Legal Briefs #8 - Digital Millennium Copyright Act

Transcript:

Ron: Hello and welcome to another Legal Briefs podcast. Today's episode, we'll explore the DMCA Digital Millennium Copyright Act. What is it? How can it be used to get rid of unwanted sellers? To shed some light on the DMCA we're talking as usual with Jeremy Richardson, the lead attorney in Freeborn and Peters consumer products industry team. Jeremy, are you there?

Jeremy: Hey, Ron. Yeah, great here. Good to hear you again.

Ron: Well, what can you tell us about the DMCA.

Jeremy: Oh, gosh there's so much to tell. Well, first of all, DMCA goes back a couple of decades. At this point it's really intended to protect copyright owners in the digital realm, the Ecom world and gives them the opportunity to protect their copyrighted works. It also provides a shield for Internet service providers to avoid liability for copyright infringement, provided they respond to a DMCA takedown notice in a timely manner, consistent with the specific requirements under the DMCA. 

And let me tell you a little bit about the takedown notice and what is required from a copyright owner to successfully have infringing copyrighted materials pulled down from a website. First of all, only the copyright owner or its representative has the authority to send a DMCA takedown notice to an internet service provider. And let me put a pin in that for a moment. It's not only the Internet service provider, but it may be the website owner itself. So, for example, eBay has lots of folks that put products on the eBay website. You might send a notice to eBay, as opposed to the specific party selling a product on eBay whose identity you may not know, and so they would be considered within that realm of ISP Internet service providers to whom a notice could be set.

So again, it's only the owner or the owner's representative that is permitted to send that takedown notice. Another really important item to know is that you do not have to have registered your work with the Copyright Office in order to send a DMCA takedown notice. So, registration with the Copyright Office is not required, although, of course, as a lawyer I recommend to the greatest extent possible, that if you do have valuable copyrights, you register them. It's a simple process. It's a relatively inexpensive process and it gives you several additional protections, but that's a discussion for another podcast.

One other thing you should know is that many Internet service providers and websites have their own forms for DMCA takedown notices. So, if you go to the Amazons, the eBays, the social media websites, etcetera, and you search for their DMCA section or copyright section you will find a link to a form that they will ask you to fill out and provide the information that they want in order for you to have your copyright material taken down by them.

Ron: I can tell you just from experience with MAPP Trap and our clients, we've been very successful in using the DMCA to get products and sometimes, sellers, removed from eBay and Walmart. They do have their own forms, you're right. And they tell you what they need. A lot of times they want the registration numbers. You can do it for trademarks as well. I don't know that that falls under the DMCA, but I know that we've been successful in doing that.

And as far as the domain registrars, what we learned and tell me, you might be able to comment on this, is they don't necessarily take down the website. Nor do they force the seller to remove the product. What they do is they force the seller to remove the copywritten elements. And so, if you're talking about an image, then they're selling a product that the consumer can't see.

Jeremy: Yeah, you're exactly right about that. In fact, you predicted probably the next two or three things that I was going to say. So let me address them as best I can remember, in order. Technically the DMCA, the Digital Millennium Copyright Act, does not apply to trademarks and patents, but you are correct that many ISP's and website operators, will respect trademark and patent rights and allow you to file notices with them even outside of the DMCA's specific limitation of copyright.

Again, many of them have their own form. They'll ask for registration number. If you don't have it, under DMCA it's not required, but it's great if you have it, it certainly helps. If there is no form you are going to have to create your own form or information that you're going to provide to that Internet service provider. And those typically fall into about five categories or items you need to provide.

- First, is you have to provide a clear identification of the infringed work, meaning you know what is it that you own that somebody has taken from you?

- Two, is a description of the infringing activity, including a link to the infringing website and, as Ron said a moment ago, it may not be the entire website, it may be specific parts; it could be text. Very often it's an image or a photograph. And you want to specify that as clearly as possible.

- Three, a statement of good faith indicating your belief that an infringement has actually occurred for a statement that the information that you were providing is accurate and that under penalty of perjury you are authorized to file the takedown notice.

- And five is your contact information and signature.

So, here's a little bit more practical advice. Again, as Ron said, it's often not the entire website that you're seeking to take down, or at least a page or subpage, but specific information. So, if you are a product manufacturer, brand owner, very often you've spent a lot of money on photographing your product for marketing purposes. And you take those photographs and you put them on your website and you allow your authorized retailers to use your images and, in fact, you may require your authorized resellers to use your images of your product because you've gone to the trouble of making it very pretty, very attractive.

Those are your copyrights. Even if you haven't registered them, you own those images, or presumably the company owns those images and you want to send a takedown notice that says, hey, that's my image, that somebody is using to sell, maybe it's my product, maybe it's a counterfeit. We can discuss that separately, but the DMCA allows you to tell that Internet service provider, hey, you've got to pull down that image, you've got to take down that text. You can't allow whoever it is, that third party on your website, to use my imagery. And they'll pull it down because if they don't, that shield against liability goes away, and then the Internet service provider can be liable to you for copyright infringement.

Ron: So why then, we're talking about ISP's, talked about eBay, we mentioned Walmart, what's the difference between those guys and Amazon? Because Amazon pushes back and says they own the license to the rights in perpetuity. What's up with that?

Jeremy: Yeah, so, Amazon has done something, I don't know whether you want to think of it as crafty or cool, I suppose it depends on where you stand or where you sit, but Amazon has built into their agreements with their suppliers, their vendors, a provision that says when you sell through Amazon, you give Amazon a sub-licensable license to use all of your images, all of your text, all of the information about your product to market your product on the Amazon platform. And that means that not only can Amazon use your copyrighted materials, but any third-party seller on Amazon gets a license through this sub-licensable license to use your product images and information.

And the last time I saw the version of Amazon's agreement, it said that you are required to provide this information to Amazon, the text, the images, electronic file, and if you don't, Amazon has the right to go onto your website and take it from your website and then use it and sublicensable. So that's where Amazon has created its own contractual loophole, because a license essentially is an agreement not to sue, right? If I give you license to my copyrighted work, I'm agreeing not to sue. It means there's not an infringement because you have permission to use my copyrighted work.

And remember when we talked about the elements of a DMCA takedown notice, one of those elements is a statement of good faith, indicating your belief that an infringement has occurred. And you can't say that about Amazon and anybody else selling as a third party on Amazon because you've provided a license.

Ron: Let me ask a question just a little more. I’m going to single out a word, you said when you sell through Amazon. So, the implication there is that the brand is selling on Amazon. But what if the brand is not selling? What the brand does not sell to Amazon? Nor does the brand sell to anyone who is going to sell on Amazon? Or at least it's a part of their terms and conditions that you may not list our products on Amazon. Do the same standards apply?

Jeremy: So that's a great, great question. And the answer there is, if you, the copyright owner, have not entered into any contractual relationship with Amazon providing the license, then Amazon doesn't have the license. So, if somebody else not related to you brand owner and doesn't have a sub licensable license from you, goes and sells on Amazon, again without your permission, Amazon cannot get the license from that third party. Again, absent a sublicensable license -- I feel like I'm tripping over my tongue with that one; say that 10 times quickly -- So, absent that direct agreement between the copyright/brand owner and Amazon, yeah, Amazon doesn't have that license. And then you would be able to send, effectively, that DMCA takedown notice, which I know for sure Amazon has a link somewhere on its page. I think it's copyrights@Amazon.com where you can file that DMCA takedown notice.

Ron: There's an argument to not sell product to Amazon if I've ever heard one. But would you have to have that in writing that you've got this marketplace exclusion, therefore no one may sell our products on Amazon, except maybe us? Or except these five companies. Would you have to have that in writing?

Jeremy: So, the so answer there is no. As long as you have not provided a sub licensable license, there it is again, to that retailer who is then selling on Amazon, no, Amazon can't get permission from somebody who doesn't have the right to grant it. Right. So, if you, Ron, you're selling my product and I say you can sell in your brick-and-mortar store, but you can't sell on e-commerce and I don't give you a license or a sub licensable license to use my product images you don't have the right to then go and give Amazon the right to use those images, because that’s not within the scope of our agreement.

Ron: Alright, let me go down one more layer. What if the seller got the product from an authorized distributor? So, you, Jeremy have a product and you are selling it to me and telling me I can sell it to whomever I please. And therefore, I then sell it to someone, I sell it to Amazon. OK, so I'm the distributor now. I've sold the product that you've sold me to Amazon. Does that imply the sub license?

Jeremy: I would say no. Again, absent a clear expression of an intent to provide that sublicensable license the answer would be no. The rights that I grant to you to use product images for your sales in your brick-and-mortar store are limited to that specifically. And if you were to then sell on Amazon, or if you were to sell to somebody else who went and sold on to Amazon, that right to use the product imagery, the copyrighted materials would not transfer, would not continue multiple steps down the chain.

Ron: And so, there's really nothing you can do, however, to stop them from taking a photograph of the product on their own and writing up their own product descriptions. And putting it up, that would not, that would not fall under the DMCA, because you don't own that copywritten image or product description.

Jeremy: Yeah, that's exactly right. And so, you might see on Amazon and other Ecom websites, product images that look a little off or certainly if you're the brand owner, you might see product images that don't look like the ones that you took. And that could be a real signal to you that somebody is an unauthorized reseller and is selling your product without your permission.

Ron: Okay, well, this is good and it's bad. It seems like there's really no recourse if the brand is selling to Amazon directly. But there is recourse if they're not.

Jeremy: Yes, that is right. And as you said, there are a couple of retailers who have decided not to have a presence on Amazon very intentionally. And when they do that, they decide not to sell on Amazon, but again find their products on Amazon and their images, marketing those products on Amazon, that's an opportunity to send a DMCA notice to Amazon.

Ron: Well, thank you. That's definitely illuminating, Sir. Any final words from you on this topic?

Jeremy: Gee, again, I send think it's, I think it's a real opportunity. I've said it before, it's another arrow in the quiver. I would say one additional item which is in your retailer agreement, I think you should require your retailers to use your product images and your product images only. And give them the right without sub licensable rights to use those images because, again, you've spent a lot of money on those images. You want those images to be representing your brand and your product, and when you find images that you don't recognize out there in the ECOM world, it's a pretty good indication that the retailer isn't on your approved list and that's something you want to track down.

Ron: Well, thank you, Jeremy. Another great podcast as I know that this would be helpful.

Jeremy: Excellent. Thanks so much.

Ron: OK, bye. If you'd like to submit a question or topic for a Legal Briefs podcast e-mail them to legalbriefs@mapptrap.com. For more information about how map trap can help you with your online brand protection needs, visit www.mapptrap.com.