Canon's new slogan

Canon are at it again and this time they’ve sent a take-down notice to a fan site called Canonfilmmakers.com. The owners of the site have posted some information about the issues on their blog. The exact details of why Canon wants them to take down the website aren’t clear, but what is clear is that the reasons have something to do with claims that the Canonfilmmakers.com website is infringing on Canon’s trademark. I took a look at the website and the only reason I could immediately see why they would claim infringement is the use of the word “canon” in the domain name of the website.

This is not the first time Canon tries to shut down a fan site. A few years ago they also tried to shut down Canonrumors.com, though the owners of that site were later able to work something out and keep the site online. I believe they removed the Canon logos from the site and included a statement saying the site was not affiliated with Canon in any way. Canonrumors.com remains online to this day. Fake Chuck Westfall, who’s blog was also being targeted by Canon lawyers two years ago, has written about this on his blog where he lists some more examples of Canon’s legal attacks and ill behavior towards customers.

A screenshot of the Canonfilmmakers.com website

In the case of Canonfilmmakers.com there was no use of the Canon logo, and no claims being made that the site was affiliated with Canon and I don’t see where there could be any confusion in that regard. You’d have to have a very low IQ to take that site as an official Canon website.

And yet this doesn’t stop companies like Canon from intimidating innocent fans and customers on the Internet. A post on The Blog Herald mentions the issues Canonfilmmakers.com are having, and also details how other companies (the smarter ones) treat these kinds of issues completely different:

The real problem with fan sites isn’t merely the legal aspect of them, it’s that virtually every company and creator has a different set of rules as to what fan sites can and can not do.

For example, where Canon is obviously out to try and stamp out every site that uses their mark, no matter how genuine their intentions, Star Trek actively links to interacts with fan sites in their community and Blizzard entertainment, the makers of World of Warcraft, even provide an official fan site kit to help fan sites get started and provide clear licensing terms.

In short, no two communities have the same set of rules. Where one artist or one company may routinely go to war with fan communities, often times pushing the boundaries of what the law actually says they can do, others may offer licenses and do everything they can to nurture them.

Trademark law doesn’t so much exist to protect the rights companies have to their trademarks but more to protect consumers:

Trademark law is designed to fulfill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the expectations of consumers as to quality and other characteristics.

The problem is that companies, such as Canon, abuse these laws and go out to intimidate people for no good reason. They’ll mention how the use of the word “Canon” in the domain name may confuse people and lead them to think the site is an official Canon website, but that is just bullshit. Canon Inc. didn’t invent the word “canon” and can’t prevent people from using that word, especially not when people need to use it to talk about their products. I mean, if you run a camera club for Canon users, how else will you be able to indicate your club is specifically for Canon users if you can’t use the word “canon” anywhere? How would you run a magazine specifically for Canon gear? Jon Connor, one of the owners of the Canonfilmmakers.com website, made a funny video showing just how difficult things can become when you can’t use a trademark when talking about it:

The purpose of trademark law was certainly not to limit free speech or to limit the way in which people can express themselves. Here’s an example of a case where this is made very clear:

Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer’s product, not the user’s own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark “New Kids on the Block” was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

That sounds logical, right? That “the basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services.” If I want to run a website where I talk only about Canon gear, I should be able to use the word “canon” to talk about their product in all communication and that includes in my domain name and meta data in my webpages. The domain name is what people use to find your site on the Internet, and if you’re running a website for film makers specifically using Canon gear, it makes sense to me to let that be clear immediately to everyone by including it in the domain name, which gets indexed by search engines and will help you reach those film makers using Canon equipment more easily. In the same way, if I want to start a fan club for Canon DSLR users specifically, I should be able to call it the Canon DSLR Fan Club so that it is immediately clear what kind of fan club it is. How else can I communicate to people that the fan club is specifically for users of Canon gear if I can’t use the word “Canon”? How can you start any fan club if you’re not allowed to use the trademarks, and as a result, are not allowed to say what your fan club is for??

Let’s look at nominative use a bit more:

Nominative use may be considered to be either related to, or a type of “trademark fair use” (sometimes called “classic fair use” or “statutory fair use”). All “trademark fair use” doctrines, however classified, are distinct from the fair use doctrine in copyright law. The nominative use test essentially states that one party may use or refer to the trademark of another if:

1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.

Furthermore, if a use is found to be nominative, then by the definition of non-trademark uses, it can not dilute the trademark.[2]

With the above 3 points in mind: Canonfilmmakers.com wouldn’t be able to effectively run their community website if they couldn’t use the Canon trademark in their communications to exactly identify the type/brand of gear they cover or specialize in, so therefore, their use of the word “Canon” in their name (including domain name) is justified (1). They used only as much of the trademark as was necessary, in their case just the word “Canon”, no use of the Canon logo (2). And they did absolutely nothing to suggest that they were being sponsored or endorsed by Canon themselves (3).

So I don’t really see why Canon would insist that Canonfilmmakers.com take down their website. It’s not like their trademark was being diluted or misrepresented in some way or otherwise being abused. On the contrary, you could argue Canonfilmmakers.com only added value to Canon’s products.

What happens when you're being stupid about protecting your trademark. Photo is (c) Anthony Dunn Photography.

I absolutely hate it when people and/or companies abuse the law to unnecessarily limit, attack or intimidate others like in this case with Canon. Often it’s the case that these kinds of threats are being sent out by lawyers even while they know that they don’t really stand a chance in court, but they do it anyway just to see if the victim (yes victim) gets scared and allows him/herself to be intimidated by their threats. Similarly, a while ago I also got a Cease and Desist letter from Amazon/dpreview where they claimed I was infringing on dpreview’s rights. I replied and after more than a year I have yet to hear from them. These companies shouldn’t forget that the victims can also take legal action against them when they make groundless threats of infringement:

Various jurisdictions have laws which are designed to prevent trademark owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.

Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action.[17] In this situation, the party receiving such a threat may seek from the Court a declaratory judgment; also known as a declaratory ruling.

I’m sad that I am not the owner of Canonfilmmakers.com because I would have loved this opportunity to defend myself against these claims made by Canon, assuming that their infringement claims are based on the domain name (because so far that’s the only reason that seems likely to me if I look at the website). We need to stand up against this kind of abuse of trademark and copyright laws because if we don’t, it will only get worse in the future. As a photographer, I love that I can have certain rights to my work under copyright law, but I’ll be the last one to abuse those laws for something that I shouldn’t be doing (like in the Amazon/dpreview case where they clearly tried to influence my criticism). I respect their copyrights, but they’re not going to stop me from exercising my right to free speech.

There are many other websites out there using the Canon brand name in their domain name such as Canon-Questions.com and even ACanonLawyer.com. A simple Who-Is lookup reveals thousands more of which hundreds are really related to Canon. So it seems that when Canon’s lawyers have nothing to do, sending out take-down letters to fan sites could give an impression that they’re working hard to earn their money. You may think that this is a silly idea, but these kinds of things really happen. I was told by a lawyer (yes really) a while ago that since it is often the case that they get paid for every letter that they send out, it doesn’t always really matter to them whether the claims they make in those letters are valid or not, and if their client’s position is strong, weak or groundless. They get paid for sending out a letter, so they do it and it’s another $100-$200 earned. Especially if the other party is just a simple person with limited resources where they can have some kind of expectation that he/she will let him/herself be intimidated by the threats made in the letter and give in to the demands. I’ve been the victim of this myself so I know what I’m talking about.

I really hope that the owner of Canonfilmmakers.com lives up to his name (Jon Connor) and decides to fight back and lead the resistance against Canon Inc. He will be doing the entire Canon community and the global population in general a really big favour, especially so when he wins and makes the details public.

My recent post about the Canon EOS 7D caused a bit of controversy on the Internet and it is not surprising considering that in that post I’m essentially showing that the EOS 7D, Canon’s supposedly latest and greatest APS-C sensor camera body, is offering worse image quality compared to the two year older model, the EOS 40D. This was my conclusion based on my discussion of dpreview’s review of the EOS 7D and some of their test data.

After posting my article about the EOS 7D, I notified people of the post and one of those people was Philip Askey, the guy who started dpreview before Amazon bought them some time ago. Shortly after sending my email to Askey, he replied demanding that I take down the sample images from dpreview which I included in my post about the 7D. You can see the email conversation that followed below:

From: Philip Askey
Sent: Sunday, November 08, 2009 7:47 PM
To: Karel Donk

Please remove the copyright image quality crops from your blog post, you did not seek permission to reproduce these.

—-

From: Karel Donk
Sent: Sunday, November 08, 2009 8:55 PM
To: ‘Philip Askey’

Hi Philip,

Thank you for reading. I was hoping you guys would mention how the noise in 7D images was still worse compared to the 40D, like you did when you reviewed the 50D.

Also I use some of the crops to discuss the result of your published reviews and show how from your own reviews and samples, the 7D performs worse than the 40D, while also mentioning how you guys failed to mention in your own review that the 7D performs worse at low ISO compared to the D300s, as you can clearly see.
My use falls under fair use and that’s why i did not ask permission. But let me know if you think otherwise.

Regards,

—-

From: Philip Askey
Sent: Sunday, November 08, 2009 8:59 PM
To: Karel Donk

Karel,

You clearly have an axe to grind against Canon and I’m not hear to have a conversation, we would compare the 7D to the 40D if it were the clear predecessor.

Your use of our numerous images does not fall under fair use.  Please remove all these images immediately.

—-

From: Karel Donk
Sent: Sunday, November 08, 2009 9:03 PM
To: ‘Philip Askey’

Philip,

Can you explain to me why you think this is not fair use?

Thanks,

After my last email to Askey above, I didn’t hear from him again. However, after this email exchange I started contacting a few people to ask them for their opinion about my use of the images in my post. I was sure my use of the images fell under “fair use” but I still wanted to hear the opinion of others just to be absolutely certain that I wasn’t infringing on dpreview’s rights. As a photographer myself, I too would love to be able to protect my work, so I take such matters very serious. One of the people I contacted was Dan Heller, well known in the photography business community online, he has written about many similar topics in the past. We started a very insightful email discussion on the subject, and Dan basically confirmed my “fair use” argument.

In case you’re not familiar with “fair use” of content, the Electronic Frontier Foundation (EFF) has the following to say about it:

The public’s right to make fair use of copyrighted works is a long-established and integral part of US copyright law. Courts have used fair use as the means of balancing the competing principles underlying copyright law since 1841. Fair use also reconciles a tension that would otherwise exist between copyright law and the First Amendment’s guarantee of freedom of expression. The Supreme Court has described fair use as “the guarantee of breathing space for new expression within the confines of Copyright law”.

3. How Do You Know If It’s Fair Use?
There are no clear-cut rules for deciding what’s fair use and there are no “automatic” classes of fair uses. Fair use is decided by a judge, on a case by case basis, after balancing the four factors listed in section 107 of the Copyright statute. The factors to be considered include:

a. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes — Courts are more likely to find fair use where the use is for noncommercial purposes.
b. The nature of the copyrighted work — A particular use is more likely to be fair where the copied work is factual rather than creative.
c. The amount and substantiality of the portion used in relation to the copyrighted work as a whole — A court will balance this factor toward a finding of fair use where the amount taken is small or insignificant in proportion to the overall work.
d. The effect of the use upon the potential market for or value of the copyrighted work — If the court finds the newly created work is not a substitute product for the copyrighted work, it will be more likely to weigh this factor in favor of fair use.

4. What’s been recognized as fair use?
Courts have previously found that a use was fair where the use of the copyrighted work was socially beneficial. In particular, U.S. courts have recognized the following fair uses: criticism, comment, news reporting, teaching, scholarship, research and parodies.

Based on the criteria in point 3 above, there’s absolutely nothing wrong with my use of some of dpreview’s images as I did in my post about the EOS 7D. Especially considering the fact that I was mainly criticizing dpreview’s review of the 7D (they worded the review in such a way to make the 7D look positive at times) and using their own data to show what I feel that they failed to mention about the  7D (that it offers worse image quality compared to the Nikon D300s from ISO 100 – 1600 and worse compared to the EOS 40D at all ISOs).

But the next day, after I sent my last reply to Askey, I get the following email from a lawyer at Amazon:

From: Radliff, Lynn
Sent: Monday, November 09, 2009 8:36 PM
To: Karel Donk
Cc: Sheehan, Kathryn
Subject: Cease & Desist

Dear Karel Donk:

I am Associate General Counsel for Litigation and Regulatory Matters for Amazon.com, which owns dpreview.com.  It has recently come to our attention that you are using dpreview.com’s copyrighted material in your blog posts, specifically http://blog.kareldonk.com/canon-eos-7d-review-noisier-than-40d/, in connection with Karel Donk In My Opinion.  Your use of this content is unauthorized by dpreview.com and infringes dpreview.com’s intellectual property rights. The purpose of this e-mail is to demand that you immediately cease using or otherwise infringing dpreview.com’s copyrighted content and related rights.  dpreview.com would prefer to resolve this matter amicably with your cooperation. However, dpreview.com needs your written assurance that you are willing to immediately cease and desist from any and all use of dpreview.com’s intellectual property, including any images and content from the dpreview.com web site.
We look forward to hearing from you, and ask for your written response by Friday, November 13, 2009 to indicate your position on this matter. If we do not hear from you by this date, we will take those further steps that we believe are necessary to protect our rights.
Thank you for your prompt attention to this matter.

Kathryn Sheehan

As you can see, they wanted me to assure ”that you are willing to immediately cease and desist from any and all use of dpreview.com’s intellectual property, including any images and content from the dpreview.com web site.” This would mean that I could not even quote some of their review text so that I could comment on it or criticize it. And of course this would severely limit me in exercising my right to free speech, so I couldn’t possibly agree with this. In addition, there was nothing wrong with my use of the dpreview images in the first place. So I replied as follows:

From: Karel Donk
Sent: Monday, November 09, 2009 9:03 PM
To: ‘Radliff, Lynn’
Subject: RE: Cease & Desist

Hi Kathryn,

In my blog post, which you mention in your email, I am discussing, among other things, the review done by DPReview of the EOS 7D. I quote part of their findings from the review, and offer my own comments and criticism on their review. I have included browser screenshots of their review images (not the original images) from the review which were relevant to my comments, to support my comments and criticism to show that THEIR OWN images show things that I feel they failed to mention in their review.

I believe that this is “fair use” of the material. I would not be able to discuss their review and make my points if I could not quote some of their text and show SCREENSHOTS of SOME of their images, and my comments and criticism would not be possible.

If you think this is not fair use, please let me know and also let me know why you think it is not, so I can consider taking the images down if I see that I am in fact infringing on dpreview.com’s rights.

Regards,

I have yet to receive a response from them on my last email above. Dan Heller later told me that he thought I used way too many words in my reply, and that an email asking the following would have been enough:

Explain to me why you feel my use of the images doesn’t meet the four criteria established by the courts in fair use assessments.

And I couldn’t agree more. Short, powerful and to the point.

I thought this information might be useful to many people out there, as the use of copyrighted images on blogs is an often discussed topic on the Internet, and I think it’s going to be discussed a lot more often in the future as more people discover the Internet and start blogging. Certain use of copyrighted images on your blog is certainly permitted as long as you keep the “fair use” guidelines in mind. But I’ll leave it to experts like Dan Heller to talk about this subject more in-dept.

Update January 23, 2010:

There’s a nice article at Black Star Rising about understanding fair use. Check it out.

Canon has sunken to a new low in trying to take down the blog of Fake Chuck Westfall, a parody of the real Chuck Westfall who is the Technical Information Advisor at Canon USA. The shut down notice posted on the blog contains all the details, including the letter from law firm Loeb & Loeb, who represents Canon. Their attempt to take down the blog seems to have failed because Automattic, the company who owns WordPress.com where the blog is being hosted, has refused to take down the blog. More details can be found here. In addition to failing to get the blog shut down, Canon also seems to have given the blog a lot more exposure online, resulting in a significant increase in traffic to the blog. Fake Chuck has already thanked Canon for the free promotion.

It isn’t surprising that Canon wanted to take the blog offline given the subjects that are often being discussed on the blog, namely the many issues with Canon’s recent products which I have also written about here. Their latest 21MP camera, the EOS 5D Mark II, got equiped with an AF system that seems to be seriously underperforming among other problems. Judging from the comments on the Fake Chuck blog, it’s everyone’s hope that Canon starts to acknowledge the problems and starts to deliver some quality products in the future.

Photographer Dan Heller is sending shockwaves around the Internet with his recent series of blog postings about the Creative Commons licensing model in relation to photography. Highly insightful reading material. Thinking about using a picture with a Creative Commons (CC) license? Thinking about putting up your own pictures online under a CC license? Be sure to read Dan Heller’s posts first.

Internet lawyer and European patent attorney Arnoud Engelfriet (blog) has a very interesting website called Ius Mentis where he has a wealth of information about law as it relates to technology. Everything is explained in a way that makes it very easy to understand, often including examples you can quickly relate to. It’s well worth checking out.