The one that got away: Lawyer chimes in on the Prometheus v Kazan DMCA

Justitia
Photo: Justita, by Vaki Zenovka

In the wake of the story about Prometheus’ DMCA claim against a Second Life blogger, several commenters have since questioned the use of a DMCA in this case, characterising it as extreme and inappropriate. One of the comments that didn’t get published, but should have, is one that Second Life resident and lawyer Vaki Zenovka wrote.

Ms Zenovka, who is a frequent presenter at Second Life Bar Association meetings inworld, attempted to leave a comment on this blog which (inexplicably) did not appear. I wish that it had, because it is so clear on the appropriateness of using a DMCA in this particular case, which might have cleared up many misconceptions before they arose. Since chasing down her comment (which she published on Plurk), I have reproduced it in full here:

“Let’s talk about some woeful misconceptions about the DMCA that have been posted in these comments. First, it’s true that there is no up front cost in initiating the DMCA procedure. However, there is potential back end cost, because any time you file a DMCA, you open yourself up to statutory damages (including costs and attorney’s fees) if you misrepresent that the material or activity is infringing. So that should always be a concern.

Referring to a comment left by Abbot on June 1, 11:37pm:

Second, a poster asserted that “a DMCA application requires that you prove ownership of the Intellectual Property.” This is not accurate. A DMCA application requires that you give a statement, under penalty of perjury, that you are the owner of the of the content or are authorized to act on the owner’s behalf. There is no proof required. A DMCA takedown notice goes to an online service provider. An online service provider is not a court of law, and doesn’t care about proof.

Third, a poster asserted that someone wanting to file a DMCA counter-notice would have to “prove that the product is not my own creation and that my original claim is false and invalid.” This is not accurate. Again, a DMCA counter-notice goes to an online service provider, not to a court of law. There is no proof required. A DMCA counter-notice simply requires that the person filing the counter-notice give a statement, under penalty of perjury, that he or she has a good faith belief that the material was wrongly taken down.

Fourth, and perhaps most importantly here, the DMCA is /exclusively/ a copyright remedy. It has absolutely no relevance to trademark infringement. A brand owner who is unhappy with the display of his or her brand or concerned about the potential for consumer confusion /cannot/ use a copyright claim to take down an image in which the brand owner has absolutely no copyright interest (side note: a trademark owner does not have a copyright interest in his or her brand name). That is blatant misuse of the DMCA. (My emphasis)

I’ll end this by saying this is not intended to be legal advice. I don’t give legal advice in blog comments, and I’m not your lawyer. But I hope that if anyone has received a DMCA based on a trademark claim, they do a little searching online for information about it and consider a counter-notice. I also hope that people are taking the information about the DMCA’s requirements put forward by a clearly biased commenter with a grain of salt.”

There’s still time to complete a survey that I am hoping will show how Second Life residents perceive laws, and how they might affect their actions inworld and in Second Life social media.

13 thoughts on “The one that got away: Lawyer chimes in on the Prometheus v Kazan DMCA

  1. Dear Ms. Zenovka,

    1&2) Automattic Inc. requested for proof of copyright ownership before complying with the DMCA takedown demand.
    3) Yes, “under penalty of perjury”. If Eve Kazan filed a counter-DMCA we would take this matter to court and request them to provide proof.
    4) Eve Kazan was in violation of our copyright by using our product in violation of their license. The products are distributed under the Terms of Service of Second Life, which clearly state their allowed usage. The trademark violation and confusion of consumers are separate matters that would be included in a legal procedure against Eve Kazan. Eve Kazan was in clear violation of copyright by not complying with the rules of the statutory license granting them use of our copyright. Yet again this matter was discussed with Automattic Inc. during our initial DMCA notice, where they requested that we point out the copyright violation, thus the citation of the Second Life TOS in our DMCA notice.

    Have a great evening.

    Like

    1. Would you be so kind as to point us to your licence? I, for one, cannot find it in your blog. Also, may I point out that the alien xenomorph thingy you sell could very well be DMCA’d for infringing on the copyright of the creators of the Alien franchise? And no, the fact that no one has bothered to file a DMCA against you or sue you yet doesn’t make it all right.

      Then there’s another problem with your line of thinking, which shows a very skewed perspective on IP rights, moral rights etc. You are a designer. A merchant. A manufacturer. From the moment you’ve sold your trees, planters, building components, vehicles etc, they can be featured anywhere and no one has to ask you, no one has to come to you asking “O Great One, may I please publish photos featuring X or Y product of you (which I’ve bought), along with someone else’s?”. No one. Drill this inside your head – now.

      For crying out loud, if architects, furniture makers etc were thinking like you do, they’d all have sued Henri Cartier-Bresson for showing people wearing clothing from makers that compete against each other for their share in the marketplace!

      The more I read about this debacle you have caused, the more I realise that you only did it because the photographer “dared” feature stuff from competing designers – the rest is a smokescreen, plain and simple, and everyone with a functioning brain can see through it.

      Have a nice day – You have given me a name I shall never recommend to anyone.-

      Liked by 1 person

  2. Hi, Prometheus Creations,

    What Automattic requires and what the DMCA requires are different things. The post I was correcting asserted that the DMCA required these things, not that Automattic required them.

    As far as Eve Kazan’s image violating your copyright, I have no interest in debating your interesting interpretation of US copyright law and how it applies to this particular situation in the comment section of a blog. I’m not your lawyer.

    I’m simply clarifying how the DMCA works, since you weren’t doing a very good job of it.

    Vaki

    Liked by 1 person

    1. Out of general trademark interest (not specific to this case):

      I personally wasn’t aware that you couldn’t use a DMCA takedown if someone violated a trademark. What do you do in that case? Do you immediately move to the lawsuit solution?

      Like

      1. Nope, the DMCA only applies to copyright violations. Different online service providers have their own processes for trademark violations — you’d have to work with the service provider hosting the content (WordPress, Linden Lab, whatever) and find out how they prefer you to report trademark violations.

        Like

    2. Well you seemed interested to debate when you commented on the case in the first place. Especially when you boldly claimed *This is blatant misuse of DMCA* when you were referring to the process against Eve Kazan as a trademark dispute, which was not the case.

      I also have some interest however in your words “interesting interpretation of US copyright law”. Let’s iterate on that a bit if you wish:

      a) As a lawyer you should know what a statutory license is. By your words however it seems that you believe that it shouldn’t be taken in mind.

      b) As a lawyer, you should know that a DMCA is not a matter of US copyright law, rather the implementation of WIPO Copyright Treaty in the United States. We are effectively talking about *GLOBAL* copyright legislation here. If you were my lawyer you would have known that.

      Also I would like to respond to MONA OKIDDO-EBERHARDT here. First the “statutory license” is granted to you by the Second Life TOS. Read that. If you haven’t already you shouldn’t be involved in Second Life since you must have accepted them before logging in.
      As for the Alien franchise, as far as I’m aware, the Alien Xenormorph character had a copyright duration of 20 years from its creation or (according to copyright law), until the death of its creator. If I’m mistaken about the duration and the holders of the copyright please point me to the actual copyright holder of the Alien Xenomorph concept and I will contact them IMMEDIATELY for their license. I have contacted 20th Century Fox almost 2 years ago without any reply.

      As for the rest of your claims, you are simply trying to twist my words and victimize Eve Kazan. It is ok, I won’t try to change your mind, I don’t even care to. Everyone can visit my blog and see my posts, visit my store, talk to me and see how I treat customers on their own. I’ve based my brand and reputation on my customer support and service, not threats and covert means. Eve Kazan was an unfortunate incident of someone actively trying to test my limits and failing miserably. Closing dear Mona, I don’t care if you recommend me to anyone. I’m sure you wouldn’t even before this incident. I however wish you great success in all your future endeavours.

      Like

      1. Well, can you explain this ?

        Zorn Mech – Prometheus Creations Studios https://marketplace.secondlife.com/p/Prometheus-Creations-Zorn-Mech/5475851

        Zorn mech ripped in Remember Me Game : http://capcom.wikia.com/wiki/Remember_Me?file=Remember_Zorn.png

        – ripped model: Zorn – 3d model : http://tf3dm.com/3d-model/zorn-56081.html

        – the Zorn texture map from Prometheus in SL : (link removed in accordance to article 8 of the WordPress.com ToS -https://en.wordpress.com/tos/)

        – the diffuse map on the Zorn model from the game : http://i.gyazo.com/3ffc609fdddb19468829a4633a1ddcd0.png

        I’m sorry but it seems that everything your store is like this.

        we are waiting for your answer.

        Like

        1. If you had the slightest idea how a texture map is created and not just rip everything of the internet, you would know that it is impossible to create the texture map with all its details from the ripped model you linked to us. For the kind of detail in my textures you need the high polygon model from which you will create ambient occlusion, curvature, object space, cavity, and other maps. Here is a screenshot of some of the layers used in creating the texturing in this model http://i.imgur.com/tFwaYml.png. You will also notice that the texture you linked from the ripped model does not contain any ambient occlusion and shadow information, while mine has those baked in.

          Since you are linking one of my premium textures I will have to request that Canary Beck removes that link from your post.

          However I have to thank you because, indeed, it seems that everything in my store is way more detailed and better made than the models ripped from games that you link.

          Like

      2. PrometheusCreations, you need to talk to a lawyer and stop acting like one.

        I sincerely hope no one reading this blog, or any other in which you’ve chosen to comment about intellectual property law, takes anything you have to say as any kind of authority, because you are woefully misinformed. I’m not sure if you’re just from another country or if you’ve been getting your law from Wikipedia, but please, please, please stop presenting yourself as an authority on copyright or any other kind of law. You are not. You are wrong. And you are misleading anyone who thinks otherwise.

        Briefly:

        In the United States, the only “statutory license” in the Copyright Act is for secondary transmissions of sound recordings (see 17 U.S.C § 111). A terms of use agreement is not a “statutory license.” A statutory license is a license granted by STATUTE. A statute is a written law passed by a legislative body. The Linden Lab terms of service is not a written law passed by a legislative body. Therefore, the license it grants is not statutory.

        It’s just a license.

        The fact that the DMCA implemented the WIPO Copyright Treaty does not in any way make the DMCA not a matter of US copyright law. The DMCA added certain sections, such as anti-circumvention measures and moral rights for certain kinds of visual arts, to the US Copyright Act to bring United States law closer into accord with the Berne Convention. The DMCA also included other provisions that the WIPO treaty did not require, such as the notice and takedown procedures. All of these provisions, both those required by WIPO and those not required, are absolutely matters of US copyright law. Violating them makes a person subject to US law, not “GLOBAL copyright legislation,” of which there is no such thing.

        Finally, the Alien Xenormorph character did not have “a copyright duration of 20 years from its creation or (according to copyright law), until the death of its creator,” because that’s not even a little bit how copyright duration works. Copyright duration, in the United States, is 70 years after the death of the creator or 95 years for anonymous or pseudonymous works. And there are a lot of other complications (if the work was created before 1978). In Switzerland, where H. R. Giger lived, copyright duration is also the life of the author plus 70 years.

        And no, you can’t just jot off an email to 20th Century Fox asking permission and then go ahead and use their stuff if you don’t get an explicit “no.” That is also not how copyright works.

        Or statutory licenses.

        Or any kind of licenses.

        Lord.

        Liked by 2 people

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