How far does the DMCA extend?

[ChronoCross]

http://yro.slashdot.org/article.pl?sid=05/08/11/1715204&tid=123&tid=17

Do you think that a company can sue a satired site using the DMCA? What ever happened to free speech?

[Mug Funky]

that's a stinking pile of... stink.

did campbells sue andy warhol? of course not.

fed-ex need to get their heads out of their soup cans.

[Shinigami-Sama]

thats the stupidest thing I;ve seen a "matrure" adult even think of, hell my 4y/o cousin would tell the guy that would consider that to grow up, and he's 4

[Joe Fenton]

It's especially offensive when you remember that the RIAA/MPAA lobbied congress to pass the DMCA to help it fight big, international copyright infringers (or "pirates" as they like to call them). They assured congress that it would only be used against the multi-million dollar counterfeit rings. So far, that's the only group it HASN'T been used against. Be careful any time the RIAA/MPAA says they need a law to help fight "big pirating rings in foreign countries."

[adam]

Free speech is a Constitutional guarantee, and with all Constitutional protections they ONLY apply to government action. Unless it is an act of government, there is no such thing as free speech. There are also specific provisions of trademark law which give you the right to prevent people from doing this very type of thing with your product.

I've read their demand letter and his attorney's responses and I honestly don't understand what the problem is. They are correct in that FedEx's substantive claims fall primarily under Trademark law, not Copyright Law, but that is no defense. FedEx raised both. That's what you do in cease and desist letters. You raise every possible legal arguement that you have even if you wouldn't intend to raise them at trial. The point of a cease and desist letter is mostly just to notify the other party of your legal rights.

FedEx is not suing under the DMCA, or alleging DMCA violations. They are alleging general copyright infringement which allows them to make use of the DMCA's isp provisions. This allows them to have a site shutdown without a court order, because it makes the isp liable for failing to remove infringing material after notice.

They raised this IN ADDITION to their very valid trademark claims because even though this appears to be a textbook example of trademark violation on multiple theories (confusion or disparagement or dillution,) it is much more difficult to shut down a website under trademark law. You've either got to go through arbitration with ICANN or file suit and get an injunction. Both take time and money and ICANN isn't even binding so you still may have to go to court.

The .net vs. .com crap is just fluff. They raise this in their trademark infringement argument. It is well established in Trademark Law that merely hosting pictures of goods on a website is considered a commercial use regardless of whether you intend to sell them. The Stanford attorney replies that, "There is absolutely no rule, regulation or law that says that." Well of course not, its circumstantial evidence. I am positive this quote is being taken out of context by the author of this article.

I have handled so many trademark cases like this. This is a trademark infringement, there's little question about it. Just using the name FedEx in the url alone is enough to constitute an infringement. FedEx also easily qualifies as a "famous mark" so they've got dilution and disparagement arguments to boot. Parody and satire are very different under Trademark Law as opposed to Copyright Law...basically its much more stringent. If he made the furniture for personal use and never hosted the pictures on a web site sure. If he had removed the FedEx logo first before making the furniture and then hosted the pictures...maybe.

As for the Copyright claims I think they are much weaker but certainly still valid.

The guy's argument is that FedEx's Copyright claims are weak compared to their Trademark claims. So what? That's like saying you can't get me on murder because your tresspassing claims are weak. Actually, I don't think this is his argument at all, that's just the way the author of the article chose to write about it.

You have to read articles on sites like Wired News with a grain of salt. They don't know crap about the law and always have an agenda. This article in particular is completely slanted. The only quotes you get are in response to the Copyright allegations, which the guy's own lawyer admits are minor issues. The article says nothing in reference to a defense against the Trademark violations and I guarantee you the Stanford lawyer had something to say about that, but it undermines the article's "DMCA=bad" viewpoint so they omit it. The DMCA really has virtually nothing to do with this issue, but its the focus of the article. The article totally plays it up like this is a frivilous suit when its truly not. It suggests that they only raised copyright violations to avail themselves of the DMCA. That is ridiculous. It would have been borderline malpractice not to raise that issue.

I can't stand reporting like this. Its ludicrous to even report the sending of a cease and desist letter. They are a mere formality in Copyright/Trademark/Patent suits because they establish notice and you ALWAYS raise every single possible legal theory so they have notice of them. That way, if your copyright argument develops, say through discovery after suit is filed, they had notice of your copyright claims from the beginning. If you didn't give them notice then you have either waived certain rights or will have to prove actual knowledge at trial to avail yourself of certain damages.

[Revgen]

Free speech is a Constitutional guarantee, and with all Constitutional protections they ONLY apply to government action. Unless it is an act of government, there is no such thing as free speech.

The job of the government is to protect people's rights and provide order in society. The government is entitled to protect the rights of all citizens, whether their rights are being violated by private corporations, criminal organizations, or even the government itself. Parody and satire are considered free speech and therefore are protected.

Trademark law is different. Trademark law applies to products that are bought and sold in the marketplace. If a cereal company other than General Mills sells a toasted oat "O's" cereal and calls it Cheerios, then they can be implicated for violating trademark laws.

Unfortunately lawyers and special interest groups for many years have been atempting to stretch the impact of trademark law to infringe on free speech. I wouldn't be surprised if you are one of them.

[adam]

With all due respect, everything you just said is patently false. Parody and satire are not classifications of protected speech. There are really only 2 forms of protected speech and they are political speech and then any form of speech that is not unprotected (legal obscenity, fighting words, inciting lawlessness).

The terms parody and satire only appear under the Fair Use Doctrine of Title 17 (Copyright) and the Lanham Act (Trademarks). They are exceptions to the enforcement of these rights where applicable. If you are suggesting that he has a Fair Use argument of parody under Trademark and Copyright laws, then yes I agree. But none of this has constitutional implications whatsoever.

The First Amendment limits government action...period. The First Amendment does not apply to the actions of private citizens and corporations. The First Amendment does not preclude FedEx from preventing someone from using their Trademarked name (FedEx appears on the boxes used as well as in the url for the site) or their Copyrighted logo (appears on boxes used) for unauthorized purposes. These are the exact reasons for Copyright and Trademark protection.

Yes I am well aware of what Trademark law entails. I am a Trademark attorney. But clearly you are not aware of what all trademark law protects if you think that Free Speech is ever a defense to Trademark infringement.

Unfortunately lawyers and special interest groups for many years have been atempting to stretch the impact of trademark law to infringe on free speech. I wouldn't be surprised if you are one of them.

That doesn't even make sense. Unless the trademark is owned by a government agency than it is literally impossible for its enforcement to violate free speech. Trademark law is authorized in the US Constitution and it has remained largely unchanged since 1946.

[shevegen]

Now it'd be interesting to post case studies.

[adam]

By case studies do you just mean on-point cases? If so the PETA case is pretty similar.

People for the ethical treatment of animals v. Doughney. 263 F.3d 359 (4th Cir. 2001).

Doughney registered the domain www.PETA.org and operated a site called People Eating Tasty Animals which was a parody of PETA. It sold no goods or otherwise engaged in any form of commerce. Peta sued to have the domain name surrendered to them and they won. PETA is a registered trademark and you simply cannot use that exact trademark in a url unless you act in good faith and use the name for completely unrelated purposes. Like say the guy's name was Peta and the site had nothing to do with the organization, that's fine. But if you use PETA on a site having to do with anything associated with the actual organization then it is an infringement, even if done in parody. When you register a domain you also have to certify that the url won't infringe or interfere with a registered trademark. If the trademark is universally recognized (ie: PETA or FedEx) then you cannot certify such a statement in good faith. Courts use this as evidence of bad faith.

The information on the site itself was obviously a parody and fully protected but that doesn't entitle him to use an infringing domain name. The subject site is now run at http://mtd.com/tasty/.

In this Fedex situation the url he uses is http://www.fedexfurniture.com/. Clearly he has no reason for using this other than the fact that it relates to the FedEx boxes. He will probably be ok if he maintains the site with a different url and adds a disclaimer but FedEx could definitely go further and prevent him from displaying the works on the internet at any domain name.

[Shinigami-Sama]

and I just saw on the news that fecex failed to sue him over it, I didn't catch the details though