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| Chilling Effects Clearinghouse > Trademark > Weather Reports > Using the Chilling Effects Database for Research: Trademark Infringement Claims as Censorship | Location: https://www.chillingeffects.org/weather.cgi?WeatherID=777 |
Maria Serena Ciaburri, Sanna Kulevska, Liz Woolery, July 09, 2013
Abstract: One of the things we at Chilling Effects are interested in exploring is using our huge database of DMCA take-down notices and cease-and-desist letters for research. With over a million notices in the databases, we have a wealth of information about chilled internet speech over the past 12 years. Both academics and lawyers have used the database for research purposes in the past, and we are hoping to find more uses for the data.
One of the things we here at Chilling Effects are interested in exploring is using our huge database of DMCA take-down notices and cease-and-desist letters for research. With over a million notices in the databases, we have a wealth of information about chilled internet speech over the past 12 years. Both academics and lawyers have used the database for research purposes in the past, and we are hoping to find more uses for the data.
Recently we (the Chilling Effects interns) set out to see what information the Chilling Effects database holds with respect to trademark infringement claims. Specifically, we were interested in finding incidents in which a trademark holder filed a DMCA take-down notice claiming that the recipient was infringing on his or her trademark -- but perhaps there was more to the story. For example, say the trademark holder wasn't really so concerned about trademark infringement, but instead, he or she was concerned about negative opinions expressed toward the brand or service, and the infringement claim was just an easy way to get the content in question removed (at least temporarily). Just a week ago we published a Weather Report about this type of censorship of online speech. That Weather Report discussed a recent entry in the Chilling Effects database dealing with the Church of Scientology's efforts to have a parody site taken down. The incident raises the question of whether the legal system is working as intended, since some might argue that the Church of Scientology's effort at censorship was only thinly masked as a trademark infringement claim, with the Church's real aim being removal of the parody content.
Though the outcome of that case and similar cases is up in the air at the moment, there is still plenty of research to be done on this subject. Working with the director of the Digital Media Law Project, Jeff Hermes, we combed the Chilling Effects database for trademark infringement claims, selecting those with motives that seemed to indicate that more than trademark infringement was at issue.
Continue reading for more about our method and our findings.
Method (How We Did It -- and How You Can Too!)
Our main purpose with this research was to investigate whether individuals online use trademark infringement claims as a way to censor speech when submitting takedown notices. If this was the case, we wanted to know how frequently such attempts at censorship happen and if there are any clear patterns that warrant further analysis. We initially based our research on the following three questions: (1) Did market competitors (of the original trademark holder) send the takedown notices?; (2) Did the complaints deal with trademarks in domain names, URL paths, or site metadata?; and (3) Were the notices sent to the hosts/Internet Service Providers, or to the infringers?
We chose 9 search terms that were relevant in combination with the term 'trademark' to reach an answer to how common the "misuse" of trademark claims is. The search terms, each combined with the word "trademark," were: defamation, cease & desist, reputation, DMCA, privacy, cease and desist, damage, slander, and harm.
We searched for the frequency of each combination of search terms over the past year, the past 6 months, the past 3 months and the past 30 days prior to June 4, 2013.
An overwhelming majority of the search results returned were found using a combination of the words "trademark" and "DMCA."
Because of the quantity of results when searching the term "trademark" it was impossible to review all of them exhaustively. Instead we chose to concentrate our search on the most recent takedown notices, focusing on takedown notices from the 30 days prior to June 4, 2013. However, for a more complete research, we also looked at selections of older takedown notices as well to see if there were any major outliers or notices that could be insightful for our research.
We reviewed each notice to determine whether it was possible that the trademark holder was potentially using trademark infringement claims as a proxy for censoring speech. For example, in the text of the notice a trademark holder might suggest that the notice recipient was infringing on the holder's mark, but also that the recipient/alleged infringer was inflicting reputational harm on the holder. Our review resulted in 37 notices that potentially fit that description. We then reviewed each of these notices to answer the three questions outlined in previously.
Our specific findings, discussed below offer a preliminary look at the state of trademark infringement claims and the DMCA.
Specific Findings
The vast majority (61%) of the takedown notices studied here were not sent by market competitors. Only 12% of notices identified were sent by a market competitor. However, 21% of notices were sent by someone who was clearly anti-trademark holder, a fact which was apparent based on the text of the notice. For example, a notice might specify that the trademark holder was concerned about a poor review on an online review site such as ripoffreport.com. In six percent of the notices it was unclear whether the notice was sent by a market competitor.
There were very few claims involving metadata, domain names, or URLs. Eighty-five percent of the claims did not involve any of the above. Domain names were the subject of notices 9% of the time and URLs were the subject in 6% of notices.
Most of the notices (64%) were submitted to Internet Service Providers via online takedown request functions provided by those ISPs; another 21% were submitted directly from the trademark holder to the recipient/alleged trademark infringer; the remaining 15% did not identify the method of filing.
Conclusions
The fact that takedown notices might be submitted with the intent to censor speech is one possible reason to why there were so many takedown notices labeled as a trademark claim, when the underlying or authentic reason could be something else, such as a claim of defamation, reputational harm or similar. A trademark holder may believe that he or she has nothing to lose by submitting a claim as a trademark claim, even when their intent is to censor First Amendment-protected speech. If the holder is successful in filing his or her claim as a trademark claim, the content will be taken down immediately; if they are not successful, they have lost nothing more than the time it took to submit the notice. Even if the holder does not have the necessary evidence to win a trademark infringement case in court (where they must show that all the factors for likelihood of confusion are met), the trademark holder might think that it is worth submitting a DMCA take-down notice. However, by reading through the the notices in the database, it is apparent that the notices come from individuals who lack substantive legal knowledge and who may be using the DMCA as a mechanism for expressing frustrations with online speech with which they disagree. Filing a claim with Twitter, Google, etc. is an easy and accessible way achieve their goal (at least temporarily).
Another theory is that the Internet users might be confused. Given this lack of legal knowledge, there may be a role for Chilling Effects to provide more guidance to Internet users wishing to submit notices online. For example, Chilling Effects could provide users with information about the difference between a takedown notice based on a defamatory statement and one based on trademark. Additionally, some information regarding trademark law and the different factors which need to be fulfilled to win a trademark claim could be helpful to individuals submitting notices.
Please keep in mind that searching of the database was not a highly scientific process (though we certainly tried!), due to limitations of the Chilling Effects database search function, and that the presented findings only cover our researched material and not the whole Chilling Effects database. Any questions comments or questions are welcome.
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