Analyzing GoPro’s DMCA Controversy

Yesterday, word broke that GoPro, the makers of the popular camera line, filed a Digital Millennium Copyright Act (DMCA) takedown notice against DigitalRev, a site that serves as both a store and a community for digital cameras.

What exactly was the target of the takedown notice is the subject of debate right now, but according to the version of the letter posted on DigitalRev’s site, the notice was targeting a review they had done of the GoPro Hero3 camera and specifically mentioned the trademarks “GoPro” and “Hero”.

When DigitalRev posted about the takedown notice the matter began to go viral. The problems with the notice, as presented, were easily spotted, even by those not familiar with the DMCA. First, the notice only mentioned trademark issues, which aren’t covered under the DMCA and, second, using a trademark name in a review is not a use in commerce and is not an infringement.

However, GoPro quickly responded to the uproar but only served to confuse things more. According to a GoPro representative, the review was not the target of the DMCA notice, but rather, revolved around the fact DigitalRev is not an authorized reseller and was not using authorized images and also using trademarks incorrectly.

But this only served to raise more questions than answers. If the issue at hand was the store, why was the review mentioned at all? Further, issues of using “unapproved” images and mistakenly using trademarks is, again, not a copyright issue and, most likely, isn’t against the law to begin with.

DigitalRev responded to GoPro’s Response raising many of those same issues. Noting that the DMCA notice clearly centered on the two trademarks and made no mention of images and noting that being an unauthorized reseller is legal under the doctrine of trademark exhaustion, more commonly called the first sale doctrine in the U.S.

So what happened and what can others learn from this ordeal? While the dust is still settling, there are a few things that are abundantly clear.

GoPro’s Biggest Blunders

The one thing that has become strikingly clear is that GoPro filed a very bad DMCA notice.

Whether the notice was unlawful or simply extremely unclear remains to be seen, but if the notice as posted on DigitalRev’s site is an accurate portrayal of the notice as filed, it’s clear that GoPro made a series of key mistakes.

1. Trademark, Not Copyright: The DMCA is exclusively for copyright disputes and not trademark ones. This was the wrong law to apply.
2. Not an Infringement: Using a trademark in a review is not an infringement of that mark. Furthermore, if images were at issue, fair use, most likely, protects their inclusion as part of a review.
3. Overreaction: If the dispute is, as GoPro says, one over improper images and misused trademarks, skipping straight to a DMCA notice, or any legal action, is a tremendous overreaction. With a legitimate site, this most likely could have been resolved with a much less formal route.

In short, GoPro overreacted to an non-infringement by using the wrong law.

While mistakes with DMCA notices are going to happen and are somewhat common, though not nearly as common as many make them out to be, it’s very clear that this was a deeply flawed DMCA notice and one that is unlikely to be redeemed by any explanation after the fact.

Unless DigitalRev is misleading the world with the notice it presented, there’s not much of a way that GoPro can turn this into a legitimate notice.

What Likely Happened

To be clear, this entire section is speculation and is based largely on my experiences with other companies. Normally, I am loathe to do too much guesswork, however, I noticed looking at the notice posted on DigitalRev that it was filed by “Patrick Hayes” who holds the title of brand manager at GoPro.

This person is clearly not an attorney and likely only has limited knowledge of the laws that deal with copyright, trademark and such. He probably chose a very poor tactic for handling this matter and created a large mess for his company.

But why was GoPro so aggressive in the first place? According to GoPro, the review wasn’t negative and the site, other than being an unauthorized reseller, wasn’t doing anything that could be seen as an affront to GoPro.

That question is a bit more difficult to answer.

I’ve been seeing a consistent trend of companies getting more and more aggressive on trademark matters. “Brand managers” have been increasingly used to talk to and threaten webmasters that use logos and trademark names in ways that the company doesn’t like.

Unfortunately, these front line employees tend not to be well trained in the nuances of the law and, on occasion at least, press cases that aren’t actually infringements. This seems to be furthered by the fact that many are judged largely on how many infringements they catch and stop.

This isn’t to say that brand managers are bad or that they routinely do bad work. Most are excellent at their job. However, some companies give brand managers too much power, too little oversight and too much pressure/workload. As a result, things sometimes jump the tracks.

Bottom Line

In the end, what it comes down to simple. Companies have a right, perhaps even a responsibility, to protect their brands and their works. However, they have at least an equal responsibility to ensure that their protection is both within the bounds of the law and within the bounds of good ethics.

GoPro misstepped here and it did so badly. Even with their explanation, there are legal and ethical issues with this notice that aren’t resolved. The best thing for the company to do would be to apologize and try to make peace.

On that front though, GoPro may be somewhat hindered by the fact that, according to its response, many of its representatives are at the X Games and not able to address this directly. It’s possible that the distraction has hindered them from pulling together a truly appropriate response.

Still, if GoPro wants to minimize the damage, it needs to bring an end to this quickly. The already-widespread coverage is only going to grow and confusing responses may only serve to make things worse.