Desktop Nexus Blog

I’m sure a number of you remember our run-in with Toyota a few months back. Well in the past few weeks we’ve hit another gray area with a different company regarding DMCA.

On Desktop Nexus, we respond to each and every DMCA Takedown Notice with prompt attention and expedience, and we usually end up removing about 3-4 wallpapers per week. We’ve even gone as far as developing an image blacklisting system to prevent copyrighted wallpapers from being reuploaded after they’re taken down for DMCA violations.

On April 13th 2009, we received formal notice requesting the removal of a Monster Energy Drink wallpaper, sent to us by Continental Enterprises representing Hansen Beverage Company. I’ve included the full email conversation after the break. It was a little vague, not specifically citing that they were requesting the deletion under DMCA. I was curious if this was another large corporation scare tactic, so I sent them a response, asking for clarification on what precise actions they’d like me to take.

I never got a response, and a few more weeks went by. On April 30th 2009, we received a “Second Correspondence”, which claimed they had not gotten any response from me, and boldly stated:

If you do not take immediate steps to resolve this issue, [Hansen Beverage Company] will be forced to take more aggressive action to protect their intellectual property rights.

which I took to be a threat of potential legal action. They also requested three additional wallpapers be deleted as well. Reviewing their previous correspondence, I made the decision to go ahead and remove the wallpapers, as the incident is very gray and I do want to keep Desktop Nexus on the legal side of the fence. Plus we can’t exactly afford a lawsuit right now, heh.

But then a week later, I unexpectedly received a reply to the email I sent back on April 13th requesting clarification. It simply said:

Thank you for your email. In response to your question, we would like you to understand we are asserting a trademark claim, not a copyright claim. Therefore, we cannot allow you to use the Hansen/Monster Energy trademarks.

They are asserting a trademark claim? They also said very clearly this was not a copyright claim. I suddenly regretted deleting those wallpapers, because I have a feeling what they’re doing is illegal. I did a little research on Continental Enterprises and turned up a number of horror stories involving their operation. To quote tabberone.com:

In our opinion, Continental Enterprises qualifies as the personification of a Trademark Extortionist. This Indianapolis-based company has taken trademark extortion to a new level.

They even went as far as filing a trademark infringement lawsuit against Tippman Sports a few days ago.

Desktop Nexus has over 600 new wallpapers being uploaded every day, making it impractical for us to manually moderate all the uploads. For this reason, sites like ours are protected under DMCA law, which requires us to take down content that violates copyrights in the event the copyright holder (or authorized agent) contacts us and makes a formal request. No problem. This however, is not a copyright issue. Continental Enterprises clearly stated they were not making a copyright claim. So I ask, does DMCA cover trademark issues as well, or are they trying to bully a smaller company into yielding to their whims? Did they have legal grounds to request we remove the wallpapers, and if so, did they approach it in a proper, legal way? Do we have any recourse in a situation like this? I want to remain legal in all of our actions of course, however I also feel large companies who abuse the legal system should be called out and have their ways exposed.

What do you guys think? (continue reading…)