Marjorie and Arnie Carvalho run the Star Wars Action News Facebook Page. They publish content about Star Wars collectibles, so you can imagine their excitement to share a photo taken at a Walmart store of a new action figure from the upcoming Star Wars movie. You can also imagine their surprise when they received a Digital Millenium Copyright Act (DMCA) take-down notice from Disney which prompted Facebook to remove the photo from their Page.
According to a report from Ars Technica, the Carvalhos sent an email to Disney explaining the situation and the image was restored to their Facebook Page. But the story didn’t end there. Disney sent a second DMCA take-down request and Facebook not only removed the photo but also penalized the Carvalhos’ Facebook Page. They weren’t able to publish new content to their Page for three days.
Believe it or not, there is a reason that this is allowed to happen, and it’s not actually all about Disney being a copyright bully. To explain, let me start with a story…
Learning about Brand Value from the Best of Them
I was one of the lucky ones who learned how to practice trademark and copyright law by working with mega brands, Disney being one of them.
I was a student associate by day (a legal apprentice so to speak) and law student by night in Washington, D.C. (at The Catholic University of America’s Columbus School of Law if you’re curious). Although it sounded glamorous, working in a big law firm while still a student was actually a lot of grunt work, a lot of redos, and a huge ego check for someone who has been an overachiever her whole life. But in retrospect, the experience was one of the best things that happened to me and proved to be a brilliant launching pad for my career.
I had a rare bird’s eye view into the inner workings of corporate intellectual property departments and quickly learned their strategies for building booming brands. Their secret is to stay abreast of the law, seek to influence it when they can, and play offense as well as — if not better than — defense. They take an intentionally proactive approach to brand management that reflects a well-considered strategy and battle plan. Yes, it’s aggressive, but it’s also fair. The devil, they say, is in the details, and the big brands don’t miss a beat.
And neither should you.
Brands are more than names and logos. They represent and embody the complete personas of their owners and promise something unique and special to those who trust them (customers, consumers, clients, fans).
The Star Wars franchise, launched in 1977 when the first movie was released by Lucasfilm and now a deeply embedded slice of American pop culture, is one of Disney’s largest brands today. Acquired in 2012 by The Walt Disney Company for $4 billion (yes, billion with a B), protecting the Star Wars brand, its persona, and position as science fiction royalty is an extremely high priority for the media giant, as well it should be.
We all take measures to protect things that matter to us to ensure their value remains undiminished. And you don’t have to be Disney to protect your brand as aggressively as they do.
Protecting Brand Value is a Right and Responsiblity
Under U.S. law, brand owners have the responsibility to police their legal rights in their trademarks, copyrights, and other creative works and innovations. The law gives us — all of us, not just billion dollar brands — tools to enforce our rights without breaking the bank. One of those tools is the Digital Millenium Copyright Act (DMCA), a 1998 amendment to the U.S. Copyright Act of 1976, the principal law governing the protection and exploitation of copyrightable works.
While the DMCA does many things, it is most commonly known for providing a “safe harbor” for online service providers (OSP) that simply host user-generated content (meaning they don’t contribute to or curate content) from liability for copyright infringement for infringing content posted on their sites.
Examples of OSPs include Facebook, YouTube, Amazon, Etsy, and so on. Because of this immunity, the OSPs simply provide a forum for users to post content, converse with each other, and otherwise interact online. Any dispute about the content itself, particularly who owns the legal rights to it, is left to the users to work out themselves.
The DMCA facilitates resolution of these disputes by providing a simple process by which copyright owners (or people/entities who believe they are copyright owners) may submit a request to the OSP to remove or disable the content on its site believed to be infringing. This is a called a DMCA “Take-Down” request. Provided the request meets certain legal requirements (these are spelled out in the law and required to be available on OSPs’ websites), the OSP will take the content down and notify the alleged infringer of its actions.
This is exactly what Disney recently did on the Star Wars Action News Facebook page.
Challenging a DMCA Take-Down Request
But, that’s not the end of it. The person/entity whose content was disabled may file a counter-notification with the OSP, challenging the take-down. Upon receipt, the OSP is required to notify the copyright owner that a counter-notice has been filed. Unless the copyright owner responds to the counter-notification by letting the OSP know within 10 days that it intends to pursue formal legal action against the alleged infringer, the OSP is required to repost the previously disabled content within 14 days.
If for any reason, the copyright owner believes it issued the take-down request in error, it may withdraw the request with the OSP and the content will be reposted. This doesn’t preclude the copyright owner from reissuing a take-down, but it can be an alternative way to reach resolution. Based on the news report, it appears this is what happened with the Star Wars Action News page.
What to Do if You Receive a DMCA Take-Down Notification
If you receive a DMCA Take-Down notification and your material is disabled by an OSP, read the intellectual property or copyright policy posted on the OSP’s website. I assure you its there — OSPs forfeit their immunity if they don’t make it available online. For example, Facebook’s is here.
If you believe the take-down was unfair and you have legal grounds to challenge it, then you can and should file a counter-notice right away (use the link in the preceding section to file a counter-notification with the OSP). Most OSPs will provide you with a link to an electronic form to make it a straight-forward and super simple process.
If you’re unsure whether you have legal grounds to challenge the notification, you should seek legal counsel before submitting it. The penalties for screwing up are pretty stiff. Meanwhile, you can always email the copyright owner directly (the email address of the copyright owner or the attorney representing the owner will be made available to you) and try to resolve the matter privately.
Beware, however, that big brands use sophisticated technology to identify potential infringements online. You might find yourself playing a game of whack-a-mole, but if you’re persistent, you will almost always prevail. Diligence, vigilance, and perseverance are the name of the game.
Finally, turn this on its head and put yourself in the position of the big brand. You might not be a $4 billion brand, but you’re still valuable in your own market space. Be aggressive and fair and issue your own notifications as needed. It’s not only your responsibility, it’s your right and your privilege.