Gotta Catch ‘Em All: Nintendo Pulls The Plug On 3D Printed Pokémon Planters

Claudia Ng is obviously a big fan of Pokémon. So much so that she decided to design 3D printed planters in the shape of her “personal favourite starter Pokémon”, Bulbasaur. She posted and offered these ceramic planters for sale on Shapeways, an online marketplace for 3D printed items. According to a GameZone post, the original Shapeways page featuring the planters was pulled when the website got a takedown request from Nintendo saying that the planters infringed its copyright. Much like YouTube and Facebook, Shapeways has a copyright content policy and takedown procedure (outlined here) which allows copyright holders to address these issues quickly and effectively.

 

The adorable side of copyright infringement

According to Ms. Ng, Nintendo asked that the page be taken down and for all monies generated from products already shipped by Shapeways. It is unclear whether Nintendo will pursue any formal copyright infringement proceedings against Ms. Ng or the Shapeways website. Its recourse against the latter may be significantly curtailed depending on the forum of a potential suit. This is because many countries, including the U.S. and Canada, have enacted provisions in their respective copyright laws limiting the liability of internet intermediaries or ISPs.

3D printing technology promises to hold many challenges to IP rights holders. These challenges will extend beyond the copyright space to touch patents and trademarks as well. On the bright side, rights holders should be encouraged by Shapeways’ response to this claim and hope that other players in the 3D printing market follow suit. 

From the perspective of someone looking to create and sell content on these sites, takedown policies will always be a looming nuisance. There will invariably be frivolous claims and false claims of infringement made out of malice. It may sometimes prove difficult (and costly) to discern legitimate from illegitimate copyright claims. One need only look at YouTube’s copyright policy to get a notion of the major machinery involved in implementing a fair copyright takedown system.

 Google has developed a highly advanced ContentID system whereby rights holders may submit reference files to YouTube of their copyright protected audio and audiovisual works. YouTube compares all videos uploaded to its service to the content stored in this reference database to weed out infringing uploads. YouTube has created a manual copyright claim process for those uploads that are missed by this system. Instead of each claim resulting in an automatic takedown, the policy allows for a time period during which the uploader may make a “counter-claim”. The original claimant may also withdraw an erroneous claim during this period. 

Google has the funds and manpower to do this; smaller websites may not. Since national laws, such as the ISP safe harbour provisions in the American DMCA, often require that qualifying ISPs have a robust takedown procedure, websites like Shapeways are more likely to favour caution and adopt a policy of “when in doubt, take it down”. The hope is that this reality does not have a chilling effect on the productivity enabled by the exciting new technology that is 3D printing and the innovative services growing around it.

Rightscorp Heads North: Will Canadian ISP Subscribers Start Receiving Settlement Demands?

An American rights management company called Rightscorp has decided to break into the Canadian market. Rightscorp has adopted a business model whereby it sends settlement demand letters for relatively small sums to people it believes have infringed the copyright in the works of its clients. It does this through software that identifies the internet protocol (IP) addresses of users that download a (or several) specific media file(s). The software then sends an automated letter to the ISP to which that IP address is associated once the same IP address "repeatedly infringes".

Image by Renjith Krishnan

From a review of its corporate site, Rightscorp appears to operate more or less exclusively in the music industry. One finds it hard to believe, however, that upon demonstration of a viable business model, other rights management companies dealing with film and software will not dive into the fray.

In the US, Rightscorp relies on §512of the Digital Millennium Copyright Act (DMCA) which sets out conditions that an ISP must meet to be eligible for the “safe harbor” exemptions from liability afforded by that Act. 512(i)(1)(A) says that the ISP shall only qualify if it:

“…has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers; …”

By informing the ISP of a subscriber’s repeated infringement, Rightscorp assures that the ISP will pass on the settlement demand backed by the threat of termination of the subscriber’s internet service. If the ISP fails to do so, it risks losing its safe harbor status. 

But Canada’s Copyright Act does not contain an analogous provision to 512(i)(1)(A) of the DMCA. How then does Rightscorp expect its business model to work in Canada? One potential incentive to move north could be the Federal Court's recent decision in Voltage Pictures LLC. v. Does, 2014 FC 161 in which it granted a Norwich order compelling the ISP Teksavvy to turn over the identities of over 2000 subscribers alleged to have downloaded the film "Hurt Locker".

In Voltage, Voltage Pictures relied on Rule 238 of the Federal Court Rules which reads as follows:

Examination of non-parties with leave

    238. (1) A party to an action may bring a motion for leave to examine for discovery any person not a party to the action, other than an expert witness for a party, who might have information on an issue in the action.

         ...

Where Court may grant leave

(3) The Court may, on a motion under subsection (1), grant leave to examine a person and determine the time and manner of conducting the examination, if it is satisfied that:

(a) the person may have information on an issue in the action;

(b) the party has been unable to obtain the information informally from the person or from another source by any other reasonable means;

(c) it would be unfair not to allow the party an opportunity to question the person before trial; and

(d) the questioning will not cause undue delay, inconvenience or expense to the person or to the other parties.

In BMG Canada Inc. v. Doe, 2005 FCA 193, the Federal Court of Appeal set out a two prong test to determine if a motion made under Rule 238 should be granted in copyright infringement cases like Voltage where the interest of the copyright holder must be balanced against the privacy interests of individuals: 

1)  The moving party must actually intend to bring an action for infringement based on the information they obtain; and 

2)    There is no other improper purpose for seeking the identity of those persons.

The goal of this test is to assure that the copyright holder has a bona fide claim of infringement before personal information is released.

The Intervener, the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic (CIPPIC) argued that the subscribers' personal information was protected by the Personal Information Protection and Electronic Documents Act (PIPEDA) and Sections 8 and 9 of the Canadian Charter of Rights and Freedoms.

PIPEDA sets out the instances in which an organization may produce personal information of individuals in its possession without the consent of those individuals. S.7(3)(c) says that an organization "may disclose personal information without the knowledge or consent of the individual only if the disclosure is...(c) required to comply with a subpoena or warrant issued or an order mad by a court...". S.7(3)(i) says that the organization may release the information when “required by law”. Voltage Pictures was therefore required to obtain a court order.

Prothonotary Kevin Aalto ruled in favour of Voltage Pictures finding from the case law that while the privacy concerns of individuals must be considered (not only in determining whether the order should be granted, but also in carving out the scope of the order), privacy rights cannot be asserted as a standalone defense against wrongdoing. The Order of the Court in that case was very specific and included court oversight to assure that the wording of the letters sent to Teksavvy’s subscribers were proper. The Order specifically allowed for the subscribers to receive the full reasons for the judgement and required that the letter make clear that the court has neither ruled on infringement nor on the subscriber’s liability therefor.

It is unclear how Rightscorp would fair if it attempted to use the same strategy. Remember that the test in BMG requires the moving party to convince the court that it actually intends to bring an action. Rightscorp’s entire business model has (to date) been predicated on issuing demand letters rather than proceeding with actual litigation. This would seem to imply that Rightscorp would not meet the bona fide standard required by BMG for a copyright holder to obtain subscriber information from an ISP.

Prothonotary Aalto did allude, however, that it may be enough to show that the moving party plans on “enforcing” its copyright. Read broadly, this could include the issuing of demand letters (these being a standard “self-help” remedy).

Rightscorp may also be seeking to rely on the Copyright Act’s yet un-enacted “notice and notice” provisions. Under this regime, a copyright holder believing its rights to be infringed may send a letter to that effect to an ISP. The ISP will in turn forward the letter to its subscriber (without revealing the subscriber’s identity to the copyright holder). 

Since this new regime will come into force by regulations that have not yet been written, it is unclear as to what the content of the notice letters will be. In an article on TorrentFreak, Professor Michael Geist noted that the notice and notice provisions of the Act say nothing about whether settlement information may be included in the notices. It is also unclear whether the content of the notices will be strictly governed by the regulations or whether additional content (i.e. settlement information) will be permitted to be included. 

One thing is certain, IP lawyers, rights holders, public interest groups and academics will all have an eye closely trained on Rightscorp’s Canadian expansion.

SOPA on a Rope?

There has been an immense amount of talk lately regarding a bill currently making its way through US Congress known as the Stop Online Piracy Act (or SOPA).  SOPA has been fashioned as an effective response to rampant online piracy of copyrighted content by granting the Attorney General rather broad and sweeping powers to attack infringing websites. The law also gives individual rights holders a new procedure complete with remedes they’ve never had access to before.

The bill is a companion to the equally controversial PROTECT IP act, also being debated by congress. These two bills signify a sharp change in the American copyright landscape, specifically as it pertains to the Internet.

In addition to granting the Attorney-General the power to obtain a court order against a site that is either “committing of facilitating online privacy”, he may also order third party payment providers (such as Visa or PayPal) and online ad networks to stop supporting and dealing with the site in question.

photo by mikeleeorg

Furthermore, the Attorney-General may order the de-indexing of allegedly infringing sites from search engines.  Many have likened this rather extreme measure to the Internet censorship protocols enacted by the Chinese government (known coloquially as ‘The Great Firewall”).  While this may be a slightly extreme appraisal, this measure in particular brings up significant free speech issues.

As mentioned above, not only the Attorney-General but regular rights holders have been given powerful enforcement tools.  If a rights holder believes a site is infringing their copyright, they must undertake a two step process: First, they must contact payment providers and ad networks doing business with the site in question.  Upon forwarding them a compliant, they are to cease their service in relation to the website and forward the complaint to the owner of the domain. At this point, the site owner must reply and explain how their activities are not infringing copyright (eg. the material is legally licenced, fair use etc.).  if they do not, the rights holder may apply to a court for a limited injunction on the website.  

SOPA tries to incentivize the voluntary coming forward of ad and payment networks by extending them immunity from liability if they ”squeal” on an instance of copyright piracy or trademark infringement.

Finally, the bill expands the penalties related to certain activities including streaming video and various instances of counterfeiting.

Supporters of the bill tout it as the weapon American rights holders need to effectively police their IP rights. Supporting organizations include the obvious players such as the Recoding Industry Association of America (RIAA) and the Motion Picture Association of America (MPAA) but also large commercial entities like Nike, Ford and Pfizer.  SOPA would presumably make it easier for those large entities to enforce their trademark rights, adding to the ICANN Uniform Dispute Resolution Policy (UDRP).  While the latter only allows rights holders to go after infringing domain names, SOPA would allow them to pursue websites that make use of their trademarks in the actual content of the site itself.

Detractors contend that the bill is an absolute outrage and must be killed immediately. Representatives on both sides of the house have been outspoken critics, among them Rep. Nancy Pelosi and current Republican nominee for presidential candidacy Rep. Ron Paul.  In Rep. Paul’s own words, SOPA will likely result in "an explosion of innovation-killing lawsuits and litigation.”

Some even question the efficacy of the bill.  Sure the Attorney-General may order sites banned form the American web, but the DNS can be manipulated in creative ways to circumvent this roadblock. As was born witness to during this years “Arab Spring”, people can use mirror and proxy servers to get around national quarantines of the Internet.

The advent of these new measures also brings into question the utility of the DMCA’s notice and take-down system.  If SOPA passes, it will create a far stronger mechanism than what the DMCA currently offers thereby rendering those remedies obsolete. Unfortunately, the DMCA notice and take-down represents  significantly more balanced approach to dealing with piracy on the Internet than does the potentially Ex Parte (legal jargon meaning a hearing absent one of the parties) process put in place by SOPA. The latter allows actions to be taken against the infringing site itself if the Attorney-General is unable to locate the owner of the site.

It remains to be seen what type of effect SOPA and PROTECT IP will have in the Internet landcsape in the US.  The question also beckons as to whether any other countries will follow suit with national legislation of their own in the same vein.  Being the worlds largest exporter of Intellectual Property, the United States has a vested interest in seeing IP laws around the world tighten.  Here in Canada, our copyright modernization act (currently making its way through Parliament) seems to already reflect that exported interest.  The last thing Canada needs right now is “SOPA North”.  However, since “Stephen” and “Barack” are such good buddies these days, who knows what could happen?