Provider may also be held liable for the copyright infringement.

I have a good faith belief that use of the trademark(s) described above in connection with the domain and URLs described above is not authorized by the trademark owner, and such use is not otherwise permissible under applicable law.

I represent that the information in this notification is true and correct and that I am authorized to act on behalf of the trademark owner.
Hayes really shouldn't be "representing" that any of this bizarre IP melange is "true and correct." Most of it isn't, starting with using a copyright-only takedown form to shutter a review over alleged trademark infringement. Then there's this: the trademarks mentioned are character marks for the name of the product itself -- "GoPro Hero" -- suggesting that DigitalRev is not allowed to use the name of the product when reviewing the product. This is not how trademark law works. At all.

Hang on, though. It gets a bit weirder from there.

As I mentioned earlier, the first reaction is that GoPro doesn't like DigitalRev's review and wants it removed before many more people can read it. (That was DigitalRev's first instinct as well, as detailed in its follow-up post on the subject.) Fortunately, DigitalRev screencapped the relevant part of the review.


There's nothing in that review that looks like it should trouble GoPro enough to overreact in this fashion. In fact, commenters on the site point out that DigitalRev's reviews of GoPro products usually range from "positive" to "overenthusiastic." So, if the review isn't the issue, what is?

Thankfully, another rep from GoPro responded quickly to clear up the confusion... by adding more confusion. The official statement, left at both Reddit and PetaPixel reads as follows:

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. 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.
There are a few problems with this, but first and foremost is the fact that the URL specified in the takedown notice is the review's URL. Nothing involving DigitalRev's online store was mentioned in the letter and no offending URLs listed. Not only that, but this rep claims to have spotted offending 'images,' something the mentioned trademarks don't cover. A comment left at PetaPixel by GoPro's social media rep adds this to the conversation:
There are a few things that are muddling this situation at the moment. The notice was sent to digitalrev.com not because of the review, but because digitalreview.com is not an authorized reseller and are using our trademark and product images inappropriately. The notice is in regards to the sidebar, not the review itself, but we can see why it seemed like it as the url links to both.

We would never attempt to restrict anyone's freedom to share their opinion about us or our products, positive or negative.
Even if this rep is correct and Woodman Labs meant to target improper use of its trademarks, it missed with both the delivery system and the URL specified. A DMCA notice can't stop trademark infringement. Furthermore, while a hosting company can be held liable for contributory trademark infringement, it's usually a result of the host mishandling takedown notices (and some conflation of copyright and trademark by the presiding judge), rather than a foregone conclusion. Then again, if you want to hold a service provider liable for this sort of infringement, it helps to use the standard process -- directly contacting the site owner and asking him or her to remove the infringing items. Using a DMCA notice for alleged trademark infringement is just plain wrong, although various GoPro reps' insistence that the trademark infringement includes "images" most likely explains the existence of this half-copyright, half-trademark aberration.

However, the most probable explanation for this IP circus is probably contained in this blog post from last November, which details the author's brief altercation with Patrick Hayes and Woodman Labs over a parked domain containing the word "gopro." The letter he received accused him of "domain infringement," and while the tone of the letter was generally cordial, Patrick Hayes made the assumption that any registration of the term "gopro" could only be related to Woodman Labs' products.
GoPro does not authorize any of its resellers (or anyone else) to use “GoPro” or “HERO” in domain names. Your registration of goprodivemaster.com is unfortunately in direct violation of this policy. We understand that your intention is simply to sell and promote our products, but GoPro cannot risk misleading customers into believing that they are interacting directly with GoPro when they are engaging with your website or your organization. The use of our trademark terms in your business name may cause confusion, and is prohibited under international trademark law.

Even if the domain redirects to another site, this is not a permissible use of our brand terms.

Please understand: GoPro has spent years building its brand name—only the company itself is legally represented as “GoPro” or the manufacturer of the “HERO” line of cameras. We need you to kindly discontinue the use of our registered/trademarked name as soon as possible.
The author points out that his parked domain had nothing to do with GoPro or its cameras. He also points out that this issue will certainly surface again, considering the Professional Association of Underwater Instructors uses the term quite often in relation to its instructor development centers. Additionally, he did a little detective work and checked out the WHOIS information on the email address and found the domain was associated with MarkMonitor. So, it appears GoPro is outsourcing its IP protection to a company that seems to take a pray-and-spray approach to takedown notices.

Quite possibly it takes little more than having the word "gopro" appear in a URL (like the review above) to summon the bot-fury of MarkMonitor and Patrick Hayes, "Brand Manager." This explains the bizarre trademark claims and the incomprehensible takedown of a positive review. If this is indeed the case, GoPro is probably considering taking the job back in-house, seeing as its reputation is being damaged further with each retelling of this unfortunate saga.

UPDATE: GoPro's Twitter account claims that five other URLs were included in the takedown notice, but were scrubbed by DigitalRev prior to publishing. However, it has not posted the unedited version for verification.



Reader Comments (rss)

(Flattened / Threaded)

  1. This comment has been flagged by the community. Click here to show it
     
    identicon
    out_of_the_blue, Mar 21st, 2013 @ 1:41pm

    Gosh, it's the old one "botched" anomaly means "do away with all copyright" theme!

    You guys must have this on a schedule and shoehorn some text in when the time comes. -- Well, I suspect this was pushed out quick to distract from the just prior IsoHunt loss.

     

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

  2.  
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    Jay (profile), Mar 21st, 2013 @ 1:56pm

    Now I know what camera not to buy...

     

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

  3. This comment has been flagged by the community. Click here to show it
     
    identicon
    Anonymous Coward, Mar 21st, 2013 @ 1:56pm

    ipenforcementoutliers.com

     

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

  4.  
    identicon
    Anonymous Coward, Mar 21st, 2013 @ 2:16pm

    Re: Gosh, it's the old one "botched" anomaly means "do away with all copyright" theme!

    "do away with all copyright"

    Where did you read that? Oh right you comment on the stories, not read them.

     

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

  5.  
    identicon
    Anonymous Coward, Mar 21st, 2013 @ 2:17pm

    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.

    Using a hammer to crack a nut, unless they are claiming the images used were their copyright. The implication is that they were not, as they were not the 'authorised images'. That should not be reason for a DMCA notice, but rather a polite note to request correction.

     

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

  6.  
    identicon
    Anonymous Coward, Mar 21st, 2013 @ 2:30pm

    DOH!

    Have you looked up the definition of 'anomaly' recently?

    a·nom·a·ly
    /əˈnäməlē/
    Noun

    Something that deviates from what is standard, normal, or expected.
    The angular distance of a planet or satellite from its last perihelion or perigee.


    Since these posts seem to be a daily occurrence around here maybe they are a bit more than 'just an anomaly'.

     

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

  7.  
    identicon
    Scote, Mar 21st, 2013 @ 3:57pm

    GoPro Seems to Have A History

    People should check out the 108 one star reviews for the new GoPro Hero Black Edition.

    http://www.amazon.com/GoPro-CHDHX-301-HERO3-Black-Edition/product-reviews/B009TCD8V8/ref=dp_top_ cm_cr_acr_txt?ie=UTF8&showViewpoints=1

    The Camera has gotten five star reviews on Gadget sites because of its small size and amazing specs. But many, many actual users say that the specs don't mean a thing when the Hero 3s are constantly crashing. If there is one thing your action camera needs to be it's reliable, because you only have one chance to record that footage. Reviewers claim that GoPro is knowingly sending out defective cameras. So defective that many people say they destroy expensive 64GB micro SD cards.

    http://discussion.gopro.com/gopro/topics/gopro_killed_my_sandisk_64gb_class_10_sdxc


    R eviewers allege that the people who give the camera good reviews haven't used it enough and that the errors are cumulative, and build up due to software errors over time.

    When you get a $400 GoPro Hero 3 Black Edition camera the first thing you have to do to use them is a mandatory update the to firmware, the shipping firmware apparently being defective out the door.

    On amazon, reviewer "Drift Sessions" claims that GoPro doesn't allow negative reviews on their site:

    "We tried to post this same review (but 3 stars and minus the go-pro being a bad company part) but they have refused to post it! We did not violate any of the rules they have when posting a review on their website. The review was rejected because of the simple fact that it was a 3 star review of their product..."


    A look at the GoPro website shows that there are, in fact, negative reviews of the GoPro Hero 3 black. However, they don't have any where near as many as on the Amazon website, so it is possible that some negative reviews are not making it on to the GoPro site.

     

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

  8.  
    identicon
    Anonymous Coward, Mar 21st, 2013 @ 3:57pm

    And where have we recently heard the name of MarkMonitor at? Could it be in relation to the owner of Dtecnet, you know the one they are depending on giving accurate accusations for the 6 strikes. This is the second time items like this has come up reflecting the poor identifying of copyright infringement articles, neither of which have hit the nail on the head and does not bode well for the supposed function it will have in 6 strikes.

     

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

  9.  
    identicon
    Anonymous Coward, Mar 21st, 2013 @ 7:19pm

    Re:

    Normally you would have thought that a company with such a horrible success or functioning rate would be ruined. As happens for the real business world.

     

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

  10.  
    identicon
    MD, Mar 21st, 2013 @ 9:07pm

    Silly Me...

    Here I thought there was an actual penalty spelled out in the DMCA for an egregiously incorrect takedown notice.

    Seems to be the one provision in the DMCA that is not enforced.

     

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

  11.  
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    G Thompson (profile), Mar 21st, 2013 @ 10:03pm

    Re: DOH!

    see OOTB is itself an anomaly because it totally deviates from what the whole human population associates with what is Normal, Standard and absolutely expected in intelligent conversation

    Though his post's aren't an anomaly, they are just infatuated induced stalking of Mike (and TD)

    Personally I just stick with calling it an Idiot and probably someone who is in great need of winning a Darwin Award

     

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

  12.  
    icon
    G Thompson (profile), Mar 21st, 2013 @ 10:09pm

    So we have a strange copyright dispute because they were not using "authorised" images (there are no such thing) instead using ones they themselves had taken so the copyright is actually owned by DigitalRev no matter what.

    Hmmmm..


    Then we have a trademark dispute because they were not 'authorised sellers' which leaves one wondering were they unauthorised sellers? (Again NO SUCH THING!)

    Basically GoPro and its agents (GoPro is fully at fault then) are trying to restrict trade, restrict speech, restrict someone photographing there products for any 'unauthorised' reason, and claiming copyright on a work (the photographs) erroneously. Seems to me this is ripe for an anti-SLAPP suit and a declaratory judgement ruling for restraint of trade

     

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

  13.  
    icon
    G Thompson (profile), Mar 21st, 2013 @ 10:11pm

    Re: Re:

    You forgot about the FUD factor they use in marketing their services and also bribery works too.

    Yes MarkMonitor I said bribery.. come at me.. go on :)

     

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

  14.  
    icon
    That Anonymous Coward (profile), Mar 21st, 2013 @ 11:49pm

    Re:

    but but but copyright!!!!

     

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

  15.  
    icon
    G Thompson (profile), Mar 22nd, 2013 @ 1:55am

    Re: Re:

    A Stammering copyright of butts? hmmmm.. they have meds for that you know ;)

     

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

  16.  
    icon
    Ninja (profile), Mar 22nd, 2013 @ 3:31am

    The sense of entitlement is disgusting.

    In the end it's just means to stifle opinions they didn't authorize.

    Oh, hello Ms Streisand!

     

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

  17.  
    identicon
    Anonymous Coward, Mar 22nd, 2013 @ 5:59am

    Re: Gosh, it's the old one "botched" anomaly means "do away with all copyright" theme!

    "You guys must have this on a schedule and shoehorn some text in when the time comes."

    OttB must have this on a schedule and shoehorn some text in when the time comes.

     

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

  18.  
    icon
    Niall (profile), Mar 22nd, 2013 @ 7:46am

    Re: Gosh, it's the old one "botched" anomaly means "do away with all copyright" theme!

    Since this is news that just happened, not something that Mike 'sat on' for a while, you are just blowing out of your arse as usual.

    Seriously, how do you get from "conflating copyright and trademarks" to "do away with all copyright"? Can you even do reading comprehension? Looks like *you* are the one who shoehorns your agenda into every post, only with less evidence.

     

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

  19.  
    icon
    DanZee (profile), Mar 22nd, 2013 @ 8:07am

    Lawyers

    I think it's amazing that you can find lawyers who will issue copyright infringement letters knowing that what they are writing has nothing to do with actual laws.

     

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

  20.  
    icon
    cryptozoologist (profile), Mar 22nd, 2013 @ 8:19am

    i can't wait to see them go after these guys...

     

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

  21.  
    identicon
    Anonymous Coward, Mar 27th, 2013 @ 12:49am

    Hey, GoPro, seems you are stuck at stage one of the five stages of grief on the whole digitalrev issue:

    Denial - Our bogus DMCA takedown wasn't bogus, I mean, it targeted a totally copyright infringing review... oh the review was original... My overpaid lawyers have just informed me that the problem is entirely with images on a completely different section of the site to that mentioned in the notice, under a different section of the law (Trademark) that DMCA doesn't cover... totally legit takedown - we are a reputable company that would never censor reviews

    Anger - Now be careful on this one, don't take it out on digitalrev - take it out on MarkMonitor: dump them immediately, scream down the phone at them, heck I'd even sue them for tarnishing your brand name, however it seems that you were far too complicit in this trolling so the lawsuit may be a flop

    Bargaining - Excellent opportunity to make good, talk to digitalrev, see if you can come to a mutually beneficial arrangement, don't cry if they don't want to be friends

    Depression - Be careful here, don't just throw your hands up in the air and say "Everyone on the whole entire internet thinks I'm a copyright troll, I'll show them copyright troll, GRRRR!"

    Acceptance - Let the healing begin, admit you stuffed up, come clean, promise to be good and stop the trolling, the internet will be a happier place

     

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


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