Take Down ProvisionsTake Down ProvisionsCopyright First. Now Trademark. What Next?

September 16, 2010

Copyright Modernization (1998)

• Purpose of DMCA was to bring copyright law into alignment with modern technology and international policy.

• DMCA consists of two key titles:

– Title I - Anti-circumvention (criminal penalties)

– Title II – Limitation of OSP Liability

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.” 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?

D. 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

10-14 Business Days

HEY!STOP!I’ll fix it.

That’s not right!

Sue him!

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 (2Tiffany & Co. v. eBay (2ndnd Cir. 2010) 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

134,7792006

59,0122005

45,2422004

20,9152003

Total Counterfeit Auctions Reported to eBay by Tiffany

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 (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

Alibaba.com

Alibaba

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 statutory 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-smacks-autodesk-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/cgi-bin/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.