It’s funny how things can sometimes change over a period of several weeks. Since last month’s article on intellectual property, “Friendship is a Registered Trademark”, a flurry of cease-and-desist and takedown letters has begun to land more firmly than ever before, with a marked intensification over the past week or two. Since our last article, well-established fanworks have seen their work taken down from YouTube, including Friendship is Witchcraft, the Mentally Advanced (Abridged) Series, and even (reportedly) AwkwardMarina’s posting of her “Anthropology” fan song. Meanwhile, the lesser-known equestriagirls.com site has received a letter from Hasbro’s legal department.
Together with some of the feedback gathered from comments on our last article, I have put together a series of updates about the status of Hasbro, intellectual property and the larger Brony community.
(DISCLAIMER: The legal commentary contained in this post is not made by a practicing lawyer and should not be used in lieu of professional legal advice. Only a professional intellectual property lawyer can provide accurate advice on what is or is not appropriate activity under your local IP regulations and case law.)
Since my last post, some additional issues relating to mechanical licenses have been brought to my attention by forums user MusicByOctavia. While his experiences do not directly relate to his pony music covers, they do have potential ramifications which may render mechanical licenses much less useful for those seeking to profit off of music from Friendship is Magic. MusicByOctavia’s trouble stems from the United States legislation which provides for mechanical licensing, 17 USC § 115 (a)(1), which explicitly allows for mechanical licenses only after “phonorecords of a nondramatic musical work have been distributed to the public” (i.e. after a song has been released as part of a proper soundtrack). This creates an absurd situation in which songs which only feature as part of “audiovisual representations” (such as the songs in Friendship is Magic) are not eligible for mechanical licensing, since they haven’t actually been properly distributed as an audio recording (e.g. on a CD or a digital music store).
Using our example of forums user MusicByOctavia, he did go through the proper channels of licensing by using a licensing aggregator, LimeLight, and sending a Letter of Intent to Disney for the purpose of obtaining a mechanical license for his cover of the Gravity Falls‘ theme song, Made Me Realize, as explained in my previous article. All this work, however, did not prevent MusicByOctavia from receiving sudden word from iTunes months later announcing that his cover of the song had been taken down due to a copyright claim made by Disney. While his due diligence and proper submission of royalty checks to Disney would seem at first glance to defend his right to keep the cover on iTunes, the fact that Made Me Realize was not officially released by Disney in either physical or digital audio releases meant that LimeLight was in reality unable to properly grant him a license, and that Disney could remove the track at any time. This did not stop Disney from cashing the royalty checks he sent them, even after the takedown occurred, but still leaves MusicByOctavia with no recourse short of negotiating with and obtaining a costly license from Disney directly. While we disagree with Disney’s actions here and find it morally questionable for them to willfully accept money for a ‘licensed’ track with one hand and subsequently revoke the license with another, the wording of the law is unambiguous with respect to what counts as a “release”, granting far more power to media companies like Disney than previously suggested.
The same issue arises with songs from Friendship is Magic, which similarly have not been released as a soundtrack. There is thus no legal mechanism which provides for distributing or performing covers of pony songs without either breaking US copyright law or negotiating with Hasbro directly. (For similar reasons, it is also illegal to broadcast them on internet radio streams as well.) This limitation would no longer apply should Hasbro ever choose to release a soundtrack for the series, but news on this front has been mixed at best. Until these songs are distributed legally on iTunes or on a CD, however, they may not be legally covered without getting a proper license from Hasbro without which they may choose to revoke any “mechanical licenses” at any time. My apologies for accidentally misleading you all!
Take Down All of the YouTubes!
It was mentioned as something of a footnote in the previous article that Hasbro has not tolerated full-length episodes on YouTube since the arrival of more legal avenues to watch the series (such as on Netflix or the iTunes Store). Though this has been an open secret for some time, however, their efforts have taken on new meaning with the sudden take-down of the Friendship is Witchcraft series and many other fan-created videos from YouTube over the past few weeks. Coming so shortly before the release of Sherclop Pones’s next episode, many fans were shocked to find that Hasbro seemed to have stepped up their game and were now attacking popular fan-made content.
This should come as no surprise to those watching the news carefully, as it was reported recently that FiM episodes had finally been added to YouTube’s Content ID system. This fact has significant ramifications, as Content ID removes the onus of issuing takedowns from Hasbro and places them in an automated system which is unforgiving of even the most basic cases of “fair use”, and which has become notorious for the ease in which it has been misused or outright abused. While it is well within Hasbro’s rights to use Content ID to remove full episodes from YouTube, the fact that longer fanworks such as Friendship is Witchcraft are caught in the crossfire of a system which effectively denies them the right to legitimately exercise their “fair use” rights (an argument could very likely be made that Friendship is Witchcraft would fall under the “fair use” of parody) is quite troubling, if not necessarily surprising given the history of such projects.
As of this writing, Griffin Lewis, co-creator of Friendship is Witchcraft, has filed a counter-complaint to restore the videos, but given the history of the abuse of Content ID, it is not clear whether or not the videos will actually be restored. In the meantime, the Friendship is Witchcraft videos have popped up on other video hosting, like DailyMotion and Derpy.TV. For their part, FiMFlamFilosophy, creators of the Mentally Advanced series have chosen to not restore the videos or fight the claims.
The Trouble With Domain Names…
In closely related news, the owner of equestriagirls.com, a website which displayed an embedded copy of the YouTube Equestria Girls music video (or the extended version posted by Equestria Daily) on loop, received a letter from Hasbro on January 15th requesting that the site be shutdown and the domain be transferred to Hasbro. This letter, which is posted on the aforementioned site, raises two very interesting intellectual property issues for which the resolution is unclear.
The first (and most obvious) issue is that of the domain name itself. As mentioned in the posted letter,
We would also appreciate it if you forwarded this correspondence to the website owner (we have copied the privacy protection service on this as well) so that we can start the process of transferring the domain name registration to Hasbro. “Equestria Girls” is the name of a MY LITTLE PONY promotional video and is widely and exclusively associated with Hasbro and Hasbro Studios.
Unlike the MLP: Online letter, the equestriagirls.com letter does not actually invoke trademark law in demanding a transfer of the domain, but simply states that the name is “widely and exclusively associated with Hasbro and Hasbro Studios”. Given that equestriagirls.com is nominally not violating trademark law (or at least is not noted as doing such), why does Hasbro request the transfer of the domain in its name? The answer lies in the oft-used Uniform Domain-Name Dispute-Resolution Policy (or UDRP), a policy developed in 1999 to apply to all holders of domain names. The purpose of the UDRP is to dictate how arbitration may be used to determine which of several parties has the right to own a given domain name.1
The purpose of the UDRP seems to be honest and simple: companies with trademarks shouldn’t be held to ransom for not having purchased domains which are purchased by cybersquatters. Any rights holder may request a mandatory arbitration hearing regarding a domain name in which they hold rights, in which they must prove three points to effectively claim the domain name:
- the domain name in question “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”
- the current owner of the domain name has “no rights or legitimate interests in respect of the domain name”
- the domain name must have been registered and used in bad faith.
It is important to note that the first point does not actually make use of precedence when deciding whether or not a domain name holder is abusing a trademark; a domain name holder need only hold a domain in which the complainant “has rights”, with no real restriction on when those rights may have been established. In fact, “common use” has been used in some cases to determine whether or not the complainant has rights preceding the official filing of a trademark. Thus, it’s plausible that equestriagirls.com may easily fail the first point (simply because Hasbro did choose to trademark the term and the domain was registered after the release of the video in question).
The second point is a weak defense at best for the owner: it’s fairly obvious that the term was registered after Hasbro created the video, and it was used exclusively to embed the video. Thus, it’s quite likely that the owner has no rights in respect of the domain name (they registered it in response to the video) and may, depending on precedent, not have any legitimate interests in it as well. If the owners were to lose the domain, they would not materially be out more than the $11 or so that they spent to register the domain.
It is the third point that proves most likely to be a sticking point: the owners clearly have no bad intent with respect to the domain (they certainly do not appear to be using it to profit, and have linked directly to the videos in question). But is this enough to defend against a claim of “bad faith”? Thankfully, the UDRP does clarify what would consist of a finding of “bad faith”:
- if the owner appears to have obtained the domain “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”
- if the owner obtained the domain “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct”
- if the domain name was acquired “primarily for the purpose of disrupting the business of a competitor
- if the owners of the domain have “intentionally attempted to attract, for commercial gain, Internet users to [the] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site…”
All of these points seem to favor the current owners (they had never made any use of the domain for “commercial gain” by placing ads, for example, and the videos that were linked to were the original videos posted or authorized by Hasbro itself which still remain on YouTube), but again, this does not mean that Hasbro might still win in any theoretical arbitration case, as the above four points are not exclusive. Other mechanisms of proving bad faith not enumerated above may indeed classify the registration as being in bad faith. Previous UDRP arbitration cases have found evidence of bad faith in a number of instances which may not be in equestriagirls.com’s favor, including providing false contact information (as it’s been held in certain cases that using a WHOIS privacy mechanism may count as bad faith). equestriagirls.com may also be guilty of failing to perform a trademark search, although in an interview, the owner told The Round Stable that they “[were] aware of what was posted on Equestria Daily which said that the trademarks applied for toy ponies and dolls” but added that they were not aware that the trademark filing necessarily applied to the video or their website. This is not to say that equestriagirls.com is in the wrong, but it’s not at all clear that it could support a defense against a UDRP or other similar claim.
A More Concerning Turn
More concerning than Hasbro’s demand for the equestriagirls.com domain is their claim made under the Digital Millennium Copyright Act (DMCA). This act, which may be at least passingly familiar to a number of readers, was passed in 1998 as an attempt to update certain aspects of copyright law to account for technological changes that allowed end-users to copy protected works more easily than ever before and distribute them for practically no cost over the Internet.
The most relevant portion of this act to equestriagirls.com is Title II of the act (also called the Online Copyright Infringement Liability Limitation Act (OCILLA)) which provides certain online service providers a “safe harbor” which allows them to avoid liability for the copyright infringement of their users. In short, to be allowed a safe harbor and avoid liability for “inducing” copyright infringement, internet service providers and other online services that store user data (e.g. YouTube, Facebook, flickr, etc.) must have a designated agent to receive takedown requests submitted by copyright holders under the terms of 17 USC § 512 (c) and subsequently “remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.”
The problem, however, is that equestriagirls.com never actually stored the video, but simply embedded the YouTube video. As a result, at best equestriagirls.com violates not subsection (c) but rather subsection (d), which applies to links to such material on search engines like Google. In fact, the question as to whether or not copyright violation can result from embedded YouTube videos is actually unsettled case law! Thus far, the issue has been raised only in the US Court of Appeals for the Seventh Circuit in Flava Works, Inc. v. Marques Rondale Gunter (10 C 6517). In that case, Gunter, sole proprietor of MyVidster.com, had been held potentially liable for “contributory copyright infringement” in a preliminary injunction by embedding a video for which Flava Works held the copyright. Gunter subsequently appealed the injunction to the Seventh Circuit Court of Appeals.
Although the Motion Picture Association of America (MPAA) agreed with the original ruling in an amicus brief submitted to the court, the decision was vacated under the US Court of Appeals, dismissing the claim that simple embedding is a violation of copyright for the purpose of contributory infringement. This suggests that equestriagirls.com need not abide by the DMCA takedown request, as they may not even be liable for copyright infringement. After all, as the owners point out, the same video was deliberately uploaded to YouTube on behalf of Hasbro and has not received a takedown request, implying that Hasbro indeed desired the video to be distributed and viewed by fans!
Of course, the fact that this has not been universally agreed upon in all US circuit courts could easily turn such a case against equestriagirls.com. Even so, it is a worrying trend, especially for a company that has, until now, been fairly lenient toward most copyright infringement within the fandom.
As for the future of equestriagirls.com itself? In the interview The Round Stable conducted with the owner of the site, they had this to say:
I don’t care enough to file a DMCA counter-claim, even though I find it entirely absurd that it could possibly be considered infringing on anything since the site only embedded a video, where that exact video hasn’t been taken down from YouTube, and where the video was sent directly from the Hub to EQD to share with the internet in the first place. I also didn’t register the domain in bad faith, nor did I use it in bad faith, but many cases have convoluted that term in all sorts of creative ways, and it’s not at all worth my time or money to fight a UDRP case should it arise.
Hasbro can have the domain if they want it. I will be very disappointed if they do something boring like redirect it to hasbro.com, but considering that they don’t have a history of pursuing ownership of domains pertaining to any of their other trademarks (such as canterlot.com or rainbowdash.com/net), maybe they really do have something planned.
So What Does It All Mean?
Taken individually, these issues don’t seem like all that much, but taken together, they paint a rather worrisome picture of the future for the creative output of the fandom. While Hasbro certainly has a vested interest in encouraging fans to buy or watch legally accessible pony episodes (after all, they can’t make money from the ads that are stripped from the weekly uploads to YouTube), we fear that actions like that taken on equestriagirls.com are extremely heavy-handed and send the wrong signal to the fandom at large. Like it or not, the fandom Hasbro has accidentally gained is one that is perhaps more aware of copyright as a whole; they know good and well that Hasbro’s light hand to copyright offenders so far has been what has helped the community to grow the way it has. The flip-side, however, is that the community is also likely to be sensitive to overly zealous enforcement of copyright on Hasbro’s part. Letters that request fans to shut down websites which simply link to YouTube videos posted with Hasbro’s permission sends a very bad sign and works to undo much of the good will Hasbro has shown fans so far. Likewise, while the excesses of Content ID are hardly Hasbro’s fault, we hope that Hasbro recognizes the value of fan works like Friendship is Witchcraft and the Mentally Advanced series and do not press them should they ask for their videos to be reinstated (never mind the fact that, as parody, they may in fact be fully legal fair uses of Hasbro’s copyright in any case).
One Final Note
Since our last article, several of the MLP:Online staff came forward to clarify somewhat on additional issues relating to their cease-and-desist letter. Most notably, that issues relating to copyright on the characters and setting of Ponyville were indeed mentioned as additional reasons within the cease-and-desist letter. This should not come as a surprise; in the last article I noted that it was likely that “the additional copyright violations quickly made it effectively impossible to slip by without proper licensing, not only of the ‘My Little Pony’ trademark, but of the copyrights as well.” Simply because a project does not make use of the “My Little Pony” trademark does not make it immune to getting called on intellectual property violations as the presence of the characters we know and love is a copyright violation in and of itself. All that can be stated is that refusal to use the “My Little Pony” trademark simply leaves the choice of taking legal action up to Hasbro rather than forcing their hand as trademark law does.
1 A number of other laws and regulations govern domain name registrations. In addition to the UDRP, trademark owners may seek remedy in under US law through the use of the the Anticybersquatting Consumer Protection Act or Federal Trademark Dilution Act. Although the case law naturally differs from how the UDRP is handled, the ACPA in particular makes use of a very similar set of guidelines to the UDRP, including a requirement to show “bad faith”. I’ve chosen to discuss the UDRP in particular as it is more likely to be used in this case; it is unlikely that Hasbro actually desires the additional financial penalties that ACPA grants and would be happy simply acquiring the forfeited domain. Many of the same principles would likely apply to the court case if ACPA were used instead. ■