dmca/2015/2015-09-14-wpecommerce-counter.md

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:

- https://github.com/wp-e-commerce/WP-e-Commerce/commit/d3f11f3121dd9862607ae1848bce65ccc0075666
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/e21d76277de39f8b85a89625613ea1c0d7642cf8
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/bf78203f6f7bbba277b0d6ba4ebcfaf3b5cb8be9
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/0116e2a91ef278364718c6636fb3577b1c8cb65e
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/cf2d35abfac06576ab8ea7ad432761e17f876fa0
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/bc2d94d29537c681920915e94fdaba90dfbeb7d3
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/f07a2325fd8d7504560a36b341c85641294c5d8a
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/804c19b204b2fc097c8b6f81688e2699a0c94346
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/9569bd30ae94eb341d761c761c54fdb46c685494
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/9bcd7874f58b5b879a6253f9f87940ec75866464
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/97bc681ed02f39dc058edae59169b1bef1b65780
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/5989b07b20749830f1215da82287c3941d51591c
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/b666b5ef89e0050018df0006aadb5d3c9ba80f5c
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/dbe0b1a4499d17cd1ae37c70b6e807993b185d73
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/2efc52853dba82210939a8caf2583b0a3bed8866
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/0d9173e148ba6e10089dad6a1b5d3f5c16bb1de0
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/b816850163bd06fe999538ddfe956e67e95b3297
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/ae690eccba8ad92322f7a2dc130392d5ff3870cf
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/f1b2d167ebeb58966b1c34d324fd1602066c159d
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/a297adf446895cea4ff47e706a7b48c88459117f
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/1d5bae8698ca5dcef941a34280f76d9526ec36e6
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/44cb416c64927e3aea08d4bfff55180d68b8198f
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/323fd8a6ae2f10df2496977c5580af9ac578340a
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/17105c13a3c4cb2943f1510fb2ccee3bf512fa80
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/05b3b94966615b7a9c2c63c63c2ceec48cedf37a
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/0d8d2b3cdf12ea2c7fad1b6551fe01004b7198d2
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/9fa4ad4383cf1f503095016807532e91afc2e46c
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/c984591f1f10fd2ae380da1015aa0187eaf35414
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/c03590ac12fd131a54bf54f57a430d9c0bd54148
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/7c00f1bf244aa4a815ddbb11fa8d2cbc197b3c28
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/b994c6340378d86581db06aa849ffdb6585abd78
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/87f5747e7b3d39242a9eae3a0a6e512cc5d58965
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/deff13f0d467c8584b00b7ca7b739015386c02ef
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/9c1acd9cf61e9a48df7e082e6b2d282159332908
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/414e983e15a2d3cde11542b0aa5a700867cb118f
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/b8f14a2511a4ba536987110fb4e4b44cc0d25aef
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/80078345043ef7ae6a277555314a126b8e38eb5f
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/3084be4f4fc13944b97eaa25760e1005e9ed71fc
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/6cf5938475312eec26cebe10b41670e45e097740
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/229e4e819f83f6ed6d41b96c30bbd4bd1c950dba
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/eb6f59dd70b5c7477379b365b2865b17d7b90311
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/0b99f58c122cf85fb4bd0ba5d2993398aa9322a5
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/a484c12c2370b16afc899e5710250e59e6aafe30
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/87713bc0e1cc9c05608aa057bedcb10938adfec3
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/616d3bec427825670de80bb0759f900ef76372db
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/28eaf249e7c32ce70f72de81e163ceeb4c5c5aba
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/58296caf36064641680806ca762f2ff60a48bd90
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/8bc1387970b3acbeb276321d163aaf73cf19866e
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/2b97062bc7a6a3775528b868c8f6ac45b1bce080
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/37375e4fac2ad7f978e461eb811edfdb3fe99635
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/9a18dbfbbcfaab7820689ed03d811acc7ffb1bb4
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/1fe7b9949398568a823c3d969da0ee74dc5fdbf8
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/497ba789a5f73e95e4b7d31af5f5a0c6558085be
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/c5b85070f4c4422aab0f630d61333b0fe1d5ab99
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/953181f86c51a87889b6f994a0606dffc89bf289
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/2796cdc307ff8dcd350591b20b92c528826212aa
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/feb639498382251dd97c47dcc93111778386673f
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/3706b3a45fb09d7017397a8eecc52d3cca27a659
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/e74bae1974df4277eb59dd50227f6585b656ff5b
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/e1d230202c396884158bbbde675e1de84b06b913
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/05e9f19a9ec14826c6b96ebccd41aa0bc6e2b9d1
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/8a7d0c8146a2518713fd0cdd1276470806ccf054
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/2f71ef924de3f4da7118b2e943b150a0128da58c
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/d3d32156fa9c33c6c190d53e2f8e9d40aff09961
- https://github.com/wp-e-commerce/WP-e-Commerce/commit/be9b34e5edbe23566436b1884f3b4f618428158e

*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*

*[image: Inline image 1]*