“Searching” for balance between free expression and intellectual property

16 Aug, 2009 by Ron Coleman

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Mary Roach has a great post at CircleID on an area that we have talked about extensively, namely, copyright takedowns under the Digital Millennium Copyright Act. Mary’s post covers the more specific strategy of sending takedown notices to search engine providers, such as Google, Yahoo, and MSN, to effectively reduce access to stolen creative materials.

That’s worth checking out. How does it work? As Mary writes,

[R]ather than identifying the infringing copyrighted material itself, rights owners must instead identify the search result or directory page which links to a webpage containing the infringing material. For example, this would require providing the keyword or keyword phrase used in a search or directory query, plus the URL(s) which point to the infringing websites in the DMCA complaint.

You can just imagine the bells going off in my head when I read that formulation. There are a lot of “effective” things you can do with DMCA takedown notices, and not all of them are legitimate. And unlike trademark enforcement, the DMCA is “automatic” or self enforcing: The recipient of a DMCA takedown notice must comply first and complain second, or else. You don’t get to do to a neutral first; the tradeoff, supposedly, is the “safe harbor” that exempts third parties such as ISP’s from contributory infringement liability.

Ironically, the safe harbor was why, as part of an International Anti-Counterfeiting Coalition task force years ago, I went to Washington and lobbied Congress not to extend DMCA-type power to the Lanham Act. Trademark, we told the legislators and their staffs, is not copyright, for all kinds of reasons. Our concern was, simply, to make sure that eBay did not get a legislative bye from contributory liability in connection with all the sales of counterfeits that fatten its coffers. Little did we know that this would hardly make a difference, seeing as how U.S. courts in the subsequent years have (so far) consistently ruled that eBay’s fuzzy awareness of counterfeiting doesn’t reach the level of legal “knowledge” sufficient to impute such liability anyway.

Now my interests in the matter are somewhat different. The inclination toward suspicion comes naturally to me, of course, but indeed on reading the original post, I wonder, why does the CircleID article keep referring to “brand owners” when we’re talking about copyright? Is copyright really about brand protection? Isn’t that trademark’s job?

Well, kind of. It was supposed to be that way. But whenever you reach a question like this, ask the question: What would Mickey think? The Mickey Mouse Test usually helps you understand how IP works today. So. “Fair use” of a picture of Mickey Mouse is almost impossible (though not in this article!). That is not because trademark law won’t tolerate it, but because copyright, whose fair use parameters are narrower, bravely protects and defends America’s only remaining falsetto-voiced, racially ambiguous, child-friendly superstar. And copyright lasts approximately forever. Trademarks can literally be forever, too, but trademark fair use gives you a lot more elbow room that copyright fair use.

Given this set of tools, then — a less robust fair use defense and the shoot-to-kill provisions of the DMCA — indeed, increasingly copyright is being used as a proxy for trademark, and unless someone pushes back, it can be … unfortunate for free expression.

So, here’s an interesting angle, having said all that and having said it so grimly, that may temper overenthusiasm on the part of copyright owners’ parts:

It is also important to note that Google and Yahoo send DMCA takedown notices to Chillingeffects.org, a clearinghouse for DMCA abuse and free speech information, for publication.

I guess that’s better than nothing. I’m not doctrinaire about it; there are times when copyright may be used appropriately to protect something we might call a “brand,” and the DMCA can be a great tool to prevent not only infringement but consumer harm. But the mission creep here is troubling to say the least.

Originally posted on Ron Coleman’s LIKELIHOOD OF CONFUSION blog.