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GoPro Cameras Sent Me an Infringement Notice. Silly Bastards.

November 11, 2012 19 Comments
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GoPro camera being used underwater to photograph L. Scott Harrell and daughter Maddie in the pool.Have you received a Infringement Notice from GoPro, too? Tell me about it! Leave your comments at the bottom of this post.

Two days ago I received the following email from Woodman Labs, Inc. d/b/a GoPro (hereafter “GoPro”):

+++++++++++++++++++++++++++++++++++++++++++

from: brandprotection@ip-gopro.com
to: scottxxxxxx@gmail.com
date: Fri, Nov 9, 2012 at 10:18 AM
subject: Notice of Domain Infringement (goprodivemaster.com) [Case #173163]

To whom it may concern,

GoPro does not authorize any of its resellers (or anyone else) to use “GoPro” or “HERO” in domain names. [My emphasis] Your registration of goprodivemaster.com is unfortunately in direct violation of this policy. We understand that your intention is simply to sell and promote our products, but GoPro cannot risk misleading customers into believing that they are interacting directly with GoPro when they are engaging with your website or your organization. The use of our trademark terms in your business name may cause confusion, and is prohibited under international trademark law.

Even if the domain redirects to another site, this is not a permissible use of our brand terms.

Please understand: GoPro has spent years building its brand name—only the company itself is legally represented as “GoPro” or the manufacturer of the “HERO” line of cameras. We need you to kindly discontinue the use of our registered/trademarked name as soon as possible.

We thank you for your understanding and prompt attention to this matter.

Kind regards,
Patrick Hayes | GoPro | www.gopro.com
+1 (415) 738-2480 x7282
+1 (415) 814-5373 fax
phayes@gopro.com

+++++++++++++++++++++++++++++++++++++++++++

When I read that I was like, “WTFO?” (What the Fuck, Over?)

First off, it should be noted that I FULLY, 100%, BELIEVE IN and RECOGNIZE intellectual property rights and ownership; there have been numerous documented instances in which douche-bags have trampled on my own trademark and copyrights and I have taken each one of them to task and whooped some ass. As a private investigator of 18 years, I have investigated dozens upon dozens of intellectual property and trademark cases on behalf of others – this would hardly require a moment to even consider that this message is a bit misguided and overzealous in my opinion.

I was not offended by the email at first until I really started to think about it:

  • As a digital marketing guy, I LOVE the GoPro camera brand; they’ve reached the holy grail of social network marketing mastery- their community creates content for them and brand evangelists are straight-up COOL. I really respect the what they’ve done.
  • I own a couple of their HERO cameras, and a ton of their accessories, including the 3D set up. The cameras are very good for what they were originally designed to do and I rarely go scuba diving without a camera strapped to my head.
  • They sent a boilerplate email that assumes a great deal and appears that they did not even look at the GoPro Divemaster website. In the assumption that GoProDivemaster.com is anything at all about GoPro cameras, housings and accessories, there is almost a tone of arrogance in the above email. In fact, the website is currently parked with GoDaddy and has NOTHING at all to do with GoPro cameras.
  • GoPro Trademark Search and Brand Protection ShenanigansThere are at least 5 other live trademark registrations using the term “gopro” not related to cameras. Why did they assume that my site had anything to do at all with cameras and not “medical devices for measuring anatomic angles?”
  • If, in fact, GoPro does have a legitimate legal claim to the term “GoPro” then PADI, the Professional Association of Diving Intructors, has really screwed the pooch in advocating the GoPro designation as it relates to the PADI Instructor Development Centers (IDCs). There are literally hundreds of IDC website URLs using the same naming convention as my URL: GoPro[InsertLocationHere].com. I surveyed a dozen of these website owners and not a single one of them have received an infringement notice, so why mine?
  • I wonder if GoPro has plans for a specific camera housing or accessories using the Divemaster designation??? If so, why not just tell me that and I’ll trade them the domain name for a couple of sets of Hero 3′s and everything they make for them.
  • WHEN DID I EVER AGREE TO BE SUBJECT TO THEIR POLICIES???

goprodivemaster.com contains no references to GoPro cameras housings or accessories

While the email is cordial enough, I really hate feeling like I am being bullied and that is when ol’ El Scott gets fired up. I’d be lying if I didn’t say that this email has caused me to sour somewhat on my ownership of my GoPro cameras, especially when I thing that the SeaLife Cameras are waaaaaay more suited for underwater photography.

 Being curious, I looked up WHOIS information for the domain name ip-gopro.com, the domain from which the email address was received (brandprotection@ip-gopro.com). I found that the domain is associated with MarkMonitor, a brand protection service division of Thomson Reuters. Since I am certain that GoPro is paying MarkMonitor by the hour for some of these situations, I’ve decided to play a game with them at this point… let’s see just how patient and nice they will be with my never-ending requests for additional information and explanation of their “policy” as it somehow relates to me and GoProDivemaster.com.

One of several things could happen:

  1. They’ll threaten to sue me (good luck, I live in Central America).
  2. They’ll give up and ignore my replies and requests for further clarification and evidence at some point; the cost will not justify the end-results.
  3. They’ll apologize for the misunderstanding (unlikely).
  4. They’ll make an offer on the domain (I’m realistic and cheap – two Hero 3′s and every accessory they make for them will do it).
  5. They’ll take me to arbitration for domain name ownership, which will likely cause a MAJOR headache for PADI and the hundreds of other professional scuba diving instruction related GoPro domain owners. Not good for GoPro or PADI public relations in the diving community.
  6. El Scott Harrell Voodoo hexes are cast forthwith.

Seriously, none of that terribly concerns me; I have $12 invested in the domain name. It’s now about the point and certainly not about what I have to lose.

Taking everything into consideration, here is my reply to Patrick Hayes:

+++++++++++++++++++++++++++++++++++++++++++

from: L. Scott Harrell
to: brandprotection@ip-gopro.com
date: Sun, Nov 11, 2012 at 9:32 AM
subject: Re: Notice of Domain Infringement (goprodivemaster.com) [Case #173163]

Mr. Hayes,

Please provide a GREAT DEAL more information, along with exhibits, in support of your request, as it appears that you have not taken the time to even review what is (and has at all times since the domain name’s registration) displayed when visiting http://goprodivemaster.com and, instead, have chosen to send a boilerplate notice.

Upon receipt of same, via email, I will endeavor a more articulate reply that will address whatever concerns you might have as it relates to GoPro’s “policies” and the specific trademark (registration #3032989) on file with the USPTO as it relates to GoPro branded cameras and accessories.

Warmest Regards,

L. Scott Harrell

+++++++++++++++++++++++++++++++++++++++++++

In short, “You’re welcome, Mr. Hayes (or should I call you Pat?). Rest assured, you have my attention in this matter.”

This should be a bit of fun. I’ll keep you, Dear Reader, updated as this situation unfolds.

Have you received a Infringement Notice from GoPro, too? Tell me about it! Leave your comments below.

Notice: Any and all copyrights, trademarks and/or intellectual property that may or may not be included in this post belong to the respective owners of such intellectual property and are included to document and identify those individuals, companies, brands and marks as they are relevant to a specific set of factual events. This blog and its owner is in no way associated or a representative of said marks, except as might be explained in posts herein. LOL.

About the Author:

L. Scott Harrell is a high profile private investigator and online entrepreneur. This is his personal blog and opinions; they may not reflect those of his companies' management, employees or business partners. Posts may contain strong language and controversy.

Comments (19)

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  1. Dean says:

    An associate and I also received this very same email today about a website we’ve currently got in development. Would you mind updating me on the status of yours? We would rather not give up our domain or idea and are therefore interested in finding out what others are up to.

    I wouldn’t mind filling you in on more information discretely via email if you would like more information on our situation.

  2. Chris Wilden says:

    Hey it appears the guys from digitalrev.com also just got a letter from Patrick Hayes… for a review.

    http://www.digitalrev.com/article/gopro-hero-3-vs-sony/Njk3MDQ3MDg_A
    https://twitter.com/digitalrev

    Up until 20 minutes ago I respected GoPro… now not so much.

    -Chris

    • koferk says:

      internet power unit! we should end their business, these are different times we live in now-days, they cant do this an get away with it

  3. Man, I was thinking about getting some GoPros, now not so much.

    Frankly the whole incident is reminding me of the Ocean Marketing fiasco.

    Keep us up to date. This could be a SNAFU and some person running over their boundaries, or it could be something else. Either way somethings getting very sour about GoPro.

    • Barron,

      I thought I’ve come across MANY douche bags in my day – but this guy, Paul Christoforo, is at the VERY “tippy top” of Douche Mountain. Thanks for the link and some humor to boot!

      -Scott

  4. Maury Markowitz says:

    This is what can happen when you hire a 20th century company to handle a 21st century task, like internet brand management. And, more generally, what can happen when you hand your brand management to a 3rd party company, who doesn’t give a crap about your brand.

    A 21st century company would have buried the review, both directly and by posting their own “reviews” and false-flag pages. The review would have simply disappeared, except for the few people who read the site directly.

    Thomson Reuters, the very definition of an outdated 20th century media group, has apparently never heard of the “Streisand effect”. Instead they likely convinced GoPro that they would “take care of their brand” and then went about sending out these letters.

    They’ve done irreparable harm to the brand, but I suspect they don’t care because the billable hours are still there.

    GoPro shares some of this blame, of course, for hiring a company they should have known better to deal with, and likely not being clear on what actions they were going to take. If the *were* aware of this, then they deserve all of this fallout.

    While I’m here:

    “They’ll take me to arbitration for domain name ownership, which will likely cause a MAJOR headache for PADI”

    Now *that* is seriously naive. They can most definitely go after you and no one else. That’s how the system works.

    Of course I doubt that will happen. In fact, I suspect MarkMonitor’s services will shortly be severed, if this hasn’t happened already.

    • Naive… now I’ve not been called that in a few years. Hahaha. The point you failed to grasp is a contextual one, Maury. They could most certainly go after me, and me alone. I understand that and am prepared for the possibility; if I wasn’t would I be blogging about my experience? Or is *that* another act of naivety? I’ve got my big boy pants on and my belt is buckled up tight.

      The point is this:

      1. PADI is a HUGE organization with several thousand members (scuba instructors, divemasters and other professionals).
      2. These water enthusiasts are certainly one of Woodman Labs, Inc.’s main target consumers.
      3. PADI has been promoting and encouraging professional members to promote a “Go Pro” marketing campaign aimed at bringing more scuba instructors and divemasters into the business (drives revenue for PADI).
      4. As a result, hundreds of scuba-related “gopro” domains have been registered. Many websites have been built and marketed at great expense. Many member businesses undoubtedly rely solely upon their domain and website to drive revenue.

      Soooo….

      As *part* of my defense against any legal action against me or my goprodivemaster.com domain will be to point out the hundreds of the other scuba-related “gopro” domains that exist and are not being harassed; part of keeping intellectual property out of public domain is to protect that property against ALL infringers – not just one. Woodman Labs will then have to prove that they are diligently pursuing action against the rest of these domain holders, too.

      Can you imagine the backlash at that point? It won’t be against just Woodman Labs, it will also be against PADI for leading it’s members into building entire businesses upon a marketing campaign that was not vetted properly. Members will likely rail against PADI and also enjoin them in any resulting legal action.

      Hence… the headache.

      Beyond embroiling PADI in this dispute, the blow-back would spread out to several thousand scuba instructors who might then start using competing products and encouraging their students to do the same. I am a scuba instructor and my students tend to naturally gravitate towards the type of equipment I wear and use. I’m certainly not wearing my GoPro cameras with students any longer.

      I’m actually looking forward to the next legal notice I get from Woodman Labs, Inc., though I’ve not heard back from them since the second notice. I’ve never been involved in anti-SLAPP litigation but I hear it pays well and plays out terribly in the media. All of this over a domain I do not use, couldn’t really care less about and in which I have only invested $12. Why would I go this far, re-read the blog post.

      What you describe as “naive,” Maury, I would define as “strategy.”

      -Scott

  5. A says:

    I think your strategy is a good one. However, I think it might be worth considering dropping both GoPro and PADI a note at this point in time.

    Hayes, in addition to showing a laughable understanding of the entire DMCA, has gotten GoPro in a bit of a PR kerfuffle with this whole DigitalRev thing. I would suggest contacting someone else over at GoPro besides Hayes (maybe the PR director or something) and making a complaint. My guess is that any complaints about Hayes’ conduct will be treated VERY delicately, especially coming from someone who is blogging about the experience ;). You’d have a very good chance of someone higher up the chain making the entire thing go away. GoPro has a bit of a PR hole to climb out of, and dropping this complaint/apologizing to you can only help them mend their reputation.

    It that doesn’t work, you could tap PADI too. On the PADI site, they use the ℠ mark on their GoPro logo. This suggests that they may have applied for trademark already, but it has yet to be registered. PADI lawyers might be willing to write Mr. Hayes a note pointing out that he is essentially making claims about THEIR mark.

    And regardless, Cheers! Thanks for standing up to ridiculous legal demands and writing about the experience. I hope all ends well for you.

  6. Michael Giusto says:

    You’ve got gopro in the url, of course they are going to send you an infringement notice.

    Why don’t you go register iphonedivemaster.com or ipaddivemaster.com and get a large following that gets the sites up-ranked and let us know how it all works out.

    I’m against what GoPro did with the review site, but yours is a no brainer. You’re using their company name, not just the model (Hero3divemasters), Watch what Apple will do just using one of their brand names. You probably got off easy.

    • You obviously didn’t read my entire post, Michael. If you had, you’d understand the reason for the GoPro in the URL. You’d also understand that GoPro is a trademark registered to at least 5 other entities – many of them prior to Woodman Labs.

      Using your logic, you are also saying that no one can use the trademarked term “hero” in a URL as Woodman Labs asserts in their letter to me as well.

      It’s difficult to argue with folks with no basis in reality.

      -Scott

      • Michael Giusto says:

        Scott,

        I am not saying they are right, I am saying why they went after you. They have deeper pockets than you so of course they are going to flex that muscle and strong arm you. They will probably go after the others using the GoPro name in their url in due time if not already.

        Just looking at it from their point of view, regardless that your site currently has nothing to do with GoPro cameras, suppose one day they do something or release a product you (or the owner of any domain with GoPro in it) does not like, the website can all of a sudden change to something directly against their brand, they are being pro-active in gobbling up any domain out there that they feel could be a problem in the future, they’re just protecting their brand.

        Are they going about it the right way? Absolutely not, first course of action would have been to offer you some deal for you to sell the domain to them and if that failed, then unleash the lawyers.

        I was merely pointing out why you got the letter. Sorry if you misunderstood. My analogy of Apple was just to show what a company that most people throughout the world absolutely love would do if you even just used iPad or iPhone in your url, they would go thermo-nuclear on your ass. I am surprised GoPro mentions “Hero” in the document, they have no leg to stand on with that word, that is taking it way too far.

        Did you ever get any sort of reply?

        -Michael

  7. Samuel says:

    My case was different. I received similar email from ebay for using their as a part of my domain. Did anyone had the same issue? I read in other blogs that moving the hosting and domain servers to non US countries would help in this situation as they are not bounded by the so called ‘US Law’.

    Did you get any further reply from gopro?

  8. Lee says:

    May I suggest you google “righthaven”. and read and keep reading. IF a company without full ownership of trademarks sues… it will lose miserably. MarkMonitor is not Woodman Labs. DMCA must come from the company it’s self or a law firm hired representing them.
    May I suggest someone… anyone one trademark the names Hero4 Hero5 etc. (if Woodman Labs have not.) Payback is a bitch. Hero is a generic common word so Woodman labs can’t claim to own the word “hero” or numbers.

  9. Buddy Tucker says:

    I am a winner in one of their give-away promotions,and to start with I was liking their product till I kept reading what they had given me.Then what they had neglected to furnish,like a home charger a beginners chip, a 63 page manual. After compiling these up it worked out to almost the purchase price and since I have been PADI certified since the late seventies and commercially pro diving and as an instructor in the pro diving business along with pro EOD work my question is should I remove Pro from my vocabulary and pro law enforcement along with my pro electronics training and pro defensive driving school and since all these were before gopro cameras were a wet dream of their parents.I don’t even know what else I will need to get this piece of (equipment) to work.I don’t even have a computer,I borrowed this one to try to find the damn manual and other parts that will be needed to operate this (stuff).Can’t people just get along and quit arguing over who owns a damn word like YOU’RE FIRED?Jesus H Christ.You Go L. SCOTT HARRELL

  10. NullOp says:

    GoPro, like so many others, is following the “Patent Troll” model of brand management, i.e. threaten everyone, claim everything. I, like you, love the GoPro cameras. Wonderful devices, for sure! But this kind of thing is why I have permanently branded some hardware as 90%. Meaning, the company has been so loathsome in it’s practices they can now, at best, only achieve a 90% rating on anything they produce in my opinion. And people DO ask my opinion.

  11. It makes sense that this was their kneejerk reaction – there are rules in place to protect the brand. However, they should probably find a way to loosen their policy – they’re chasing off loyal and vocal enthusiasts by being so strict.

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