Evan Schuman's StorefrontBacktalk

Attorney Mark D. Rasch is the former head of the U.S. Justice Department’s computer crime unit and today is a lawyer in Bethesda, Md., specializing in privacy and security law.

Part of any retailer’s effective brand protection strategy has to include an “Open Source Monitoring” program – you know, monitoring social media and webpages for anything that could impact your good name, from defamatory comments about your CEO to photographs of employees taking a bath in the sink. If defamatory or other materials are found, an affected retailer’s recourse is usually to either negotiate for the defamatory materials to be taken down by the poster or hoster (usually under Terms of Service) or sue to get a court to order that the materials be removed. But a recent lawsuit filed in Massachusetts introduces a novel way to get defamatory materials removed – copyright law.

There are lots of “bad things” people can do to impact a brand online. They say nasty things about a product, service, or brand. Some of these are protected speech and mere opinion (e.g., Pizza Hut pizzas taste like cardboard or the service at Denny’s is slow) and some may be defamatory because it is both false and not protected opinion. While courts typically give wide latitude to protected speech, a false claim for example to have found a finger in a Wendy’s Chili (or worse, a true claim when you put the finger there) can give rise to litigation.

Other bad things people can do online include trademark infringement or dilution (e.g., putting up a website advertising Veeagra), trade secret violations (publishing the secret formula for Coke Zero), and copyright infringement. Each of these “bad acts” invokes a separate body of law with a separate set of remedies. For example, Section 230 of the Communications Decency Act gives retailers broad immunity for things other people post on their website, providing “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” So if someone posts something defamatory about your company or personnel on a website, the CDA immunizes the website operator from liability even if they refuse to take the defamatory materials down.

But copyright law is different. Under the takedown provisions of the Digital Millennium Copyright Act (DMCA), if you suspect that materials being hosted by an Online Service Provider (including an ISP) violates a copyright, you can notify them of the infringement, and they must either remove the infringing materials, get an assurance from whomever posted them that they do not infringe, or face liability themselves for copyright infringement.

Got it?

If the materials are defamatory, the ISP has no liability. If infringing, they must take it down or they do have liability. So copyright infringement allegations are much easier for the retailer to take care of. Why? Because copyright holders (e.g., movie and record companies, software vendors and others) have more powerful lobbyists than people who might be defamed, probably.

Therefore, is there an easy way to turn a Defamation into an Infringement? If somebody says something defamatory (or otherwise actionable) against you, and the website refuses to take it down, how can you use copyright law to remove it? This was the problem faced by Boston Attorney Richard Goren. An Arizona entity called XCentric Ventures runs a website called “Ripoff Report” where they invite people to post dirt about people, companies or anything. Needless to say, with a name like “Ripoff Report,” it is unlikely that the materials posted will be complimentary to the subjects. The problem is, relying at least in part on Section 230 of the Communications Decency Act, XCentric refuses to remove any posted content no matter what. It is up there permanently. Well, not exactly “no matter what,” according to both the lawsuit and published reports. XCentric will remove these materials as part of the “Corporate Advocacy Program.” In other words, if you don’t want to be defamed, you have to pay them.

This is similar to problems many retailers face with entities like Yelp, Angie’s List, or other consumer rating services. It is almost impossible to get bad reviews removed, even if the reviews are false and defamatory.