Manufacturer of action cameras, GoPro were up in arms yesterday over a review of their equipment on well known photography site DigitalRev. However, it wasn’t the outcome of the review that prompted them to bring in the lawyers and send a DMCA takedown demand, but the site’s use of registered trademarks. GoPro’s lawyers demanded that DigitalRev removed the trademarks ‘GoPro’ and ‘Hero’ from their site. In other words, the review had to go because it used the name of the product…

The DMCA takedown demand refers to the Digital Millenium Copyright Act, which covers copyright infringements, as oppose to trademark infringements which this case (in GoPro’s own words) was clearly about. However DigitalRev felt they had to comply with the demand as the demand went through DigitalRev’s hosting company, Softlayer.

The DMCA Takedown Demand Sent by GoPro to DigitalRev

“This article has been taken down in response to GoPro’s DMCA takedown notice received via our hosting company SoftLayer. GoPro has filed a DMCA attack to take down this article for mentioning their trademark “GoPro” and “Hero”. We believe the mentioning of these trademarks are “fair use”, and this attack is unsubstantiated. However we have no choice but to take this page down to prevent SoftLayer from disabling access to the entire website. Here’s GoPro’s notice:

Softlayer.com:

We are providing you this letter of notification pursuant to the Digital Millennium Copyright Act 17 USC??512(c) to make Softlayer.com aware of material on its network or system that infringes the exclusive copyrights of Woodman Labs, Inc d/b/a GoPro (“Company”). We hereby affirm that the undersigned is authorized to act on behalf of Company whose exclusive intellectual property rights we believe to be infringed as described herein.

We have a good faith belief that the Internet site found at digitalrev.com infringes the rights of the Company by using the following trademarks of the Company:

“GOPRO” Registered: 3/3/2009 US Registration# 3032989

“HERO” Registered: 12/20/2005 US Registration# 3308141

The Company represents that it has not authorized your customer to use the Infringing Material. Based upon information at its disposal on digitalrev.com, we believe that the statements in this notice are accurate and correctly describe the infringing nature and status of the Infringing Material.

Accordingly, we hereby demand that Softlayer.com immediately remove or disable access to the Infringing Material at:

http://www.digitalrev.com/article/gopro-hero-3-vs-sony/Njk3MDQ3MDg_A

As you may know, if this information is not removed after notice that complies with the DMCA, the Internet Service Provider may also be held liable for the copyright infringement.

I have a good faith belief that use of the trademark(s) described above in connection with the domain and URLs described above is not authorized by the trademark owner, and such use is not otherwise permissible under applicable law.

I represent that the information in this notification is true and correct and that I am authorized to act on behalf of the trademark owner.

Sincerely,

Woodman Labs, Inc d/b/a GoPro

Patrick Hayes

Brand Manager

+1 (415) 738-2480 x7282

+1 (415) 814-5373 fax”

Once a demand like this has been made, liability can transfer to the site’s hosting providers to comply with the demands as they are deemed responsible for the content of their customer’s websites.

The legalities of these situations can be confusing, but trademark law can’t be applicable when reviewing or discussing online. As it happens, the review itself was very positive, and DigitalRev happily sell GoPro products, so who wins once the lawyers are involved? Given the backlash against GoPro that ensued on social media sites such as twitter and Reddit in the few hours following the demands, GoPro have achieved little more than angering consumers. Surely allowing manufacturers to dictate the content of websites like this would set a disturbing precedent?