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?

—————
Here is the email conversation I had with Continental Enterprises:
The first PDF letter I received from them over email (April 13th, 2009):

First Correspondence (Page 1/2)

First Correspondence (Page 2/2)

And I replied with this simple message (April 13th, 2009):

Continental Enterprises,

We follow the law strictly and do not want to infringe on any copyrights or trademarks. We operate our website in accordance with the DMCA- if you are planning on filing a DMCA Takedown Notice with us, I’ll require you to submit all the proper information required by law under DMCA. Dealing with any form of copyright claim, we want to ensure every action taken is both legal and documented. If you are not filing a DMCA Takedown Notice, what actions are you requesting, and how might I accommodate?

Best regards,

–
Harry R. Maugans III
(404) 213-8616
Maugans Corp.
www.desktopnexus.com
Join the wallpaper revolution!

Then weeks later I received this “Second Correspondence” (April 30th, 2009):

Second Correspondence (Page 1/1)

And today (finally) their response to my original question:

Mr. Maugans,

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.

Related posts:

1. The Power of the Internet: Toyota DMCA Issue One of the primary reasons we’ve finally gotten around to...

This is an incredibly powerful example of how brands can either flourish or crash-and-burn when an event goes viral on the internet.  In this case, Toyota put us in a difficult situation: forcing us to decide between possible (expensive) legal action or disregarding the rights of our members.  I have no doubt that other sites were contacted with the same strong-arm tactics as us, however I couldn’t in good conscious delete wallpapers to which I wasn’t sure Toyota held the copyright.  I was very clear in saying that I do not want to violate any copyrights, and if Toyota provided accurate DMCA Takedown Notices, I would be happy to immediately delete any images that might be in violation.  At one point, I even went as far as offering Garrett Biggs (at Toyota) a form template for DMCA Takedown Notices, where he would just have to fill in the blanks and send it back to me.  I never received it back, but was instead presented with more removal demands.

After long discussions and feeling I was getting no where with Mr. Biggs, I finally decided to email a few blogs who might be interested in this DMCA butchering story.  Specifically, Conley at Free Culture News took interest in our story and contacted a few friends (namely Ben at TorrentFreak) who ended up getting this snowball rolling.

After this started spreading around, I followed the story and started reading all the comments that came flooding in.  I was amazed by how this backfired on Toyota, and how much negativity was being thrown around.  As I said earlier, viral events can be a PR nightmare for a company… especially one like Toyota who invests to much into preserving their brand name.  I decided to collect a few of the most amusing, extreme, or interesting comments that I found scattered around the web on this topic.  Now, for your enjoyment, here they are after the break:

Just heard about Toyota. It is an unfortunate situation. Please tell them to kiss your asses, as far as I can tell you have not been served a proper DMCA complaint. If provided with the opportunity to express how many customers Totyota has lost over this please count me. Love the pics, I hope I will be able to view them anytime, now, and in the future.
- Dennis on DesktopNexus.com

Dear Toyota,
Good going. Now I will be sure NOT to even look at buying any of your vehicles. Congrats, you just lost yourself money and sent it right to your other competitors. Instead of wasting time with bogus law suits, take the time instead to shoot your lawyers or better yet, give the crash-test dummies a break and use the lawyers instead.
- ha on Techdirt.com

I read of your DMCA demand from Toyota. I am a geeky attorney in Minneapolis – if you want to talk (my dime) about this absurd/abusive move by Toyota (and yes, I AM a Toyota owner), call me at (omitted) and I can try to give you some ideas.
- Chris on DesktopNexus.com

Toyota: Call this off now before people call for boycotts on your products (which you definitely do not want in this economy).
- Rob on Geek.com

I don’t see the problem here…a simple solution is to avoid buying a Toyota, Scion or Lexus….ever.

That’ll send a clear message.- redbinary on digg.com

For the same reason I’ll never buy another Metallica CD, I will never buy a Toyota.
- j1ggy on digg.com

…the lawyers at Toyota really need to learn a hard lesson about alienating consumers and I’ll never buy Toyota again.
- Random Gemini at jolieve.polestar.org

Just another “I’m a huge company and I can do whatever I please”.

Fuck you Toyota.
- stealthspc on digg.com

Toyota needs to put down the glass pipe, stop buying the vial of little rocks and THINK before pointing a PR gun at their head and pulling the trigger. If they stick to this stupidity I will never buy another Toyota EVER. It shows an absolute disreguard for logic and intelligence. It is only a matter of time before they pull a GM.
- Jeremy D Great at tundraheadquarters.com

Fan loyalty is being punished here. Hello, Toyota, these are the people who buy your cars…
- apexracing on digg.com

I decided to go to Toyota’s website, get their contact mailing address and send them a letter telling them that I decided to go with another automotive company for all of my current and future vehicle needs.
- Jim in Arizona on freeculturenews.com

Toyota has been getting more and more out of touch. Time to buy a Honda.
- Shoutwire2007 on reddit.com

Toyota is guilty of extortion.

Demanding that the owner of DesktopNexus pay money for Toyota to identify the infringing images constitutes extortion. The owner of DesktopNexus really needs to file a complaint with the FBI for this; I am filled with glee at the idea of Toyota (the worst car company in the world) being charged with a federal crime.
- singularityv on digg.com

It sounds to me like an Apple story, only for motoring, that is full of shit and full of advertising company that creates image of being cool, reliable, the best you can have, but on the other hand stomps on a little man.

Good thing, that I don’t own, and never will own a Toyota vehicle
- h377r1d3r on digg.com

Right, great business strategy.

“Somebody likes our products…. sue them!!”
- BinaryFragger on digg.com

Toyota…following in the footsteps of Sony.

How to alienate your loyal customers, and help Korea kick the shit out of Japan’s Ass…

I went from VW unreliability, to Toyota boredom, and now considering Honda drivability.

I was helping someone buy a car earlier this year, and if you test drive a new Corolla, and then try a Civic, it really, really, really hard to go back to the Corolla, even if its cheaper. It drives like a cheap POS Ford.

I think even modern Fords drive better.

Sad, what they’ve done.

I don’t buy Sony anymore, looks like Toyota is next…
- wewewawa on reddit.com

I think toyota decided to shoot itself in the foot here. I hope the lawyer gets fired for being such a n00b.
- Rogem002 on digg.com

These corporate giants need to stop being so stingy and realize that this is helping them more than it is hurting. Nothing like free advertising/brand awareness.
- Cobracommander on digg.com

I can’t believe companies STILL try to stop free advertising on the internet… but then again, maybe they realize the backlash and figure any mention is a good mention, even if it’s “toyota sux dont buy toyota they want to censor my desktopz”?
- asaturn on Jalopnik.com

Toyota has dropped its drawers and bent over.
- Elhigh on Jalopnik.com

Looking for a career change, Zero was transferred from the APR department of the financing division to the common sense department of the legal division.
- smalleyxb122 on Jalopnik.com

I have a sweet Camry desktop, and I’m not taking it down.
Gold/ tan paint. 16″ rims, sweet fabric seats…
- MZR on Jalopnik.com

Toyota sounds more like Microsoft every day. Maybe they have the same lawyers.
- Dollarbill4 on Jalopnik.com

*sniffs* what’s that burning smell?
Ah yes… it’s the smell of someone at Toyota getting fired.
- HClay at Jalopnik.com

The DMCA provided a safe harbor for providers (such as a web site that posts/hosts user provided content) in exchange for cooperation under a takedown procedure. The provider is protected against liability both from the copyright owner and also from the user if the procedure if followed. If the takedown is inappropriate, the party requesting the takedown assumes the liability.

What Toyota is doing is making a “request” outside the scope of DMCA safe harbor. The provider gains no protection if they choose to take down user content. And Toyota is not liable, either, because they didn’t specifically identify any content to take down.

I believe Toyota’s action is an attempt to shift liability from themselves to the provider. To me, that supports the idea that there really is no copyright infringement taking place when an owner of a car takes a picture of their own car and posts it online. That may be different in some cases where the photo zooms in on decals and such. Having not seen the pictures, I’d bet there are some very questionable pictures the Toyota lawyers know they cannot defend against a counterclaim by the owner who posted the picture. So they are using this method to get the provider to take all the risks.
- Skaperen at TechDirt.com

Some d-bag lawyer at Boeing in the 1990s tried whining about pics of the 747 being used in posters and what not, and claimed that they had a royalty…the difference was, management remembered that they’re in the business of selling $190 million aircraft, not licensing out photos for $35, and they fired the lawyer and marked him as permanently ineligible for rehire.
- RedwoodFlyer at Jalopnik.com

Wow, I expect better from Toyota. They’re getting FREE advertising from a 3rd party, the guy isn’t making serious profit off of their logo, and they’re threatening him. wtf
- SJRNWT at Jalopnik.com

Even if the wallpapers were official and belonged to Toyota, you’ve got to wonder at the business sense in trying to limit their circulation. Wouldn’t it to be better to spread them as far as possible? Its all free promotion.
Overly-protective IP lawyers seems to be a growing problem.
- SteveD at TechDirt.com

And so it continues.  The internet is a very powerful medium for brand awareness, and if the Toyota name is tarnished for all these people because of something one of their IP lawyers tried to pull… wouldn’t it have just been cheaper to just do what Ford did, and buy the rights to all the photos (that they allegedly they own) and publish them to the public domain?

Either way, I want to publicly express my appreciation to everyone who’s pledged their support to our site.  We’re a very small company looking up at the behemouth legal team of a multibillion dollar company, holding our breath, and hoping laws of our country will stand to support us and our members.  Thanks guys!

Related posts:

1. DMCA Trademark Claim? I’m sure a number of you remember our run-in...