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.

 

 

DigitalRev took to twitter to say this –

 

 

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.