How to Submit (Valid) DMCA Takedown Notices

So you’ve discovered that a website is using something you’ve created without permission, and you want them to stop. The quickest route to make this happen is to submit a ‘DMCA takedown notice’, though the process itself can seem daunting if you’re not familiar with the language involved.

In short: The Digital Millennium Copyright Act, or ‘DMCA’ is a piece of American law that provides a mechanism for copyright holders to have allegedly infringing material taken down speedily from the Internet without having to resort to legal action – whilst also protecting the online service providers from liability for the actions of their users.

Should you wish to follow up on the unauthorised use of your works online, this guide will give an idea of what’s involved, and how to submit a formally valid notice. Having seen thousands of these takedown notices as part of my job, I know a fair bit about the quirks that are involved.

Things to Consider

Before submitting a DMCA takedown notice, there are some general things to bear in mind:

  • The DMCA is American lawAs a result, online service providers located outside of the US are not bound by its contents. There are similar provisions enacted in different jurisdictions, but generally the DMCA is seen as the industry standard. It is often the case that hosts will comply with valid takedown notices even if they technically are not required to by their local laws, but don’t expect bank on this.
  • Takedown notices do not prevent the spread of the material. Just because you manage to get something removed from one host, doesn’t mean that it won’t pop up again somewhere else – much like the ‘whac-a-mole’ game you see in American films. Sometimes giving attention to one instance of infringement can lead to a multiplication of the problem, rather than a solution. As a result, you need to question whether taking action will be worthwhile, or whether sleeping lions are best left undisturbed. This is relevant.
  • Not every use of copyrighted material is actionable. People are entitled to use copyrighted material without permission in certain circumstances, such as for the purpose of research, criticism, education, or news reporting; known as the ‘fair use’ doctrine. You have an obligation to consider this possibility before submitting a takedown notice for the use of content in which you hold a copyright interest.

The Takedown Notice

The DMCA takedown notice itself isn’t very complicated, but it does require a number of specific elements in order to be considered formally valid. It’s amazing how often people screw this up.

They are:

  • A signature from the copyright holder, or somebody who they have authorised to act on their behalf. This can either be a physical, or electronic signature.
  • An identification of the material that is being used without permission. In other words, what photograph, text, or other content is it?
  • An identification of where the infringing material is located. Where exactly is the content being used without permission? Include a direct link to the page where it exists, and be careful not to include dynamic URLs, as this can delay the process.
  • Details to allow the service provider to contact the complainant, such as address, telephone number, or e-mail address.
  • A ‘good faith belief’ that the material’s use is not authorised by the copyright owner, agent, or the law.
  • A statement that the notice is ‘accurate, and under penalty of perjury, that the complaining party is authorised to act on behalf of’ the copyright holder.

That’s all. There are various examples available on the web that add in a whole lot of extraneous information about the obligations of service providers and so forth, but legally this is not required. Whilst some smaller hosts may be intimidated this approach, the extra verbiage more often than not can seem as if the complainant is clutching at straws in a desperate bid to have material taken offline.

Some things that are worth noting:

  • You can have somebody submit the DMCA takedown notice on your behalf, if you would rather.
  • The signature must be of a person. This sounds obvious but in other words, you can’t sign your company name – it must be either yours or the third party acting as your agent for the submission.
  • Though some service providers specifically ask for it, the DMCA does not require you to provide all of your contact details. As a general rule, I would only supply the minimum necessary, and avoid giving up personal phone numbers and addresses This is particularly true as a copy of the notice can often then forwarded on to the user who published the material in the first place (depending on the policies of the host in question). An e-mail address should suffice.
  • If you do not want to supply your own details, the DMCA allows for you to submit a takedown notification through a third party agent, acting on your behalf.

A sample DMCA takedown notice is as follows:

Subject: DMCA Takedown Notification

To whom it may concern,

This e-mail is notification under USC 17 §512, the Digital Millennium Copyright Act (DMCA), of instances of copyright infringement operating on site(s) under your control.

The copyrighted work at issue is as follows:

** INSERT DESCRIPTION OF COPYRIGHTED WORK **

The unauthorized, and infringing copy is available the following URL(s):

** INSERT URLs WHERE THE COPYRIGHTED WORK CAN BE FOUND **

I have a good faith belief that use of the copyrighted materials described above as allegedly infringing is not authorized by the copyright owner, its agent, or the law.

I swear, under penalty of perjury, that the information in the notification is accurate and that I am the copyright owner or am authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

I demand that you expeditiously remove or disable access to the material in question.

I may be contacted on:

** NAME **
** ADDRESS **
** TELEPHONE NUMBER **
** E-Mail Address **

The following should be considered my electronic signature for the purposes of §512(c)(i):

** TYPE OUT FULL LEGAL NAME **

This can be downloaded over on Github.

PROTIP:

  • Don’t submit these DMCAs by post, or in PDF format. Unless you want to be really, really annoying (which you might!), this will only serve to slow down the actual process of getting your material removed, which should really be the priority.

The Process – What Happens Now?

Once you have submitted a valid DMCA takedown notice, the process is as follows:

  • The online service provider must act ‘expeditiously’ to ‘remove or disable access to’ the material that you have identified as infringing upon your copyrights.
  • The user who published the material has the option to submit a counter notice, asserting their right to legally use the material. At this point you will be notified, and if you do not give notification of beginning legal proceedings, the content in question will be restored between 10 and 14 days after the submission of the counter notice.

So there are a number of possibilities for what could happen:

  • Nothing. The service provider ignores your takedown notice, which can happen for a variety of reasons (such as their location outside of the US). At this point you are left with little option but to undertake legal action to have the material removed.
  • The material is removed by the service provider, and stays offline. The best possible outcome.
  • The material is removed by the service provider, but a counter notice is received shortly thereafter, leading to it being restored within the 10-14 day window unless you pursue legal action.

NB: This is not to be taken as legal advice.

DMCA Rejection Retaliation

Every day WordPress.com receive a sizeable number of DMCA takedown notifications, and every day I personally reject a fair number of them for being incomplete, invalid, or fraudulent.

Many of those who find their takedown notifications being rejected are displeased with the decision, used to service providers choosing to automatically process them, shifting the burden of proof onto the user, rather than take on the risk of liability for themselves. Unsurprisingly, this displeasure is often most aggressively expressed by dedicated third party agents whose sole business model is based on scouring the web for potentially infringing acts, and who get paid per removal. Some people may say that with a results-driven financial incentive to have material taken offline, that there is more of a chance for the DMCA process to be used inappropriately – but that’s something you’ll need to make your minds up on independently.

Yesterday a colleague let me know about one such organisation that had evidently found some of their notifications rejected in the past, who had then chosen to take to Twitter to voice their displeasure about me doing my job.

Screen Shot 2015-02-24 at 23.49.14

The image they linked to was of me, lying on the grass clutching a bottle of Buckfast – the weekend of the Queen’s Jubilee, if memory serves correctly.

The one they used wasn’t really very good quality though, so here’s a higher resolution one incase they want to try again:

crail

I’m not entirely sure what they were trying to achieve to be honest. It’s not as if pictures of me intoxicated are really all that hard to find, after all. My occasional penchant for Buckfast isn’t exactly a secret at Automattic either, given that I did my first annual ‘flash talk’ at the all-company Grand Meetup in Utah on the ol’ tonic wine.

Somebody (who shall remain nameless) suggested we reply to say:

Even smashed on Bucky, Clicky Steve knows more about the DMCA than RemoveYourMedia

Which is so beautiful it almost brought a tear to my eye.

That wasn’t the only tweet they aimed at me though.

Screen Shot 2015-02-24 at 23.49.26

It’s pretty bizarre that they would choose to use that case about Napster to illustrate the potential liability for service providers guilty of contributory infringement, since there are far more recent, compelling, and relevant judgements they could have made their point with. Ah well, better luck next time, eh? As far as I’m aware they never actually sued after these bold statements on social media, but maybe they’re still preparing the paper work.

At the end of the day, whilst this has given me a hearty chuckle before I turn in for the night, there’s no getting away from the fact that it’s not only petty, but ridiculously unprofessional. Making ad hominem attacks on employees of a company for rejecting your legal demands is pretty sad. If I was a copyright holder, I wouldn’t be too impressed to find the agency I had employed to protect my intellectual property deploying tactics like this. Then again, it might be a bigger deal if they had more than 1200 followers…

In the world of the DMCA, there’s only one thing dumber than submitting bogus takedown notifications, and that’s having a tantrum on Twitter when your bogus takedowns are rejected.

Groupon: Trademark Bullies

Groupon: The wealthy business empire that has made its fortune from selling weekend trips and products like the ‘Purple Tickler Dildo’ directly to your e-mail inbox.

They’ve had their troubles in the past, with people apparently no longer feeling the magic of the often bizarre choices made by the virtual coupon giant.

groupon dildo
One of the fine products on offer through Groupon

 

However, today saw them coming under fire again. This time for not playing nicely with trademarks.

In a posting on their website, the open source software Foundation GNOME has issued a cry for financial help to oppose a list of trademark registrations that Groupon have filed with the US Patent and Trademark Office, which conflict with those that the Foundation have held since 2006.

It appears that Groupon wish to use these trademarks for the name of a new product that will be used as part of an electronic point of sale application. The scope of the usage described is pretty wide:

Providing use of cloud-based non-downloadable software for processing point of sale transactions, payment transactions, voucher redemption, appointment scheduling, customer relationship management, customer location detection and awareness, inventory management, analyzing merchant transactions, and for evaluating and managing information on business performance and customers; providing temporary use of non-downloadable software that enables users to send and receive pricing, financial transaction, customer information, and payment processing information directly to and from a mobile device and a cloud-based server; software as a service (SAAS) services featuring software that enables users to send and receive pricing, financial transaction, customer information, and payment processing information directly to and from a mobile device and a cloud-based server; providing use of cloud-based non-downloadable software for payment services, merchant analytics, and for evaluating and managing information on business performance and customers; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware problems and troubleshooting of computer software problems; installation and maintenance services for computer software for processing point of sale transactions, payment transactions, voucher redemption, appointment scheduling, customer relationship management, customer location detection and awareness, inventory management, analyzing merchant transactions, and for evaluating and managing information on business performance and customers

(source)

As you can see, that’s pretty similar to the description of activities covered in the trademark held by the Foundation:

Downloadable computer software tools and libraries used for the development of other software applications; downloadable computer software development tools; downloadable computer software for creating and managing a computer desktop; downloadable computer software for use as a graphical user interface; downloadable computer software for word processing, database management, and use as a spreadsheet

The Internet were none too pleased about this, especially as Groupon has waxed lyrical about their admiration of open source software in the past. In an attempt to calm the waters, they gave the following statement:

Groupon is a strong and consistent supporter of the open source community, and our developers are active contributors to a number of open source projects. We’ve been communicating with the Foundation for months to try to come to a mutually satisfactory resolution, including alternative branding options, and we’re happy to continue those conversations. Our relationship with the open source community is more important to us than a product name. And if we can’t come up with a mutually acceptable solution, we’ll be glad to look for another name.

(source)
(second source with slightly different wording on Groupon’s Engineering blog)

On the face of it, this largely looks like it might have had the desired effect, with people considering the matter to be closed. However, it seems like nothing better than PR spin. Here’s why:

  • It is inconceivable that Groupon would not know about the prior existence of the GNOME Foundation’s trademark. If they didn’t, it should have come up in the course of proper due diligence.
  • Applying for identical trademark registrations in such a similar area is an aggressive move
  • If Groupon really was in talks with the Foundation, why did they go ahead and submit trademark applications anyway?
  • If the recent statement from Groupon really was serious, they should have announced an intention to retract the pending applications

Open source communities do not have the same resources to defend their intellectual property as large businesses do, which can make them seem like an easy target for organisations who wish to trade off of their established goodwill. Any defensive legal action would be hugely costly to pursue, and if the GNOME Foundation are forced to go down that route it will be a loss to the open source community as a whole. Thousands of Dollars that could be spent on further development and innovation will be used up fighting a needless battle with a company that can afford it.

Groupon should stand by its words, respect the GNOME Foundation’s intellectual property rights, and withdraw their outstanding applications. Otherwise they will be confirmed as nothing more than trademark bullies.

Update: Groupon have just posted the following statement:

UPDATE: After additional conversations with the open source community and the Gnome Foundation, we have decided to abandon our pending trademark applications for “Gnome.” We will choose a new name for our product going forward.

Those were some pretty quick ‘additional conversations’.