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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93 Comments

What an utterly stupid move on the part of this company. They should issue an apology. As photographers, we depend on the reviewers to enlighten us in our purchasing selection process. This company is attempting to make reviews illegal, which can only hurt both their products' exposure and their sales.

I agree. This whole thing is really strange.
I mean it's not like DRTV was bad mouthing the camera, they
recommended it over he Sony. The only thing this review might have
done is sold some more GoPro cameras so I really don't get why GoPro
would do this. All it is doing is hurting their reputation. Not to
mention setting a dangerous precedent. If go pro succeeds with
getting DRTV to take down a positive review of their product imagine
the slew of DMCA take down requests that will happen anytime someone
reviews a product unfavorably. All reviews will turn into nothing
more than marketing pieces for the products they are “reviewing.”
What's more a reviewe is clearly covered under fair use. DRTV
should have told them to screw off and let GoPro get laughed out of
court if they were dumb enough to take it that far.

they would have laughed it off if they could have. their ISP threatened to shut down their entire site if they didn't comply.

Not sure if you read the article fully. Digital Rev may be a great site for reviews but they are selling GoPro camera illegally!

Alexander Edbom's picture

It's not illegal to sell something without a permission, it's just not an official store.

Hmm. Just like it's not illegal to send out silly DMCAs? No big deal then eh?

if its an unofficial store then its extremely likely GoPro are not receiving the correct financial benefit from their sales.. There are many 'foreign' net stores that rip off western companies because they think they can!!

Lee Morris's picture

Why would they do this??? Everyone loved gopro, now they want to be some corporate bully?

I'm surprised to see you jumping on the bandwagon. You are a professional who knows the importance of branding. It's not an accident or magic that gopro has the brand it does and it's important that the people representing their brand do so according to the guidelines.

isn't part of branding deciding how you deal with things when they go wrong? I find it terrible that gopoop (I'd use their real name but I'm afraid of legal action) thought that a takedown order was needed. doubling down on that it wasn't clearly communicated is even worse. the takedown letter is pretty clear this is about trademarks and the review. they look even worse than a corporate bully with this track. they look incompetent which I can not imagine is good for branding.

They have rules that they asked to be followed when people can't follow simple rules they get things like DMCA takedowns as a response. Doesn't seem like a problem from my point of view.

when did they ask digitalrev before issuing the takedown? that's the problem everyone's having. If you show digitalrev was non-compliant with a polite request first then there would be no problem here

Trademark can only be protected to a certain degree within the boundaries of the law. This is also true about control over resellers. This is a good thing for obvious reasons.
"Unofficially" selling a product is perfectly legal and the only thing a company can do about that is not to sell the product to the reseller. If however the reseller has another source, then there is nothing they can do about it. Again, good thing.

The DMCA is a stupid piece of legislation, but it does not cover trademarks. What is very clear however is that reviews, which are journalistic and critical in nature are well protected under fair use. Mentioning trademarks, examining them and sampling material, even copyrighted, is fair use if it is deemed necessary for the review.
If a review is intentionally dishonest and provably damaging, then perhaps you can go down the "slander" path. But for obvious reasons this hardly ever happends because the material will be available until a decision is make, unlike a DMCA claim which oddly enough removed material prior to a verdict.(which is retarded, and makes it such a great bullying tool).

If you think that Gopro's course of action has any merit what so ever, then I can only pity you.

DMCA, the C is for COPYRIGHT, not TRADEMARK. Also, GoPro tries to tell everyone that it was for the words and images and not the article but the Notice they sent ONLY MENTIONS THE LINK TO THE ARTICLE. So yes, there are a lot of issues here...

I would just redo the review and have offended company's product's name and image blocked out.

What a fun comparison/review to have the resulting winner being the "legally" unidentifiable one.

So excited to review my new HoBo Rero!!!

Haaaaa!!!

Great one Caleb! I hope they don't ask me to take down my review too.

Whoah! Dave Dugdale from drumat5280(ex) and Learning DSLR Video! I learnt a lot from you sir.

Adam Cross's picture

I don't understand, this is almost like where radio dj's can't be heard to endorse a particular product by using it's name on air but in this case of a user review it's kind-of hard to avoid using the actual name of the product you're reviewing - has Patrick Hayes gone completely mad? I supposed you would have to call your review "unamed, popular video recording device 3" .. that'll make everyone want to read about it. utterly pompous

Adam Cross's picture

Someone is going to be pissed when Patrick asks them to email every single person on YouTube who has posted a review of their product or posted footage from it that also names the camera, are we even allowed to type the words GoPro in this comment box?

I really do not understand what they are doing. As Lee says, we all love GoPro, but if they keep this up they'll really damage their brand. Very very odd!

Isn't DigitalRev based in Hong Kong and therefore not subject to US law? Or does US law now apply to the whole Internet?

Tam Nguyen's picture

Not the hosting company, which is based in TX.

I imagine Woodman Labs has a Hong Kong based arm of the company that they can use to go after DigitalRev if they wished within the confines of Hong Kong law. But as a whole, no, DigitalRev is not bound my US law, but that doesn't stop the company from sending threatening letters. ;)

Also it is worth noting that the Digital Millenium Copyright Act is just an implementation of an agreement made by the World Intellectual Property Organization which is a branch of the U.N. and Hong Kong did agree to the original agreement. (Along with 184 other countries) I imagine Hong Kong has a similarly implemented law that GoPro could leverage should they wish to.

A response from the Director of PR at GoPro has been posted on Reddit: http://www.reddit.com/r/gopro/comments/1anq5d/gopro_doesnt_like_you_to_u...

The clarification makes less sense than the legal threat. If that's even possible.

I agree, Basically GoPro is upset that Digtalrev T.V. is making
them money by selling and advertising their products. Instead of
such an aggressive move GoPro should have just called up DRTV and
offered them the correct branding materials to market sell their
products with and maybe offered to make them an official retailer.
This is whole thing is just an arrangement between to legitimate
and credible businesses that needs to be cordially worked out. But
instead of doing that GoPro is acting like DRTV is some kind of
bootlegger selling DVD's out the trunk of their car. It's
ridiculous.

No GoPRo is upset that DigitalRev is selling their product without permission AND using images of the product that GoPro has not authorized and does not want associated with the sale of their device.

This is very common and isn't really unexpected. If you did the same with an Apple, or Samsung, or Nikon, or Canon, etc product you could expect the exact same sort of letter to show up once they found out.

That said, i think the person who drafted that letter could have been a lot more specific because it really does seem like they are going after the review.

Roberto Inetti's picture

Why would they need permission to sell the product in the first place?
Are they going to pursue everybody who sell their camera on ebay?

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