8 August 2018
88 Colin P. Kelly Jr. Street
San Francisco, California 9410 7
Re: DMCA Counter Notice for:
Dear Sir or Madam:
This law firm represents [private], the recipient of Intersection’s takedown notice dated 3 August 2018 for the above-referenced repository (the “[private] Repository”). I write to provide a counter notice pursuant to section 512(g)(3) of the Digital Millennium Copyright Act (“DMCA”) and request GitHub restore the contents of the [private] Repository. 17 U.S.C. §512(g)(3).
We submit that the DMCA takedown notice for the [private] Repository was not made in good faith and was not made upon a proper investigation for, among others, the following reasons:
First, Intersection’s takedown notice falsely states that the [private] Repository is “a private, proprietary, and internal web application.” Intersection fails to note, however, that the source code within the [private] Repository was contained in a public repository on GitHub. Section D(5) of the GitHub Terms of Service plainly states that “[b]y setting your repositories to be viewed publicly, you agree to allow others to view and ‘fork’ your repositories (this means that others may make their own copies of Content from your repositories in repositories they control).”
Further, section D(5) of the GitHub Terms of Service goes on to state that “[i]f you set your pages and repositories to be viewed publicly, you grant each User of GitHub a nonexclusive, worldwide license to use, display, and perform Your Content through the GitHub Service and to reproduce Your Content solely on GitHub as permitted through GitHub's functionality (for example, through forking).” Further still, GitHub’s Terms of Service explicitly note that “licenses you grant to [GitHub] will end when you remove Your Content from our servers, unless other Users have forked it.” Our client forked Intersection’s public repository on or about 5 May 2018 and thereby created the [private] Repository that same day.
Even a preliminary investigation into the [private] Repository and how it came into being on GitHub would have revealed that Intersection itself made the source code within the [private] Repository available in a public repository accessible to the GitHub community. By doing so, Intersection granted to our client – and indeed to all GitHub users – license to use the source code in any manner set forth within the Terms of Service. This reason is sufficient in and of itself to restore the contents of the [private] Repository and indicates the notice was not submitted in good faith.
Second, according to Section B of GitHub’s DMCA Takedown Policy, “[o]ne of the best features of GitHub is the ability for users to ‘fork’ one another's repositories . . . [which] means that users can make a copy of a project on GitHub into their own repositories.” Going further, the DMCA Takedown Policy maintains that “GitHub will not disable forks . . . because forks belong to different users, may have been altered in significant ways, and may be licensed or used in a different way that is protected by the fair-use doctrine.” GitHub DMCA Takedown Policy, § B (emphasis in original). The [private] Repository was itself a fork of Intersection’s parent repository (which indicates that the Intersection parent repository was public) and therefore should not be subject to removal regardless of whether Intersection has removed its previously public parent repository.
Moreover, section B of the DMCA Takedown Policy explicitly states that GitHub does not conduct investigations into forked repositories and that GitHub “expect[s] copyright owners to conduct that investigation and, if they believe that the forks are infringing, expressly include forks in their takedown notice.” Intersection failed to either conduct this investigation or conveniently omitted the dispositive fact that the [private] Repository was a fork of a public Intersection repository.
Third, e-mail communications and in-person meetings between employees of Intersection, its affiliates, and our client all indicate knowledge of the fact that Intersection’s creation of a public repository and our client’s fork of that repository permitted the copying and use of the source code at issue. Indeed, employees of Intersection and its affiliates requested several times that our client voluntarily remove the [private] Repository.
Our client refused to do so because of public interest and privacy concerns that he identified within the source code of the [private] Repository. When faced with clear legal rights to the [private] Repository, Intersection appears to have resorted to its ill-conceived and factually inaccurate DMCA takedown notice, which we counter notice by this submission.
Please note that nothing contained in or omitted from this letter is or shall be deemed a waiver or limitation of any of our client’s rights or remedies, equitable or otherwise, all of which are specifically reserved, including the pursuit of damages and attorneys’ fees as a result of material misrepresentations made to cause the removal of non-infringing content. See 17 U.S.C. § 512(f).
I have read and understand GitHub's Guide to Filing a DMCA Counter Notice. I swear, under penalty of perjury, that I have a good-faith belief that the material was removed or disabled as a result of a mistake or misidentification of the material to be removed or disabled. I consent to jurisdiction of the federal district court for Southern District of New York, and will accept service of process from the person who provided the DMCA notification or an agent of such person.
[private], Blackstone Law Group LLP
1201 Broadway, 9th Floor
New York, New York 10001
[private] / [private]
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