UPDATED #2: GoPro Issued DMCA Notice to DigitalRev

UPDATED #2: GoPro Issued DMCA Notice to DigitalRev

NOTE: This post has been updated with an official response from GoPro. GoPro is recently gaining attention from their battle with online retailer DigitalRev. DigitalRev lashed out at GoPro for an apparent attack on their use of GoPro's name and images in a review, but the story went deeper than that. After talking with GoPro's team, GoPro may have had every right to issue that DMCA.

ORIGINAL STORY PUBLISHED 03/20/13 at 10:59 AM PST

A DMCA notice works with the Online Copyright Infringement Liability Limitation Act (OCILLA) United States copyright law that is meant to protect different brands from being infringed upon. The general idea of it is to protect different people from using unauthorized copyrighted material for their own use. However, this is typically done with the use of copyrighted images, music or video, and not with a trademarked brand name.

This was initially brought to our attention through DigitalRev, who recently compared the latest GoPro Hero3 to Sony’s latest, the AS15. The review, posted back in January just recently received a DMCA notice from Patrick Hayes, the brand manager at GoPro requesting the review be taken down. Perhaps the strangest part of it all is that the review highly recommends the Hero3 Black edition is the clear winner between the two. The notice sent to DigitalRev is as follows.

 

GoProLEtter
 

DigitalRev took to twitter to say this --

DigitalRev
 

 

GoPro does have their copyright information on their website with the first sentence reading "Woodman Labs, Inc. d/b/a GoPro (“GoPro”) respects the intellectual property rights of others and expects its users to do the same." While 'GoPro' and 'Hero' are trademarked brands of the Woodman Labs Inc, the question is if GoPro has the right to send DMCA notices to those using their brand name in publication. My personal opinion is no, but I'm certainly no copyright lawyer. It seems that DigitalRev ISP intends on complying with the order within the next 24 hours without any say from DigitalRev, its still unsure if that's because they know something we do not, or if they're falling victim to GoPro's scare tactic.

UPDATED 03/20/13 11:30 AM PST

GoPro has released a short official response and has also said they will be speaking to us further about this:

"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."

When asked what would happen if, say, Fstoppers was to use incorrect images they responded that it was not a concern because Fstoppers does not sell GoPro product. The issue is that DigitalRev is reselling GoPro "illegally."

We will continue to keep you updated as this story progresses.

UPDATED 03/21/13 7:17 AM PST

DigitalRev has released a short response with issues they've found and has also said they will be speaking to us further about this:

Phrase in Question 1:
DigitalRev lashed out at GoPro for an apparent attack on their use of GoPro’s name and images in a review

DigitalRev's Concern:
The DMCA attack is clearly and explicitly targeted at two trademarks, "GoPro" and "Hero", and there has never been a mention of images in this DMCA. Images is not part of this attack whatsoever.

***

Phrase in Question 2:
After talking with GoPro’s team, GoPro may have had every right to issue that DMCA.

DigitalRev's Concern:
Please note that this is not a correction of factual error. We understand that this is probably your own opinion and if so we totally respect it. However we believe that GoPro has absolutely no right to issue the DMCA concerned or indeed any DMCA, because there is simply no trademark or copyright infringement anywhere. If it is GoPro's opinion that they have every right to issue that DMCA, we would definitely like to challenge that assertion in a court of law (if we can afford it that is).

DigitalRev's thoughts:
We have not been told to date exactly which part of the site/content infringes their trademarks or copyrights. We know there isn't any. Not being an authorized reseller is absolutely legal, and it's very common in jurisdictions where the trademark exhaustion doctrine is accepted in courts (e.g. the court of Hong Kong SAR). Anyhow - authorized or not authorized - it has nothing to do with the nature of this case, which is plain abuse of the DMCA.

The very fact that the DMCA is handled by ISP on a "guilty until proven innocent" basis requires companies to use it with integrity. Yes you can sue for damage, but how many websites can afford suing a large corporation? It is precisely this reason that DMCA bullies exist because not many people can afford taking them to court for damage. The fact that we have received no communication at all from GoPro before been sent a DMCA via the ISP sets a very bad precedent for how larger companies should deal with third party websites.

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Zach Sutton is an award-winning and internationally published commercial and headshot photographer based out of Los Angeles, CA. His work highlights environmental portraiture, blending landscapes and scenes with portrait photography. Zach writes for various publications on the topic of photography and retouching.

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92 Comments
Previous comments

Photographers do not want others to alter their photo's. I would think the same reasoning applies here.

The takedown letter had no mention of images, it was invalid and referred to trademarks which were legimately usable and not under the realm of DMCA takedowns. A violation of their program has nothing to do with copyright, the DMCA or trademark, it would be in the realm of contract law.

Yeah, but the letter ordered them to take down the page. Sounds fishy if you ask me.

Anyone know if there has been any comment about this from the Sony camp?

I find this whole debate a blown out of proportion circumstance caused by a knee-jerk reaction without digging into the issue more. As Digital Rev is somewhat journalistic, shouldn't they have asked themselves why this was coming through on a positive review? Now, everyone is up in arms over nothing more than a misunderstanding. I mean coming from Digital Rev who has sold used products as new should fully understand that.

They sent a copyright takedown notice containing only information about trademarks, confusing their hosting company and forcing them to take down the page. There's no misunderstanding, only incompetent internet lawyering by someone who has no idea what they are doing.

So, the confusing you refer to doesn't equal misunderstanding? Yes, it was a bungled attempt but come on. Are you people really that upset or just following mob-mentality? Who genuinely cares? Really, be honest, who whole-heartedly 100% genuinely cares? GoPro have great products and I'll still use them. Just like I still check out Digital Rev even though they screwed up once upon a time.

Everyone deserves a bit of forgiveness.

No, they confused a third party, the hosting provider, into executing a copyright takedown that there were no grounds to initiate. Their actions would still have made no sense even if they had submitted the 'correct' URL, I have my doubts about this being a misunderstanding. However, my guess is that it was more out of incompetence than malice, but it still has a negative effect.

GoPro is a big company that has made the founder a billionaire and talks of an IPO this spring. It's ludicrous a decently run company would come up with this kind of amateur hour crap and still not be able to formulate a half-decent apology. Why is their brand manager acting like a goofball wannabe internet lawyer? Why is their PR team fumbling around and making it worse for themselves?

Further, misuse of the DMCA is not victimless or something to be ignored. Check out http://chillingeffects.org/ for a constant running dialog of this kind of thing. An invalid DMCA can still result in your entire site being taken down for a week or indefinitely, and is a form of corporate bullying.

All valid points and I agree on the point of incompetence 100%. I am also curious about the steps taken by D.R. to clarify the issue before the post to public - thus my comment earlier about knee-jerk reaction.

The brand manager should not be issuing these notices, but relaying it to their legal council/representative. Perhaps he had a little too much Dew and was thinking he was extreme.

I guess at the end of the day I have to question how many people are as upset about it as they let on to be.

Cheers!

From a PR standpoint it would have been important to realise it was a mistake to send out the DMCA - then they could have just brushed it off as such - now they're just making asses of themselves.

Also: I love how the article image plays on the topic.

Way to wipe out your own name G _ _ _O!

Take a look on ebay, thousand upon thousands of products (new) are being sold by legitimate businesses without permission or agreement and use images that have not been authorised. I don't see them being pursued.

Having said that, GoPro has clearly fucked up, they've jumped the gun and misused the DCMA. They should of contacted the retail department and worked it out there. Obviously they thought mass media hype would help them... well I guess it backfired. Serves them right for being so stupid.

That's not relevant at all. Reselling purchased items is allowed under first-sale doctrine. Taking someone's tutorial without permission is not. I can sell you a copy of Harry Potter I bought, but I cannot type the contents into a word and sell that file to you. The first is like reselling a GoPro, the second is like copying a tutorial. Further, the takedown was for using the name GoPro and the name of the product, i.e. trademarks. In the first place, DMCA takedowns are for copyright violation, in the second, it's not an invalid use of someone's trademark.

Great post here, thanks Sascha. This should be stickied.

Hey fstoppers, did you notice the URL of this article? http://fstoppers.com/gopro-issuing-dmca-notices-for-use-of-gopro-and-hero. That's at least 3 infringements.

And we're probably not going to receive a takedown notice.... Why? Because we don't sell their products 'officially on un-offically'.

I can see that some guys cant see the difference between review by Digital Rev TV and selling stuff on Digital Rev Shop.
Same as youtube, radio or anything else in the world - feel free to review, write comparisons or anything like that, but when it comes to selling branded stuff without permission - totally different story...

We lost them. How sad!

Hasn't anyone noticed that DigtalREV is Hong Kong based, i.e. outside US juristiction? DMCA is worthless.

This specific DMCA takedown is garbage because it didn't involve copyright (the C in DMCA.) However, if DigitalREV's hosting provider is US based or their site relies on a US domain name, they must comply to valid DMCA takedowns (unlike this one) to retain safe-harbor from liability.

No GP is not in the right! Still. This is total BS !! GP blew it. Big time! Lost respect. Lameness off the scale.

The new GoPro ad slogan: "GoPro, or go get used."

The "Infringing Material" is said to be AT the review (the URL is pointed out very clearly in the notice).

But, "The letter that was posted next to the review on DigitalRev was not sent in response to the review."

Ya. I'm convinced that the "letter did not clearly communicate this".

DigitalRev isn't the best company in the world that is for sure, someone bought a 5D from them wound up finding out that the same camera had been used by their bloggers to make videos and picutres then put it back in the box and sold it as new. Go GoPro! No love loss on DigitalRev.

Don't fall for these probably false stories Sugo. They are around everywhere and about everyone and mostly false. One question "who is Someone??"

Looks like from the orginal artical DigitalRev made good on thier mistake. Just goes to show, once a company has lost face, most consumers don't go back to see if proper restitution was made. We just remember the bad things they do, such as in the case I mentioned and in the GoPro issue.

http://www.prettyinwhite.com/digital-rev-hey-thats-my-camera/

GoPro, your legal counsel is giving you bad advice. If you file on a case like that you will lose and pay attorney fees. If they are not your fucking photos they have a constitutional right to publish them with a license from the copyright holder in a comparison review of your product. As far as trademark goes, your understanding of that is misguided. Trademark protects you from other products that could confuse consumers. The comparison article was not meant to confuse consumers. By the way, I am not a copyright attorney—I just know more about it than your attorney!

GoPro's response: "oh uh, yeah bro, thats totally what I meant to say"... -____- shut up gopro. just stop it, you're about to loose a lot of respect.

Digial REV Really stinks IMO. I hated when they laid the BS Story about the 5D MkIII's and now selling unauthorized GoPro gear. They are so lame. I will never watch another stupid review from that Pink POS again.

Just like any company in America, they really like to sue.

For example, Red is suing Sony for the video cameras?

The follow up explanation from GoPro simply makes no sense. Firstly, the takedown notice specifically cites two trademarks (GoPro and Hero) and makes no mention of branding or images. The takedown letter itself then actually links to the article in question. It is very specific in nature and to imply it was anything else would be wrong. Secondly, the DMCA is for copyright infringement only. It is not there to deal with trademark infringement, so the use of it to take down an article on this basis is still not correct.

Trying again as it looks like this got deleted once already... The follow up explanation from GoPro simply makes no sense. Firstly, the takedown notice specifically cites two trademarks (GoPro and Hero) and makes no mention of branding or images. The takedown letter itself then actually links to the article in question. It is very specific in nature and to imply it was anything else would be wrong. Secondly, the DMCA is for copyright infringement only. It is not there to deal with trademark infringement, so the use of it to take down an article on this basis is still not correct.

I just removed the GoPro 3 black from my Amazon shopping cart!
There are a lot of other toys to play with!

Oh my god...They get free advertisement and then this....OMG What's wrong with them? I would be happy if someone would say that my product is better than another! *facepalm*

I hate this, they sending a stupid law request before trying to talk with DigtalRev is simply wrong, and qualify as bullying, if they are sooo concern about there image how this is helping them? They need to correct this mistake or they are going to start losing costumers

I fully encourage everyone to express their feelings to GoPro (omg please don't sue me for saying your name) here: http://gopro.com/contact or via facebook or Twitter. What a PR clusterf*ck guys, really.

No doubt GoPro have a good product but their ethics along with customer service totally sucks ball*! As soon as there is a viable alternative to their camera I would urge people to switch. Obviously this is just my opinion! So don't sue me for saying GoPro in a negative light!

Is GoPro actually saying don't write about or use their products unless they approve of the concept first? Will FStoppers get a DCMA for this article due to the unauthorized use of GoPro?

It might be time to reconsider using GoPro products on any creative projects intended for publishing. Kinda, bizzarre.....

It was a legal letter that is as formal as it could have been, and stated exactly what they wanted to mean. Mistake? Not after those layers of management approval this would have gone through. GoPro is a big bullying firm from the top down, as this demonstrates.

The following up statement is just damage control as they discovered this very bullying tactic has backfired on themselves. Attempted to tweak the original meaning? We know better not to trust GoPro now. Not now, not ever. Never ever never a GoPro product for me my family friends or anyone I know.

This reminds me of the whole Sony / Lik Sang incident...

This is a more than enough reason for me to chose sony over the 'go poop' (I am afraid to ask for the real Gop** H*r* @ a store. they may sue me for using their " copy righted" trade mark.. guys @ Gopoop seem to be arrogant loggerheads. or is it just a publicity stunt or sort? how can I ask for the product @ a store without mentioning the trade name!!!!!!!!!!!!!!

Why does anyone care about this stupid shit.... I came here looking for reviews of the cameras not retarded legal gossip, worthless bullshit.