“Cure the disease, not the symptom” – prominent critic calls for improved YouTube takedown process following questionable trademark claim 10 Mar 17
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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