Wednesday, May 25, 2016
Law firm advises: protect your brand via (c)
The advice from Drinker Biddle includes using the DMCA to get uses of your TM taken down, which is pretty much exactly the definition of one significant category of DMCA abuses. Update: I do not think that Drinker Biddle itself is advocating abusing the DMCA. I do think that the advice assumes that there is an increment of protection that one can gain by asserting copyright claims that would not be available from asserting trademark claims; it is my belief, based on the situations I've seen, that the situations within this increment are very often based on misuses or misunderstanding of the scope of IP law to suppress criticism or competition. Under Tiffany v. eBay, a website already ignores a legitimate TM-related takedown at its peril.
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If it is now the future, you are challenging Drinker Biddle's use of DMCA § 512, and you need evidence to help demonstrate a bad faith misrepresentation under § 512(f), please get in touch with me. I have archived a copy of the Drinker Biddle blog post, which may be useful in showing subjective bad faith. I would be happy to provide a copy of the snapshot and to attest to its authenticity.
Me too!
James and Rebecca, I'm not sure I follow how the blog post is likely to support a 512(f) claim. As I read it, it's saying that if there's copyrightable stuff on your website or in your mark, you can use copyright law to protect it, including a takedown notice, even if your main concern is protecting the mark. I take it your idea is that in the event of a wrongful notice this post will show a "knowing ... misrepresentation." But the post says the material in question has to be protected by copyright; and if it is, then that's enough to get around 512(f), given that there is no "state your true purpose" requirement in 512(c). If it's not, I don't see how the blog post helps to establish that they should have known it wasn't infringing.
I don't want to put words in the author's mouth (or James'). As I understand her position, it's that logos may well be copyrightable works and that you can thus legitimately use any tools copyright provides. I agree with part one of that. In my experience, bolstered by things like the transparency reports from Google and Automattic, when this strategy is employed in the DMCA space, it is almost always done to suppress competition or discussion. E.g., Statement of Paul Sieminski, General Counsel, Automattic Inc.), available at http://judiciary.house.gov/?a=Files.Serve&File_id=B343EABE-0BF1-44E9-8C85- B3478892B8E1; Matt Schruers, Observations on DMCA Reform and Notice & Takedown Abuse, PROJECT-DISCO (May 23, 2013), http://www.project- disco.org/intellectual-property/052313observations-on-dmca-reform-and-notice- takedown-abuse/ (An analysis of takedown notices sent to Google found that “over half—57%—of [DMCA takedown] notices sent to Google to demand removal of links in the index were sent by businesses targeting apparent competitors.”). The additional increment of protection over TM offered by copyright/a DMCA takedown, that is, is rarely justified. And, of course, if the sender is considering Lenz in a case like that, then they shouldn't send the takedown notice either. But the DMCA hammer--a quick TRO without the bother of judicial review--is very tempting. I have absolutely no reason to think Drinker Biddle represents the kind of clients who currently send abusive notices, but I've seen this advice given to trademark owners generally, and I think it's dangerous advice.
The first link isn't working but I'm familiar with the Quilter/Urban study. There's a couple different issues wrapped up in all of this I think. One is what you might call "stalking horse claims." I'm very troubled by those but I don't know what to do with them. It's an issue that goes well beyond copyright; some significant portion of real property disputes seem to have their bases in issues that have nothing to do with property. Heck, stalking horse claims are a problem with litigation generally. There's a couple of different types of stalking horse claims in what you mention -- copyright serving as a tool for policing trademark; and copyright as a tool for impeding competition. Quilter and Urban found a large portion of 512(d) takedowns being directed against competitors, but they noted that that alone doesn't tell us what proportion of those are valid notices. Calling it "abuse" is ambiguous -- is it abuse because it's not a valid infringement claim, or can it be abusive even *if* it's a valid infringement claim? Stalking horse claims in general strike me as something the legal system should discourage, but if there's a facially valid claim, I haven't hit upon a good way of weeding out the ones the plaintiff doesn't really care about, for copyright or anywhere else. You can make it more difficult for everyone to sue, which seems to be the trend over in civil-procedure-land, but that just reduces the problem through random culling of good with bad.
Second are claims that are not meritorious. There's at least two relevant ways things can go awry for claimants who are more concerned about trademarks than copyrights. One is to simply be confused about what 512 covers; there are plenty of "trademark takedowns" that make this mistake. The DBR post doesn't seem confused about this. Another is to get overly aggressive about what is and what is not copyrightable, which there might be a temptation to do because the main source of value in this situation is not the copyright. I think that would be the biggest danger, but in this particular instance the post seems reasonably careful on that issue too. There are obviously plenty of others who do not restrain themselves on that score, or who don't even bother with self-delusion about whether they have a valid copyright claim.
I think the DBR post rankles primarily because of the first problem, not the second, but that's not really something 512(f) can address.
Bruce, where we disagree is the cost benefit analysis. If you think as I do that the average 512 notice for use of a mark--even a copyrightable mark--is wrong as a matter of TM and (c), then the culling I suggest isn't random. Take out the parentheses and the extra space and the first link should work, btw.
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