Tim Lince

Popular video game critic Jim Sterling has sparked a fierce online debate about how companies allegedly abuse IP-reporting tools on YouTube to censor criticism. This follows developer STICLI Games filing a trademark takedown request on a video critical of one of its games, basing its grievance solely on a stipulation in its strict end user licence agreement.

Sterling uploaded a video to YouTube on February 25 which is ostensibly a critique of a newly-released game titled Airport Master. In his analysis, which features gameplay footage and Sterling’s audio commentary, he was critical of a number of perceived design flaws and pointed out a number of missing and unfinished game elements. Less than two weeks later, on March 6, Sterling informed his audience that he had received an IP infringement notice submitted by developer STICLI Games. Notably, STICLI Games claimed the video had violated its trademark rights rather than using the more common copyright (DMCA) takedown route.

The notification itself (screenshot) is curious due to its reliance on an end user agreement (EULA) rather than claims of specific trademark rights, registered or otherwise (there do not appear to be any “Airport Master” trademarks in the United States or Europe). In the ‘Registration number’ part of the reporting form, meant for the registration number of a trademark application, STICLI simply entered the web address to its own EULA. In the description explaining the action, STICLI claimed that any user that purchases, installs and runs Airport Master is prompted to read its EULA so must comply with all of its stipulations. One is that any user that subsequently creates video content using any aspect of the game must do so with “prior written permission from us”.

The specific wording in the EULA (which can be accessed on gaming marketplace Steam here), under section 4 and entitled ‘Trademarks and Rights to the Software’, reads: “Any use of Copyright Holder's trademarks, imagery content, videos, graphical elements, names, plot in any activity (including but not limited to: producing [third] party video content, electronic and on-paper publishing, creation of promotional content etc) is only possible with prior written permission of Copyright Holder.”

In his video, Sterling addressed section 4 of the EULA by saying that it “constantly refers to STICLI as the copyright holder, and doesn’t explain how third party video game content and the need to acquire written permission from STICLI to criticise [its] video game pertains to trademarks”, adding that it appears STICLI Games has “attempted to circumvent copyright systems by going through the trademark route, regardless of how little sense it makes in this particular issue – this literally is not a trademark dispute”.

He also discovered that STICLI Games had acknowledged the original video only five hours before filing the trademark infringement notice, and shortly afterwards had posted an announcement clarifying that anyone making a video about Airport Master “MUST obtain prior written permission from us before uploading any videos to YouTube” (incidentally, another critic has since attempted to receive written permission from STICLI but has so far failed to do so). In a further email from STICLI Games to Sterling (screenshot), it suggested the original video could be taken down and then re-uploaded if permission was granted. Reflecting on the affair, Sterling concluded: “It looks to me like they’re another set of fragile egos who didn’t like the mean old critic saying naughty things about their precious little darling and decided the only sensible way of dealing with it was to hide crying behind dubious legal gibberish.”

So far, the original Airport Master video remains online. Nonetheless, Sterling’s video on the attempted takedown – which has garnered 435,000 views to date – has spurred a heated debate on YouTube and on social media. Copyright attorney Leonard French posted a video which added further legal insight into the dispute. He clarified that, due to STICLI’s reliance on an end user licence agreement rather than trademark rights, this was more a case of contract law rather than intellectual property law. “Contracts of adhesion [those that are placed onto a confirmation page or pre-confirmation page of a purchase screen] that contain clauses like this will usually have that clause strickened if it's challenged in court, or at least it will be modified by the court to something much more appropriate,” he explained. “In a case like this, where a game developer who has specifically asserted their trademark rights and contract rights in order to stifle a critic from making a critical video using their in-game footage, that’s probably going to get thrown out of court – that’s what I’d call misuse of an EULA.”

However, despite this appearing to be a one-off example of a developer’s EULA use, French says there does appear to be a gap in legal precedent for these types of incidents. “Right now, I’ve found very little case law on using trademarks to silence online criticism,” he said. “How do you fix this? Aside from Congress changing the law to make it easier for people who are victims of this kind of thing to sue, or make a separate cause of action that has its own set of penalties for misusing a copyright or trademark, someone has to go to court and set these precedents, but someone has to pay for that. The best I could come up with is some kind of insurance policy – I don’t know if Google would sponsor something like that – wherein if you follow a set of guidelines and principles, Google would support you up to, say, $100,000 in a copyright or trademark takedown dispute. [...] But I don’t think Google wants to be in that business – I think it wanted to host videos and make money from the ads on those videos, but now it’s getting very complicated for them.”

We contacted STICLI Games for their perspective, but have received no response. In the meantime, Sterling, who has personally been embroiled in numerous takedown disputes in recent years, now wants to highlight the issue to YouTube itself. In tweets posted on Tuesday, he confirmed he is gathering information to show both YouTube and Valve (the operator of game marketplace Steam) in a bid to evidence companies that have misused takedown reports. “Cure the disease, not the symptom,” he states. “They will listen. One of them already is. This [will] get fixed even if pushing for it becomes another full time job.”

For rights holders, this is a development worth following. While it may appear to be just one video game developer being criticised for its IP takedown strategy, if Sterling is successful in pushing for change then it may affect enforcement efforts on YouTube for all brand owners. Furthermore, as we’ve written before, high-profile instances of IP enforcement overreach can harm the public perception of IP protection. In those cases, the trademark community should consider speaking out against those that file questionable or dubious claims.

Update: Two days after the publication of this article, Sterling confirmed that YouTube will not be removing the original Airport Master video following the trademark infringement notice filed by STICLI Games.

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RE: “Cure the disease, not the symptom” – prominent critic calls for improved YouTube takedown process following questionable trademark claim

Open IP, Open IP Open IP, Open IP Open IP, Open IP Open IP, Open IP!!!

Make it default if it seeks a revenue flow to pay for its distribution or to make a profit then a 30% cut of profit after 30K in revenue a year goes to the IP owners. They get a cut of internet revenue and anything under 30k a year in revenue is treated as fair use or too small to police. When it this 5-10M in revenue take 60% of revenue as a way to get a bit of control over worthwhile endeavors so licenses will be almost mandatory on the top end of the IP spectrum. Fair use will not go anywhere however if it remains vague I see no other way to protect the people from an abusive system than exempt revenue up to 30-40K a year. Also just to be clear revenue is anything that’s not out of your pocket, YOU can spend 100K a year out of your own pocket from money that dose not come from the site/distribution point or donations, gifts,ect however if the site/distribution point has ads/donations/items for sale ,ect and they go over 30-40K then that counts. Either it’s completely funded out of pocket free of you gaining funds/gifts off its fame/infamy or items or its part of the system paying into the pot. I say this because there are many education and science related archives and information that can be freely distributed by groups of teachers or scientists who can work together and pay into a private pool of funds that goes directly to the site/distribution point.

Further balance the system with a 5% tax on internet connection services and 5% on digital hardware, this pays for the system to log and track IP ownership and the percentage of use various IPs have within other IPs.

Finish off balancing with giving heavily used but lesser profitable IP's a larger payout than in proportion to larger more profitable IPs.

The small fish is always going to get screwed but if we had 3 or 10 times as many publishers that are leaner and more willing to make deals to get revenue flowing then they would be more focused on quality support for smaller and medium fishes as they do for the big fishes.

Our current system promotes scarcity, cloning and exclusivity to place a lock on the market so the executives and investors can make more money via artificial means which is counterproductive in the age of sending data at the speed of light across the world, if everyone has the potential to become a creator or vendor and we tap into the revenue flow then then everyone will at some point create, consume or sale that’s where the money is not the exclusive minded zombie Jesus dinosaur business model…..

PS: Now excuse me I need to take my meds…. LOL

PSS: TL:DR I fail…..

Lee Jarvis, on 10 Mar 2017 @ 18:01

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