Disney being jerks about Fair Use (DMCA vs. a photo of an action figure)

[Grumman]

Disney drops—then doubles down on—DMCA claim over Star Wars figure pic

A Digital Millennium Copyright Act (DMCA) notice sent by the Walt Disney Company earlier this week seems to have truly awakened The Force, and now the company can't seem to decide if it wants to be on the light side or the dark side.

Marjorie and Arnie Carvalho run Star Wars Action News, a podcast about Star Wars collectibles. Earlier this week, SW Action News staffer Justin Kozisek purchased an action figure of "Rey" in an Iowa Walmart. The figure, which hasn't been seen elsewhere, was presumably put on the shelves by accident ahead of its official release date. An image of the figure was posted on the SW Action News Facebook page—and promptly subjected to a wave of DMCA takedown demands by Lucasfilm. Many of those who had spread the image on social media were also subject to copyright claims.

Marjorie Carvalho didn't just complain, though. She wrote a polite e-mail to the Disney company e-mail address listed in her DMCA notice, explaining exactly what happened. While Carvalho didn't get a direct reply, her message seemed to have worked. Last night her account got a late e-mail from Facebook stating that "The Walt Disney Company has retracted their intellectual property report."

"All we did was write a letter, and a few hours later, it was retracted," she said in an interview with Ars this morning, pleased with the result. "It pays to take the high road and get your facts in order, rather than overreacting. I feel good about it, and it's nice that they're recognizing they made a mistake."

So, is that a happy ending for Star Wars: The Copyright Awakens? Nope, there's one last twist. Not 10 minutes after getting off the phone today, Carvalho informed Ars that the image was taken down again. Disney sent an identical DMCA notice.

"For reasons we can't understand—Disney has now RESUBMITTED the claim, again removing the pictures (that they restored this morning)," she told her followers on Facebook.

This time, Facebook removed the entire post, not just the photo. It also administered a punishment to Kozisek, banning him from posting on the site for three days.

Images of the figure still abound elsewhere, for instance in this "pre-order" eBay listing. (Before searching or clicking on that link, note that some hard-core fans consider Rey's costume in this figure to have "spoiler" elements to it.)

Disney and Lucasfilm own the copyright to Star Wars action figures, and the companies may own rights to some photos taken of those figures. But a photo on a fan blog of a legally purchased product has an extremely strong claim to being “fair use,” according to EFF attorney Mitch Stolz.

So what’s going on here? One possibility is that at least someone at Disney was openminded about Carvalho’s thoughtful response, but the organization has a software-enabled copyright enforcement regime in place that they simply can’t stop. For fans dealing with images the company doesn’t like, the rule seems to be guilty until proven innocent.

Lucasfilm didn't respond to requests for comment yesterday. We've reached out to Disney and will update the story with any response we get.

TL;DR: Somebody bought a toy at Walmart, and posted a photo on Facebook. Disney sent Facebook a bunch of DMCA notices going after him and anyone who reposted it. Contacting Disney about their actions initially got them to back down, but then they sent more DMCA notices, getting him banned from Facebook for 3 days.

As should be obvious from the title, I'm siding with the Carvalhos. The copyright held by Disney and/or Hasbro for a toy should not extend to photographs of that toy. A photograph of the toy is not a substitute for the toy itself, and so it does not infringe upon the purpose for which Disney retains the exclusive rights to manufacture the toy. There is also a clear public interest in not allowing corporations to ban people from showing others the items they have purchased from that corporation. In this case the intention was merely to show off a new toy, but if the item was defective - a poor sculpt, perhaps - it would be bad for Disney to be permitted to issue DMCA takedowns against the general public to suppress that information.

[Elheru Aran]

It seems the real culprit here is the Walmart for putting a figure out earlier than it was supposed to, and Disney would be better served going after them for their fuck-up and privately contacting the people involved with offers to remove their pictures for wads of money.

[Grumman]

It seems the real culprit here is the Walmart for putting a figure out earlier than it was supposed to, and Disney would be better served going after them for their fuck-up and privately contacting the people involved with offers to remove their pictures for wads of money.

That would be reasonable. Walmart presumably signed a contract with their supplier that explicitly states that the product is not to be sold prior to the film's release date, and suing them for breach of that contract is fair. And offering the Carvalhos a contract paying them to take the photos down would also be fair, as long as Disney respected their right to refusal.

[Simon_Jester]

Disney has historically been very hypersensitive about their IP rights to their original (and not-so-original) characters.

This is not surprising, because their business model depends heavily on their ability to franchise and merchandise a relatively small number of clearly recognizable animated characters. If just anybody had started making knockoffs of, oh, Elsa from Frozen, enough to eat into their merchandising by a few percent... Well. They sold about a billion dollars worth of Frozen merchandise. Or more. A few percent of that is quite a lot of money.

And Star Wars is just about the only intellectual property of 2016 that could plausibly out-sell Frozen.

The problem, of course, is that to pursue this effectively they've set up an overzealous and overpowered system, to the extent that the DMCA does not really seem to offer recourse for frivolous takedown requests. At least, not by any means I'm aware of. It's the risk of Disney delivering the equivalent of frivolous lawsuits by demanding that people remove content which meets reasonable standards of fair use that worries me.

[Elheru Aran]

Disney doesn't care about bad PR on this level. They know they're big enough to squash a few small Facebook pages because 99.5% of their income base won't give a shit. They've also apparently been going after quite a few replica prop-makers who have been turning out stuff like the new movie stormtrooper armours, Kylo Ren masks, and what not (judging from chatter on the Replica Prop Forum). To be fair that has a little better footing as those designs are owned by Disney and licensed to only a few specific companies, but it's still a dick move.

In general fair use means nobody makes a profit, and therefore Disney shouldn't be hurt by their use of those props/designs/whatever, but still, they're being dicks about it even though nobody is threatening them. Fox and Firefly was one thing-- Firefly's fanbase is small enough that a few independent prop or costume makers could ding the merchandising income-- but Star Wars and Disney? No.

[Gaidin]

Disney is also a machine. If on some level someone says "Ok" someone somewhere else might not be aware of this, only aware of policy, and hilariously start the ball rolling again when they see it. It's a fairly big place. Who the hell knows which of these things people know are allowed, and aren't?

[Elheru Aran]

To be fair, Star Wars has historically been something of a special case. Until the property was purchased by Disney, it had quite a thriving cosplay and prop-making fan community with benign approval by Lucasfilm, up to and including large clubs like the 501st Legion and Mandalorian Mercs. That relationship is tentatively continuing, but it's starting to look like Disney may be putting the clamps on.

[Broomstick]

It seems the real culprit here is the Walmart for putting a figure out earlier than it was supposed to, and Disney would be better served going after them for their fuck-up and privately contacting the people involved with offers to remove their pictures for wads of money.

In other words, you support firing the corporate peon who physically put the figure on the shelf either by mistake, or because a supervisor/manager told them to do so. Because that's how "going after Wal-mart" will play out based on what I know about retail operations.

This very much could have been a mistake - this time of year literal tons of merchandise flows daily through the back rooms of a big box store. The box could have been mis-labled, or placed by mistake on a pallet scheduled to be put out on a particular day. The fact this occurred in just one store makes me strongly suspect it's just a mistake.

[Elheru Aran]

It seems the real culprit here is the Walmart for putting a figure out earlier than it was supposed to, and Disney would be better served going after them for their fuck-up and privately contacting the people involved with offers to remove their pictures for wads of money.

In other words, you support firing the corporate peon who physically put the figure on the shelf either by mistake, or because a supervisor/manager told them to do so. Because that's how "going after Wal-mart" will play out based on what I know about retail operations.

This very much could have been a mistake - this time of year literal tons of merchandise flows daily through the back rooms of a big box store. The box could have been mis-labled, or placed by mistake on a pallet scheduled to be put out on a particular day. The fact this occurred in just one store makes me strongly suspect it's just a mistake.

Oh, I'm quite aware of that. I'm a corporate peon myself and I could see it happening to me. I would not advocate firing anybody though, a settlement would be adequate IMO.

Thing is, the real dick here is Disney. The fans didn't do anything wrong by taking photos of the merchandise and posting it online; they were under no contracts and no obligation to refrain from such an action. The corporate peons involved had a fuck-up somewhere along the line; I'm inclined to think that they were just putting toys on the shelves and someone in the chain didn't read the label/didn't label the box correctly/whatever. Disney could have shrugged it off and let it pass, as revealing a new toy isn't going to do much for their bottom line unless there's some serious quality issue like a figure of Rey having the wrong paint job or something. They already have probably millions invested in this, and what would some free publicity cost?

So, yeah, Disney is just using corporate strong-arm tactics here. I would not be surprised if they ease up on this in short order once the movie's out as their biggest concern is plain ol' profit.