Free speech under attack: FedEx fights furniture maker with DMCA invocation, censorship

Thursday, August 11, 2005 by: Ben Kage
Tags: Fedex, free speech, intellectual property

Jose Avila has always been a FedEx fan. He uses Fedex for all his shipping needs because he considers the packaging to be a high-quality, sturdy product, and the shipping service to be superior to competitors. So, when financial hardship inspired Avila to build furniture from FedEx packing materials and post photos of his antics on his FedexFurniture.com website, he never expected FedEx's legal department to come after him. "From day one I wanted to be pro-FedEx and give some support to FedEx while at the same time displaying the artwork." Avila said, with noticeable disappointment over FedEx's legal reaction.

In June, Avila left his job in California and moved to Arizona, bringing only the bare essentials and his all-important computers. In a rare gesture among renters, Avila refused to leave his former roommates burdened with his share of the rent and decided to make payments on his old apartment and new apartment at the same time. This, understandably, put him under considerable financial pressure, especially since there was a month-long hiatus between his old job and new job.

So instead of buying furniture, he decided to make it himself, using materials at hand. Those materials, it turns out, were sturdy shipping boxes provided to him at no charge through his Fedex shipping account. With those free boxes, and utilizing expertise gained in high school architectural design courses, Avila put together his first desk made of Fedex boxes.

As Avila's needs expanded, so did his furniture. He designed a bed and a dining table to complement his home-built computer desk. When a friend announced his intention to visit Avila in Arizona, he was told he had "better have a couch" for the visitor to sleep on. Avila complied, designing a couch (made out of Fedex boxes, of course) that reclined at a 60-degree angle for maximum comfort, with a storage space underneath.

Avila believes there was artistic influence in his couch design. "When I was designing the couch, (art) was definitely a huge consideration in the design," Avila said. "That's how the 60-degree back recline and hideaway compartment came into play; it was to make it an attractive piece of art."

As one might expect, Avila's furniture became a popular subject among his friends, some of whom suggested he put pictures of the furniture on the internet. This is where Avila's problems began. "I (sent an instant message) to a couple of my friends and said, 'Take a look at this site; don't really tell anyone,'" he said. "I woke up the next morning to, like, five emails from people telling me how awesome the site was."

By that afternoon, Avila said his site was pulling down 3 megabits per second of steady traffic. From there the site's popularity grew enough to eventually grab the attention of WIRED.com's Kristen Philipkoski (who posted a story about FedexFurniture.com on 8/11) as well as FedEx's legal department.

Wanting to work out the potential legal problem as quickly and neatly as possible, Avila consulted with FedEx's lawyers about what changes he could make to his website to keep it from being shut down. The Fedex attorneys, says Avila, only turned up the heat, so Avila requested they send him a cease-and-desist notice that he could present to his own attorney.

The receipt of the initial cease-and-desist letter from Fedex prompted Avila to retain Jennifer Granick, director of the Stanford Law School Center for Internet and Society (SLSCIS), as legal council in the matter. Granick told Avila that the cease-and-desist order was not complete, and she authored a letter to FedEx requesting the correct legal backing for the claims.

Here's where Fedex makes the issue even more controversial: the company next contacted Avila's Internet Service Provider, claiming Avila's site was violating various provisions of the Digital Millennium Copyright Act (DMCA). The ISP caved, taking Avila's site offline. This is where the censorship debate (and the invocation of the polarizing DMCA) enters the picture. After discussing the case with his attorney (Granick), Avila decided to put the site back online with a different ISP, and a letter was sent to FedEx defending Avila's site.

Commercial or non-commercial?

While Avila was meeting Granick at a Las Vegas conference, he decided to make t-shirts with his website address for all the people who had helped him through the problems with the site. He attempted to make these t-shirts at FedEx/Kinkos, but was refused when the district manager conferred with FedEx legal. At was also at this time that FedEx responded to the defending letter with a new letter restating their position that Avila was clearly trying to make money from the site by selling T-shirts and collecting donations via PayPal.

Avila told NewsTarget that he had no intention of selling the t-shirts (he was only giving them away), and he did not start the site for monetary gain, although he does accept donations to help fund bandwidth costs. To answer the Fedex DMCA claims, Granick posted the Fedex letter on her blog on the http://cyberlaw.stanford.edu/, and commented on how its claims were incorrect. FedEx has now asked that Granick censor herself and remove these comments from her blog. See Granick's response here (PDF).

Is it Avila's art, or Fedex's supplies?

How did Avila get so many Fedex boxes in the first place? He had a Fedex account, of course. "I ship stuff quite frequently for online auctions, or for some friends who do online sales," he said. But Avila's use of the Fedex boxes violated the Fedex.com terms of use, says Fedex in their own letter alleging various intellectual property infringements. The fact that Avila ordered the Fedex boxes from a Fedex.com page labeled "shipping supplies" means that Avila misrepresented his intended use of the boxes, says Fedex.

From there, Fedex draws a number of curious legal arguments, such as claiming that sculptures made from Fedex boxes are "derivative works" belonging to Fedex and protected under the Copyright Act. It's akin to claiming, as Granick points out, that a sculpture made out of Barbie dolls somehow belongs to Mattel.

Fedex draws other seemingly far-fetched legal conclusions as well. In the same letter, Fedex states, "...by posting photographs of works derived from Fedex packaging materials... Mr. Avila is inducing, causing or materially contributing to the infringing conduct of others." Apparently, it is now illegal to even take pictures of Fedex boxes unless they are neatly stacked in a corner and unmistakably labeled, "For Shipping Purposes Only."

Avila cannot discuss the current state of his ongoing legal proceedings. What has certainly come out of it, though, is a missed opportunity for free advertising for FedEx, and the possible loss of street cred with the discerning internet public. With this much viral publicity going on, Fedex has fumbled the ball badly by waging what appears to be a David vs. Goliath legal battle with a former fan. "I'm really wondering if their corporate marketing department has any idea of what's going on," Avila said.

Avila said the original intention of the site, which remains unstable due to the amount of traffic it receives, was to show that people don't have to despair when they are in a financial bind. The mantra of the site is, "It's OK to be ghetto."

"If you're OK with being creative and feeling a little ghetto at times, you can get a lot further in life," Avila said. "I figured I would use my situation to reach out to people and explain this (concept) to them; if people saw my website, and were feeling down about something else, they may look at it and say, 'At least I'm not that guy.'"

Fedex, it seems, doesn't want anybody to be like that guy.