Leave No Trace!

Earlier this year, we talked about the dangers of relying on third-party bots to chase down potential copyright infringement, and the ironic circumstances that ensue when the rights holder’s own content becomes a target. It’s a frustrating situation for everyone, but this kind of oversight is no surprise when automation is let off the leash. What’s even more shocking are cases in which this paradoxical level of enforcement is employed by humans, as we recently experienced with Subaru for America.

The car manufacturer is currently sponsoring a nonprofit organization, The Leave No Trace Center for Outdoor Ethics. For the uninitiated, “Leave No Trace” is the concept of enjoying the wilderness responsibly, with an eye towards conservation and preservation of natural beauty. A noble cause to be sure, but two WordPress.com users discovered the hard way that a corporation’s actions can sometimes speak louder than its words.

In the application for The Subaru Leave No Trace Traveling Trainer Program, it’s suggested that, among other things, applicants should be able to generate social media content via creating blogs, posting photos, and creating videos. This is exactly what Sam and Jenna attempted to do when they created this blog as part of their application process.

Surprisingly, however, Subaru was less than thrilled with this harmless use of the brand name, and accused our users of trademark infringement and cybersquatting. Apparently the legal department at Subaru wasn’t aware of their company’s sponsored initiative. Yikes!

We passed along the notice to Sam and Jenna with the understanding that we would not be taking any action against their blog as their content does not constitute trademark infringement. In good faith, though, our bloggers took the high road and removed most instances of ‘Subaru’ from their blog to appease the automaker’s demands.

While Subaru reminded us that it “aggressively protects its trademarks and other intangible assets,” it’s unfortunate in this case that they didn’t maintain that same level of overzealous enthusiasm for our users or the great outdoors.

When Bots go Bad: Automated DMCA Takedown Problems

In the past, we’ve not been shy about highlighting a number of the issues that exist with the DMCA, and recently fought back against its abuse in court. However, it remains true that tackling repeated instances of copyright infringement online can be repetitive work, and it’s no surprise that some people opt to outsource this task to third parties who have an army of specially programmed bots at their command.

These kind of automated systems scour the web, firing off takedown notifications where unauthorized uses of material are found – so humans don’t have to. Sounds great in theory, but it doesn’t always work out as smoothly in practice. Much akin to some nightmare scenario from the Terminator, sometimes the bots turn on their creators.

Be Afraid

Be afraid

We saw this happen fairly recently on WordPress.com, in an it-would-be-funny-if-it-wasn’t-so-serious kind of scenario. Attributor.com sent in a formally valid takedown notification on behalf of an academic, demanding that we disable access to a PDF that infringed upon his copyright. Following the statutory requirements, we did so, and notified the user, with instructions on how to submit a counter notification if they wished to challenge the removal.

Within a few days we heard back from the (understandably unhappy) site owner, who explained that they were in fact the copyright holder. The takedown notification was issued by an agency working on his behalf, and their bot had mistakenly targeted the original author’s site.

Ouch.

The confusion was eventually sorted out after the agency retracted the original takedown notice, and we restored access – but not before it was unavailable for almost five full days.

The DMCA notification and takedown process is a powerful weapon in the battle against copyright infringement, but it can also cause severe harm to freedom of speech when used inappropriately. As a result, it is something that should be deployed carefully, and with respect. All too often, overly broad takedown notifications are sent to online service providers in a scatter gun approach, with the financial interests of third party agents (who are routinely paid by instance of successful takedown) placed above the accuracy of the reports.

There is no question that there are a lot of issues involved in choosing to use bots to enforce copyright, but having them turn against you has got to be one of the worst.

Hall of Shame: Portakabin Demand the Impossible

Trademarks are important. They allow businesses to build up value in their brands, and give us the ability to distinguish between competitors in crowded marketplaces. In theory, they are necessary to make sure that people are getting the products or services at the standard which they expect. Naturally, this system requires a means of legal enforcement for situations where a mark is used in a manner that causes confusion for consumers.

However, just as ‘apple’ is still a kind of fruit, and ‘Amazon’ is still the name of a rainforest, a trademark registration does not give the holder the power to control every use of that mark. Protection under trademark law only applies in specific circumstances – something that is vital in order to protect freedom of speech.

Sadly, there are many instances where companies and law firms scour the web to aggressively target any mentions of their trademarks that exist, whatever form they may take. This is something we have seen happen previously on WordPress.com with Janet Jackson.

Recently, we received another such claim of trademark infringement, this time regarding the WordPress.com site portacabincabins.wordpress.com.

In the claim, Portakabin Limited asserted that they had already been in contact with the owner of the site, which appeared to have resulted in its subsequent deletion.

This is what it currently looks like:

Portakabin Trademark Claim

This is a standard page that is displayed when a user deletes their site, and it prevents any other users from being able to use that URL in the future. However, having had the site successfully removed, Portakabin still weren’t happy. In their notice to us, they demanded that we disable access to the holding page URL completely. To illustrate their point, they attached a scanned copy of a print-out of the above screenshot. (Why is it that lawyers insist on doing that by the way?)

We don’t believe that trademark holders automatically gain a right to every subdomain related to their brand on the Internet. Despite there being no actual content on the page, Portakabin were determined to prevent any reference to their trademark being made, including in the actual URL itself.

In this case, there is clearly no infringement from a page that indicates a site is not accessible. Even if the deletion notice was to be removed, or replaced with a 404 Not Found response, there would be no way to prevent users from getting to that page by typing the URL into the address bar.

Sorry Portakabin. For demanding the impossible, you’ve made it into our Hall of Shame.

Sorry Ms. Jackson…

Janet Jackson is a fine recording artist, but seems to have employed some overly aggressive lawyers, bent on removing or controlling all references to her name on WordPress.com. Here are a couple of examples of the improper takedown demands we’ve received:

  • Trademark infringement: The mention of Janet Jackson in a post about dinner conversation topic “What would your WWE Smackdown name be?”

“Picture Sacha Baron Cohen in, what else? his movie The Dictator. Elaborate General’s outfit, hat, etc. He walks in flanked by half a dozen sexy female soldiers inspired by the Janet Jackson Rhythm Nation video.”

(Here’s what our user thinks.)

  • Copyright infringement: An image of Ms. Jackson used in a Tim Howard meme:

janet-jackson-tim-howard

We rejected both of these complaints on the grounds of obvious fair use. Though we rejected their demands, we wanted to make sure they got at least a little promotion for their client, so we tried to use as many Janet Jackson song titles as possible (hopefully this doesn’t draw another takedown demand from them…) in our response:

“It seems like you believe the use of the trademark “Janet Jackson” is reserved all for you, but we were hoping you’d be open to some feedback because your attempt to control every use of the mark is pretty nasty. If you read up on nominative use, you’ll discover that it doesn’t really matter that “Janet Jackson” is used on this site. If you believe there are any other alleged infringements, would you mind submitting a notice again via our trademark form?

http://automattic.com/trademark-policy/

So excited to work with you going forward.”

 

Kern’s Kitchen’s Mean-Spirited Censorship Pie

Kern’s Kitchen, the company exclusively behind “the one and only Derby-Pie® chocolate nut pie,” asserted its trademark against 32 bloggers on WordPress.com who had the nerve to title their recipes “Derby Pie.” Between the link to trademark information displayed prominently on their site and the many lawsuits they’ve filed, it’s clear that they take this pie business seriously. They’ve rightfully earned their place in the Hall of Shame as The Most Litigious Dessert in America.

We pushed back as much as possible to keep the posts up, and reached out to each of our bloggers about the issue and suggested alternate recipe names, such as “Kentucky Derby Chocolate Pie” or “Mean-Spirited Censorship Pie.” Our friends at EFF joined in on the fun too and made this entertaining video about the case.

 

Bikram: (Not So) Hot Yoga

Over the years, founder of Bikram Yoga, Bikram Choudhury, has been under considerable public scrutiny for alleged sexual harassment. In what we believe was an attempt to censor critical speech, several different individuals (supposedly) submitted five DMCA notices against a single blog post that touched on these accusations. After we rejected the first four DMCA notices because we had good reason to believe that they were not the rightful authors of the content,  the fifth was submitted by a lawyer claiming to represent Bikram Choudhury. In his notice, he alleged that Mr. Choudhury’s name and photo were used in violation of his copyrights and the law. We rejected the final notice because his name is not copyrightable and we believed that the photo fell under fair use.

Dorra Slimming’s Slim Pickings

After a less than ideal experience with Dorra Slimming, our user took to her blog to post about it. The company sent us a complaint alleging that her post was infringing on the copyright protected Dorra Slimming logo. After looking at the post, the only instance of the logo we could spot was in this photo that our user took:

dorra

Because the photograph supports her criticism, we rejected the claim on the grounds of fair use.