Initially happening a month ago, it wasn’t clear whether this was just a misunderstanding, but now it’s pretty clear what really happened:
On March 20th, the review site DigitalRev received a DMCA complaint from GoPro. The complaint letter specifically pointed to a review comparing the GoPro Hero 3 with the Sony AS15 action camera.
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
Accordingly, we hereby demand that Softlayer.com immediately remove or disable access to the Infringing Material at:
GoPro later sent an update, claiming this was a miscommunication:
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.
Now this would be fine, were it not for several serious issues. One, sending a DMCA takedown notice about an alleged trademark dispute is adventurous, as trademark and copyright are two different animals. A fact that an alleged lawyer should be aware of. Two, you don’t just send a DMCA and then later find out you made a few mistakes and weren’t really clear about what you wanted taken down. Filing a DMCA complaint is a serious matter which requires you to certify that you verified this claim to the best of your abilities BEFORE sending it, and it is astounding to see such a level of negligence on GoPro’s part.
But more importantly, GoPro’s explanatory statement is factually wrong and invalidates their DMCA even further, for the alleged use of “unauthorized product images” of GoPro cameras being sold in the DigitalRev online shop happens at a different URL: http://www.digitalrev.com/product/gopro-hero3-black-edition/MTAwMjE4Nw_A_A
Enough time has passed for GoPro to retract their DMCA and/or issue a corrected one. They have not done so. So not only is the DMCA being misused for an alleged trademark infringement, but also the DMCA notice wrongly targets a sensitive review that compares their product with a serious competitor. The allegedly infringing online shop URL is still accessible as well and no DMCA notice has been sent regarding it. However, due to the fact that a DMCA is a shoot-first-ask-questions-later weapon, DigitalRev would have to spend quite a lot of money for legal defense if they were to file a counternotice, which is probably the reason why they don’t appear to have done so.
This is not the first time GoPro clearly overstepped the range of their own trademark. Diving related sites have also received takedown notices over the term “Go Pro”, a term that’s perfectly alright to use as long as it doesn’t happen in the fields covered by the GoPro camera trademark application.
Unfortunately, although this is a clear case of DMCA abuse (wrong URL, using trademark infringement as reason for invoking copyright law) and although such an action is actually punishable by law, cemented by GoPro’s legal affirmation (“I represent that the information in this notification is true and correct”), hardly any DMCA abuse case is ever prosecuted.
In the end, the DigitalRev’s GoPro Hero 3 vs. Sony AS15 review remains offline. And a month after the “unclearly communicated” DMCA takedown notice, GoPro appears to be content with that review staying down.
Did we say GoPro? We meant a different product, the GoPru. Honest!