13 KiB
Dear Github Staff
Counter Notice to DCMA Takedown Notice
I am [Private] of Instinct Limited and am responding to your DCMA Takedown Notice email below. Instinct Limited is a company incorporated in New Zealand and is based in Wellington, New Zealand. This email is a Counter Notice as referred to in Github's Guide to Submitting a DMCA Counter Notice. I refer to Github's requirements for a Counter Notice by reference to the numbered requirements in that Guide (under the heading "Your Counter Notice must...").
1. Github Guide to Filing a DCMA Counter Notice
I have read and understand GitHub's Guide to Filing a DMCA Counter Notice.
2. Content that Github proposes to disable
The content in respect of which Github proposes to take action, as identified in the takedown notice, is as follows:
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
3. Contact information
My contact details are as follows:
[Private]
4. Statement and reasons why disabling repository, by reference to identified commits, would be mistaken
For the reasons set out below, I swear, under penalty of perjury, that I have a good-faith belief that it would be a mistake for Github to remove or disable the commits identified above.
Summary of legal response
I explain the legal position in more detail below, but the key points are these:
- Instinct takes this matter particularly seriously, not only because [Private]'s claims are unfounded but because any disabling of Instinct's Github repository could have a significantly deleterious effect on Instinct's business.
- Instinct owns the copyright in the code in question and is not breaching any other party's copyright in using the code and submitting it to GitHub.
- It follows that GitHub likewise cannot be held responsible for copyright infringement by hosting the code because it is authorised to do so by the true copyright owner, Instinct.
- In our view, [Private]'s notice to Github should be treated as a false takedown notice.
In these circumstances, we request that Github please not disable the repository in question. I am happy to answer any further questions you may have and to cooperate with you on this matter to the fullest extent possible.
I now explain the legal position in more detail to enable you to better understand the legal conclusions above.
Contract for services
The code in question was developed by [Private] for Instinct under a contract for services that was formed between [Private] and Instinct. That contract for services is the outcome of a series of communications between [Private] and Instinct under which [Private] agreed to develop certain code for Instinct within a particular timeframe. The contract for services is properly seen as being governed by New Zealand law.
[Private] failed to meet his contractual obligations to Instinct in that he did not complete the agreed coding work in the agreed timeframe (and that, in turn, required Instinct to complete the work itself). [Private]'s breach of contract meant that he did not receive all payments he might otherwise have expected. Instinct offered Mr X a specific payment for the incomplete work he had carried out, despite Mr X having failed to meet his obligations, but Mr X refused to accept it.
Copyright ownership
The question that arises is who owns the copyright in the code that [Private] developed for Instinct under the contract for services with Instinct. In our view this question is governed by New Zealand copyright law and the legal position is clear.
First ownership of copyright in New Zealand is governed by section 21 of the Copyright Act 1994 http://legislation.govt.nz/act/public/1994/0143/latest/DLM345930.html?search=ts_act%40bill%40regulation%40deemedreg_copyright+act_resel_25_a&p=1 (NZ). Section 21 provides as follows:
21 First ownership of copyright
(1) Subject to the provisions of this section, the person who is the author of a work is the first owner of any copyright in the work.
(2) Where an employee makes, in the course of his or her employment, a literary, dramatic, musical, or artistic work, that person's employer is the first owner of any copyright in the work.
(3) Where—
(a) a person commissions, and pays or agrees to pay for, the taking of a photograph or the making of a computer program, painting, drawing, diagram, map, chart, plan, engraving, model, sculpture, film, or sound recording; and
(b) the work is made in pursuance of that commission,—
that person is the first owner of any copyright in the work.
(4) Subsections (2) and (3) apply subject to any agreement to the contrary.
(5) Subsections (1) to (4) apply subject to sections 26 and 28.
The relevant subsection in the present case is subsection (3). As you can see, it states that where a person commissions, and pays or agrees to pay for, the making of a computer program, and the work is made in pursuance of that commission, "that person" - namely the person who has commissioned the work (here, Instinct) - is the first owner of any copyright in the work. This means that Instinct owns the code in question and is not in breach of copyright in using it or submitting it to GitHub. This legal conclusion is not affected by the fact that [Private] chose not to accept payment from Instinct. That was his choice and does not affect the legal position that Instinct owns the copyright in the code.
There was no legal agreement to the contrary (which means subsection (4) does not apply) and sections 26 and 28 (referred to in subsection (5)) are not relevant (section 26 relates to Crown copyright and section 28 relates to copyright vesting in certain international organisations, neither of which are relevant here).
At most, this is a payment issue, not a copyright ownership issue.
Even if there were a copy ownership issue, [Private]'s commits were to GPL-licensed software. The GPL licence applying to this software can be found here: https://github.com/wp-e-commerce/WP-e-Commerce Instinct's strongly held position is that it owns the copyright in the code in question but, even if it didn't, it would be entitled to use it under the GPL.
If [Private] wishes to receive the offered payment or otherwise to raise payment issues with Instinct further, in relation to the incomplete work under his contract with Instinct, the proper course of action is for him to raise the matter directly with Instinct as a contractual issue, rather than to impose pressure by filing, inappropriately, a DCMA takedown notice. I am happy to discuss this matter further with him whenever he wishes.
It is not appropriate for [Private] to serve a DCMA notice on GitHub in relation to the code in question when Instinct is the copyright owner of that code.
In these circumstances, we request that Github please not disable the repository in question. As noted above, I am happy to answer any further questions you may have and to cooperate with you on this matter to the fullest extent possible. I am also happy to discuss matters further with [Private].
5. Jurisdiction
I consent to the jurisdiction of Federal District Court for the judicial district in which my address is located (if in the United States, otherwise the Northern District of California where GitHub is located), and I will accept service of process from the person who provided the DMCA notification or an agent of such person.
6. Electronic signature
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