Transcript Take Down Provisions

Take Down Provisions
Copyright First. Now Trademark. What Next?
September 16, 2010
Copyright Modernization
• Purpose of DMCA was to bring copyright law
into alignment with modern technology.
• DMCA consists of two key titles:
– Title I - Anti-circumvention (criminal
penalties)
– Title II - OSP Liability Limitation
DMCA Title II – OCILLA
Title II: Online Service Provider Liability
– This title places limitations on liability* for online service
providers (OSP) who are in compliance with the nature of
this law.
– Service providers are defined as “an entity offering the
transmission, routing, or providing of connections for
digital online communications.”
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eBay
Google
AOL, Comcast (ISPs)
YouTube, Message Boards, Forums
*no $ damages, attorney fees, costs, etc.
DMCA Title II – Eligibility
To be eligible, the DMCA requires that OSPs adhere to
the following:
– Promptly block access to allegedly infringing
material if they receive a notification claiming
infringement from a copyright holder (“Notice and
Takedown”)
– Adopt and implement a policy of addressing and
terminating the accounts of repeat offenders
– Disclose identify of alleged infringers to copyright holder
DMCA Title II – Eligibility (cont.)
Exceptions to Safe Harbor:
– OSP receives a “direct financial benefit” (e.g.
Napster)
– OSP has knowledge of infringing material
– OSP receives proper notice and does not
“expeditiously” take-down material when
notified
DMCA Title II – Public Policy
Q. Who should bear the burden of policing
copyright infringement on the Internet?
A. The burden should be placed upon the
copyright holder to police infringement of
their rights on the Internet.
-However, OSPs must cooperate in their
enforcement efforts.
Example of Notice and Takedown
That’s not
right!
10-14 Business Days
I’ll fix it.
Sue
HEY!
him!
STOP!
False Notice and Takedown Notices - §512(f)
• Establishes liability for damages and attorney fees for
anyone who “knowingly” misrepresents that material
is infringing by sending a notice seeking that the
material be taken down.
• Rossi v. MPAA, 391 F.3d 1000, 1005 (9th Cir. 2004).
– Did not impose liability for MPAA’s notice when entire
website was taken down simply because it contained the
text “Join to download full length online movies now.”
– Court held that the sender of a DMCA takedown notice is
not required to perform a “reasonable investigation” and
“cannot be held liable simply because an unknowing
mistake is made, even if the copyright owner acted
unreasonably in making the mistake.”
Tiffany & Co. v. eBay (2nd Cir. 2010)
Tiffany v. eBay
• Tiffany sued eBay alleging trademark
infringement (direct + contributory) for the sale
of counterfeit goods by eBay’s users on its
site.
• eBay relied upon its notice and takedown
polices, which includes counterfeit and
copyrighted items, as a defense.
Tiffany v. eBay
• VeRO – Verified Rights Owner
– eBay program which makes submitting “Notice
and Takedown” claims easy for rights owners
who sign up
– Currently over 5,000 participants
– automatic removal of certain listings (i.e.
commonly used images, blocks of text)
– email new listings for review daily
Tiffany v. eBay
Total Counterfeit Auctions
Reported to eBay by Tiffany
2003
20,915
2004
45,242
2005
59,012
2006
134,779
That’s
over 360
auctions
per day!
REAL OR FAKE?
Tiffany v. eBay
• Tiffany conceded that when notified eBay
acted promptly and removed the listings.
• “For contributory infringement liability to lie, a
service provider must have more than a
general knowledge or reason to know that its
service is being used to sell counterfeit
goods. Some contemporary knowledge of
which particular listings are infringing or
will infringe in the future is necessary.”
Trademark Enforcement – Public Policy
Q. Who should bear the burden?
Tiffany: Trademark owners should not be forced
to monitor eBay’s website “24 hours a day
and 365 days a year.”
Court: The court recognized that its task is to
interpret the law and apply it to the facts, not
to allocate the burden of policing trademarks.
(i.e. take it up with Congress)
Trademark Counter notice?
•
Unlike the DMCA, there is no statutory
regime for notice and takedown.
•
As a result, few, if any, service providers
provide a counter notice or appeals process
when your content is wrongly taken down.
Rosetta Stone v. Google (E.D. Va. 2010)
Rosetta Stone v. Google
• Rosetta Stone sued Google for inducement
and contributory trademark infringement for
selling AdWords “Rosetta Stone”
• Amazon.com is a large purchaser as well as
others who operate websites selling
counterfeits.
Rosetta Stone v. Google
• To address fraud and counterfeiting
associated with its AdWords Program, Google
had created a “Trust and Safety Team.” The
Trust and Safety Team responded to “notices
of counterfeit advertisements on Google’s
website and [took] down any advertisements
confirmed to violate its AdWords Program.”
• Rosetta Stone sued as users gamed the
system.
Rosetta Stone v. Google
Rosetta Stone v. Google
• Google’s SEC statement said:
“as a result of its policy allowing the purchase of
trademark-protected keywords, it could be subject to
more trademark infringement lawsuits.”
• Rosetta Stone has evidence of ~200 instances of
Sponsored Links advertising counterfeit Rosetta
Stone products
• Asserted that Google continued to allow Sponsored
Links for other websites by these same advertisers to
use the Rosetta Stone Marks as keyword triggers
even after notice by Rosetta Stone.
Rosetta Stone v. Google
• The court drew heavily on the Second Circuit’s
reasoning in Tiffany v. eBay to reject Rosetta
Stone’s argument.
• Court found that Rosetta Stone failed to show
that Google knew or had reason to know that
it was supplying its services to parties
engaging in trademark infringement.
• Rosetta Stone is stuck with having to report
them to Google and have them taken down
one at a time.
eBay Notice and Takedown Form
Google /
YouTube Form
Has the DMCA Expanded?
• On the books, the DMCA is still only
applicable to copyright.
• In the real world (i.e. Google and eBay), the
DMCA has been extended to trademarks,
patents, celebrity rights of publicity, etc.
• The danger falls for the added categories, as
few takedown policies allow for counter notice
outside of the copyright realm.
How to Prevent eBay Takedowns
• Take your own photo of the item
• Include box, receipt, or instruction manual in
photo (if applicable)
• State that item is genuine
• Don’t copy description of product from
company’s website
Abuses
• Dymo, a printer ink supplier, tried to eliminate eBay competition
selling compatible cartridges:
– http://www.citizen.org/pressroom/release.cfm?ID=2183
• Autodesk tried to prevents sales of its own software on eBay
based on a theory that it licensed its software rather than sold it:
– http://arstechnica.com/news.ars/post/20080523-court-smacksautodesk-affirms-right-to-sell-used-software.html
• Cosmetic companies claim right to interfere with eBay auctions for
charging less than minimum price:
– http://pubcit.typepad.com/clpblog/2007/07/leegin-and-ebay.html
• Pottery Barn, Coach, and Williams Sonoma Outlet stores ban
known eBay sellers from buying their products and also are
terminating their auctions:
– http://blog.auctionbytes.com/cgibin/blog/blog.pl?/comments/2007/8/1186587390.html
Sample Policy
• First and foremost you must register an agent under
the DMCA. ($20 fee)
• Second, you must request notice including:
(i) signature
(ii) Identification of the IP claimed to have been infringed
(iii) Identification of the material that is claimed to be
infringing that is to be removed
(iv) Information reasonably sufficient to permit the service
provider to contact the complaining party
(v) A statement that the complaining party has a good faith
belief that use of the material in the manner complained
of is not authorized by the copyright owner
(vi) Certification under penalty of perjury.
Sample Policy
• Third, you must request that the complaining party
send you that notice, and provide clear instructions
on how and where to send it.
• Fourth, you must then take the material down and
provide notice to the user who submitted it.
• Upon takedown must provide that user with
opportunity to object if the material was removed
based upon a copyright claim.
• Finally, you must put the content back up if no lawsuit
is filed after receiving counter notice.
• Additionally, you must monitor users for repeat
offenses and potentially ban them for repeated
violations.