Surviving a DMCA Notice

In a series of previous posts, Casey discussed self-publishing his book BDKR1: The Unofficial Living Greyhawk Bandit Kingdoms Summary. In this follow-up, Casey discusses receiving a DMCA Notice against the book and how he successfully handled it. As Casey is not a lawyer, nothing in this article should be construed as legal advice. For more information on DMCA notices and the IP debate going on now in publishing, see yesterday’s post.

 Background

From 2003 to 2008, I served the RPGA® (formerly the Role Playing Game Association), a division of Wizards of the Coast (WotC), which is a subsidiary of Hasbro, Inc., as a volunteer administrator, editor, and writer for the Bandit Kingdoms region (serving Texas and Oklahoma RPGA members) for their Living Greyhawk campaign. Simply put, Living Greyhawk was the largest Dungeons & Dragons® campaign ever played—thousands of players all over the world played in the RPGA-organized/volunteer-run campaign that ran from 2000 to 2008. Shortly after the campaign concluded, I realized that the RPGA would not be archiving the material created for Living Greyhawk. With eight years’ worth of material from over thirty regions (my region alone had produced over 130 unique adventures), it was simply too much work with too little financial incentive for them to attempt. However, I decided that such an effort was important and so I began to work on such a project for my region.

Image Source: Amazon.com

As each adventure had averaged forty pages in length, I decided to briefly summarize them while providing behind-the-scenes commentary about how the campaign had been run. In essence, I created a post-campaign annotated catalog. Confident that doing so did not infringe upon anyone’s intellectual property rights, on April 16, 2012, I self-published BDKR1: The Unofficial Living Greyhawk Bandit Kingdoms Summary.

The DMCA Notice

On May 1, 2012, I received an email from CreateSpace’s Executive Customer Relations department informing me that Golenbock Eiseman Assor Bell & Peskoe LLP, a law firm that represents WotC, had sent a DMCA Notice against my book. As a result, CreateSpace immediately made my title unavailable for sale until the matter was resolved. It is interesting to note that I never received any such notice against the Kindle edition of my book; thus, it remained on sale.

I’m not a lawyer, but when I read the DMCA Notice, I immediately noticed that it included one major erroneous assumption. In it, my book was called “an unauthorized compilation of adventures.” Clearly, WotC had not read my book, as it would have seen that the book was not a compilation of adventures (that would have made the book roughly 5,240 pages in length!) but rather a summary of them. With this error—and the fact that the Kindle edition had not been targeted—in mind, I became cautiously optimistic that I could defeat the DMCA Notice.

However, some people were worried that I would have to hire an attorney—a cost which may have been higher than any expected royalties. One observer even went so far as to discuss my situation with an IP law professor (one who had neither read my book and who was not familiar with Living Greyhawk’s content); the professor advised him that I could face “tens of thousands [of dollars] in damages.” Obviously I had no desire to engage in a protracted and expensive legal battle with an international corporation over a book which I expected to sell a total of 100 copies, so I spent several days researching intellectual property laws. During that time, I became confident that I could defeat the DMCA Notice without hiring an attorney.

On May 4, 2012, I sent the law firm my reply. In it, I stressed my desire to resolve the matter amicably and attached a PDF proof copy of the book for their review. I then stated why I believed the DMCA Notice was erroneous: 1) my book was not a “compilation of adventures” but rather a summary of them; 2) WotC does not own the rights to the stories from the campaign (the authors do); 3) none of the characters or locations mentioned in the book were trademarked by WotC; 4) even if WotC did own any portion of the storylines mentioned in the book, my work was an academic summary and not a duplication or derivative work. I then advised the law firm that I would be happy to resolve any valid issues their client had before adding that if I did not hear back from them within a week, I would follow the DMCA Counter-Notice procedure.

On May 9, 2012, the law firm thanked me for sending the proof copy and advised that it had been sent, along with my arguments, to WotC for further review. They also advised that they hoped to get back with me later that week. I considered the tone of their reply to be a good sign; had they found legal faults within my arguments, I assumed that I would have likely been smacked with a response written in legalese.

On May 15, 2012, the law firm replied to me that WotC had reviewed my book and had decided to withdraw the DMCA Notice. On May 16, 2012, it notified CreateSpace of its client’s decision, and my book was reinstated for sale within two hours. I once again took my girlfriend out for a nice dinner to celebrate.

Conclusion

I was pleasantly surprised by the speed with which the law firm and WotC handled the matter. Being cynical, I had fully expected them to drag their feet and make my life miserable. So much of what we hear about lawyers is negative these days—it was nice to have a positive experience to tell people about (much like this guy had). I would like to thank WotC for how quickly and professionally this manner was handled.

I believe that there were three key factors which allowed for this legal dispute to be resolved so quickly and to my satisfaction: the amicable nature of my reply; sending a proof copy for it to review; and telling it of my willingness to quickly file a DMCA Counter-Notice. By mentioning the DMCA Counter-Notice, I let the law firm know that I was serious about defending my book from the DMCA Notice. I believe once the law firm read that, it probably had to advise its client that further pursuit of this matter wasn’t worth the billable hours it would require—especially once the firm had reviewed my book and realized that its DMCA Notice had contained an erroneous assumption. And I learned that, just because a law firm had sent the DMCA Notice, didn’t mean that the notice would hold up when disputed.