I have seen a lot of laughable cease and desist letters in my career. Usually they come to my attention when the victim of an overreaching cease and desist posts the letters online. The theory behind this practice is that when a small and poorly funded cyber-critic gets an overreaching and bullying cease and desist letter, the best way to react is to share it with everybody. Just as strong sunlight will dry up mold and cause roaches to scurry for the corners, exposing unethically overreaching cease and desist letters to public criticism and comment will make lawyers think twice about how they wield their letterhead — and will make litigants think more carefully about how they choose their legal representation.
Evolution of the Streisand Effect.
A few years ago, Kenneth Adelman posted aerial photos of Barbara Streisand’s home on the intertubes. Streisand got all Barbara on him and sued him for $50 Million. Before the suit, almost nobody had seen Adelman’s website. The lawsuit generated so much attention that millions of people hit his site and the photo was picked up by the AP as newsworthy. Barbara’s tantrum caused the exact opposite effect that she had hoped for.
Defending yourself from even a completely baseless defamation suit can be expensive. Accordingly, often the only defense that a citizen can afford is to rely upon the Streisand Effect, and hope that it turns into a Bickle Rain. (So named after Travis Bickle from Taxi Driver “Someday a real rain will come and wash all this scum off the streets”). Usually, when the victim of the overreaching lawyer brings the dispute to light, and the victim is in the right, the negative publicity can generate a “real rain” that will wash the scum off the streets — or at least convince the bully to be a bit more reasonable.
Enter Dozier Internet Law and its client, Direct Buy.
Back in October, Public Citizen reported:
DirectBuy is a company that claims to offer a deal on furniture and home supplies by letting consumers buy directly from the manufacturer. Apparently, the company doesn’t want you to hear from customers who don’t think the deal is such a good one. The company’s law firm, Dozier Internet Law (which specializes, among other things, in using copyright law to “get websites pulled down without notice”) sent a strongly worded demand letter to the owner of InfomercialScams.com, claiming that consumer complaints on the website are defamatory because they refer to the company’s direct-buy plan as a “scam” and a “nightmare.”
The posting continues:
Companies trying to quash complaints by consumers on the Internet often send bullying letters like this, demanding that criticism be taken offline. These threats are often effective against small website operators who can’t afford the cost of a legal battle, especially one filed in a distant forum or another country. Before the Web, there was little disincentive to sending such a letter. Now, however, companies realize that their demand letters may end up online, resulting in further embarrassment for them (a phenomenon for which Mike Masnick coined the term “Streisand Effect”). Copyright claims like the one in this letter are becoming a common method to counter that problem by scaring recipients into keeping quiet. It has so far been a successful strategy — DirectBuy’s lawyer claims that none of his similar demand letters, until now, have ever been posted online.
Public Citizen decided to post the letter on its website because it is only possible to understand our letter in response by seeing the letter we are responding to, and because we think Morris’s letter is a good example of the many meritless threats that companies hurl at their online critics in an effort to silence dissent. We also don’t think the copyright laws prevent us from posting the letter. First, the letter is not registered with the copyright office, and until it is, DirectBuy’s law firm can’t sue to enforce it. Second, posting the letter is a clear example of fair use. Companies should not be able to make threats and then hide from criticism behind the Copyright Act.
I agree wholeheartedly with Levy’s legal conclusions. I even agree with his umbrage. However, I think that he could have been a little less snarky about it. (Insert laugh track here as you realize the irony of me saying this) On the other hand, I love the fact that Levy throws the gauntlet in Dozier’s face:
“By this letter, we are inviting you to test the validity of your theory that the writer of a cease and desist letter can avoid public scrutiny by threatening to file a copyright law suit if his letter is disclosed publicly on the internet.”
Public Citizen isn’t the only entity to slam Dozier for its claim. This one is particularly funny:
Seems some chuckleheaded lawyer representing DirectBuy — which isn’t happy that some folks think the company’s direct buy plan is a “scam” and a “nightmare” thinks his threatening cease and desist letter is copyrighted and can’t be posted online. (source)
“Chucklehead” just isn’t used often enough.
Interestingly enough, Dozier has not followed through with its threat to sue for posting the letter. Public Citizen has unlimited litigation resources to stand up for itself. That’s not the kind of victim that firms with such overreaching claims want to take on. Although I did previously call Levy’s letter a little bit overly-snarky, maybe he should have just committed to being a prick and ended it with “now go get your fuckin’ shine box!”
Of course, Dozier isn’t all that professional in his attack either:
And here is the real irony. These organizations are founded upon an almost maniacal belief in expanding notions of free speech, so we can’t successfully insist that these young, recent law graduates be reined in and controlled, managed, or censored. There are no quality controls in place. Good businesses institutionalize levels of authority, review and vetting. It leads to higher quality goods and services. These free speech organizations will never implement such oversight since it runs counter to their cultural beliefs of promoting free speech and banishing censorship. (source)
“Maniacal belief in expanding notions of free speech” What a dildo.
The Saga Continues – Dozier Keeps Digging Deeper
On Jan. 1, Dozier himself posted the following comment to Public Citizen’s blog:
DOZIER INTERNET LAW WAS RIGHT: COPYRIGHT RIGHTS EXIST IN LAWYER CEASE AND DESIST PER US COURT
US District Court recognizes copyright protection in lawyer cease and desist letters. Commentary, links to blog and links to decision here (www.cybertriallawyer.com)
Ralph Nader founded Public Citizen and used well crafted attack journalism successfully for many legitimate reasons. And now, the Greg Becks of the world think they can become the next Ralph Nader. But, reality is quite a different thing. Mr. Nader researched his positions meticulously, was smart enough to see both sides, inciteful [sic] enough to project out where the law is headed, and careful enough not to damage his reputation by undertaking ridiculous attacks. He seemed to understand that, to some extent, attacking speech because you did not agree with it was, to say the least, hypocritical.
I’m not sure when Public Citizen “attack[ed] speech because [they] did not agree with it.” Public Citizen attacked a censorial legal position.
Lets keep reading…
At Dozier Internet Law, we are proud of our position as a thought leader and aggressive litigator in protecting the online businesses of the web. We’ll keep protecting the reputations and intellectual property of businesses online, and likely continue to have to suffer the slings and arrows from Public Citizen and its constituents. While the hundreds of threatening emails and telephone calls we received as a result of Public Citizen’s outragious[sic] comments in this matter might intimidate some law firms into submission, we are not intimidated. This tactic won’t work with Dozier Internet Law.
It seems that Dozier is mixing issues here. The dispute isn’t really about their client. It is about their tactics as a law firm. Yes, Public Citizen took an aggressive stance with respect to the “copyright in demand letters” theory espoused by Dozier. My question is this: What is Dozier so afraid of? If Dozier’s demands are legally and factually supportable, why wouldn’t their client want them broadcast to everyone and anyone? What client would prefer that an untruth be more widely publicized than the demand for retraction? This whole thing has an aroma of “thou doth protest too much.”
Public Citizen needs to do the right thing and tell its 100,000 members and the public that if they follow their advice they risk financial ruin. Ralph Nader would have done this. He insisted, given the existence of a damaging product or service in the marketplace, that a “recall” be implemented. Although Beck, Levy and Public Citizen have known about this Court decision for some time, they allow their erroneous advice to remain without retraction or correction.
Interesting… I actually like Dozier’s logic here. He is equating Public Citizen’s legal position with a defective product. Of course, if Dozier was truly confident in his legal position, wouldn’t he have filed suit against Public Citizen for copyright infringement already? What better way to prove to the world that he is right, and Public Citizen is wrong?
I come from the generation that know Ralph Nader. Mr. Nader is highly intelligent. He operated from a foundation of truth. I respected Mr. Nader’s opinions. I supported Ralph Nader’s right to voice those opinions, even when I disagreed. You, Mr. Beck, are no Ralph Nader.
But is Dozier Right After All?
Let us not digress from the real issue. Is Dozier correct? Does a federal court decision support his firm’s position that copyright law allows him to suppress republication of his firm’s demand letters?
Let’s start by reading Dozier’s press release on the decision:
Glen Allen, VA (PRWEB) January 24, 2008 — The US District Court for the District of Idaho has found that copyright law protects a lawyer demand letter posted online by the recipient (Case No. MS-07-6236-EJL-MHW). The copyright decision, in pertinent part, has been made available by Dozier Internet Law, and is the first known court decision in the US to address the issue directly. The Final Judgment calls into serious question the practice of posting lawyer cease and desist letters online, a common tactic used and touted by First Amendment groups to attack legal efforts at resolving everything from defamation to intellectual property disputes.
In September 2007, Dozier Internet Law, a law firm specializing exclusively in representing business interests on the web, was targeted online by “free speech” and “public participation” interests for asserting copyright ownership rights in a confidential cease and desist letter sent to a “scam reporting site”. The issue generated online buzz in the US with commentators such as Google’s lead copyright counsel and Ralph Nader’s Public Citizen attacking the practice as unlawful, and Dozier Internet Law responding. Bloggers from around the world soon joined the debate, reeling at the thought of losing a valuable counter-attack tool.
The Court, in its decision, found that a copyright had been adequately established in a lawyer’s cease and desist letter. The unauthorized publication of the letter, therefore, can expose the publisher to liability. (emphasis added) Statutory damages under the US Copyright Act can be as much as $150,000 per occurrence plus attorneys’ fees that can average $750,000 through trial. The publisher of the letter raised First Amendment and “fair use” arguments without success. (emphasis added)
I can see targeting Public Citizen. Even they would admit that they are a bit biased. However, now Mr. Dozier claims that “Google’s lead copyright counsel” took the same position. I presume that he means William Patry. Yes, that William Patry… as in Patry on Copyright Law. I’m not saying that Patry is infallible. I myself have dared to disagree with his assessment of a copyright case. Nevertheless, when Patry speaks on a matter of copyright law, you’d better at least listen very very carefully.
Lets dig a little deeper into Dozier’s claim. Naturally, the best place to look is at the decision itself.
The most important thing to note is that this was not a case that actually decided a copyright infringement matter. In the Idaho case, the court was asked (by an anonymous potential defendant identified as “43SB”) to quash a subpoena issued, pre-suit, under the Digital Millennium Copyright Act (DMCA). To get a subpoena under the DMCA, the subpoena-seeker must show that he has a prima facie case of copyright infringement. In other words, just enough to show that he could bring a claim.
The court notes:
In order to obtain a subpoena, copyright holder must plead a prima facie case of copyright infringement, that is: (1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original.
Copyright protection does not extend to facts or ideas. Wright v. Warner Books, Inc., 953 F.2d 731, 735 (2d Cir. 1991). 43SB argues that the Sheppard Letter falls into the category of works described in 17 U.S.C. § 102(b), which excludes certain subject matters from copyright protection. The subject matters included in this subsection are: “…any idea, procedure, process, system, method of operation, concept, principle, or discovery…” 17 U.S.C. § 102(b).
43SB argued that the demand letter merely detailed “a process or instruction that would elicit a response from the Website administrator, specifically the removal of comments about Melaleuca and Mr. VanderSloot from the Website, and therefore is not copyrightable.”
The court did not examine the fair use argument at all.
The court’s actual decision was very narrow and technical.
Under the DMCA, the copyright holder need only plead a prima facie case of copyright infringement. A certificate of registration of a copyright constitutes prima facie evidence of the validity of the copyright and facts stated in the certificate. Melaleuca has registered the Sheppard Letter with the Copyright Office. See Supplemental Filing Re: Copyright Registration Certificate for Sheppard Letter, Ex. 1 (Docket No. 18-2). This is prima facie evidence that the Sheppard Letter is copyrighted and satisfies the first prong of demonstrating a prima facie case of copyright infringement. 43SB has valid arguments and enforcing this subpoena pre-litigation may have far-reaching consequences, therefore some preliminary examination of the potential claim is necessary. However, the Court will not go into an in-depth analysis of the merits of a copyright infringement claim in determining whether to quash this subpoena. It is sufficient in this instance that Melaleuca has registered the Sheppard Letter with the Copyright Office. (emphasis added and internal citations omitted)
Accordingly, it is clear that in his rush to wave this decision over his head, trumpeting “Dozier was right,” Mr. Dozier seems to have read more into this case than appears in its actual text.
What have other commentators said about the decision and Dozier’s position?
The decision recites, however, that at the hearing, the blogger limited his arguments to “two main points – (1) whether the [C&D] Letter is a copyrightable work; and (2) that the subpoena should be quashed at least with respect to the individual with the username ‘Tom Paine.’ ” (Decision at 3). On the first issue, the court decided that because the sender of the cease and desist letter had registered a copyright in the letter, the registration was enough to create a prima facie case of copyrightability and although the blogger “has valid arguments” for consideration on the merits of a copyright suit, a prima facie case of copyright infringement was enough to warrant enforcement of a DMCA subpoena. Decision at 6-7. But as to the anonymous poster Tom Paine, the target of the cease and desist letter, the judge ruled that there was no showing that he was connected to the posting of the cease and desist letter, and so that part of the subpoena was quashed. Decision at 7.
The blogger then revealed to Melaleuca that he, himself, had posted the cease and desist letter on the blog. So far, Melaleuca has not filed the threatened copyright suit against the blogger. Did it in fact advance a copyright claim in good faith? Or did it take advantage of a spurious copyright claim as an excuse for trying to identifying its anonymous critic? Although the DMCA provides a cause of action for misuse of the DMCA, it regrettably appears only to provide for damages caused by removal of the challenged material, not for bad faith use of subpoenas to obtain a poster’s identity. Perhaps there is an action for abuse of process?
Eric Goldman and Sam Bayard have criticized the magistrate judge for failing to consider fair use in a 512(h) subpoena case, and for resting on the copyright registration as being sufficient to support a subpoena even if the copyright claim itself might ultimately fail. Goldman also points to the case as an obvious example of a misuse of DMCA subpoenas for the ulterior purpose of punishing a dissenter. These are fair criticisms, although reading between the lines of the decision, one might wonder whether this is a case of a judge splitting the baby, enforcing part of the subpoena identifying a poster who cannot be sued successfully for copyright infringement while protecting the important First Amendment interests of the anonymous critic.
The hearing transcript is not online, so we cannot be sure exactly what arguments were conceded, but there is every reason to believe that the judge did NOT reject either the First Amendment or the fair use arguments – he seems to have avoided them by ruling for the one party on whose behalf they were still being pressed by the end of the hearing. Nothing supports Dozier’s claim that the case stands for the proposition that a cease and desist letter is copyrightable, not to speak of the propositions that posting of such letters is neither fair use nor protected by the First Amendment.(source)
Accordingly, I am not the only disinterested party who thinks that Dozier’s claim is a bit bogus. Dozier seems to be trying to push the envelope a little bit here — and tries to rely upon the Idaho court’s decision as proof that he can stop others from publishing his firm’s demand letters for comment and criticism. That is not what the Idaho court said.
Ron Coleman sums up the Dozier press release with this barb:
[The decision is a] lot less shocking than I first thought, based on the press release. And not at all shocking just how unethical this law firm is. (source)
It seems that Dozier has not learned the first step in getting out of a hole… stop digging.
With respect to Coleman’s statement, I must support it without reservation. Coleman is always an inspiration when it comes to how gentlemanly he is in his sparring. For him to go this far says a lot about the scenario. I’m a hot-head sometimes. Ron is as meditative as the Buddha when lobbing a brick at a fellow lawyer.
What About the Fair Use Issue?
The next thing to consider is whether the copyright case, if it ever came forward, would succeed. The law firm in this case piggybacked on the DMCA in order to use a copyright claim to ferret out the identity of an anonymous critic.
Naturally this was an ethically bankrupt tactic on the part of the plaintiff. Stanford Cyberlaw Professor Mark Lemley writes, “[b]y mischaracterizing tort claims as copyright claims, plaintiffs seek to take advantage of a more favorable legal regime. This sort of gamesmanship is undesirable.” (source at 11).
Proving that this misuse of the DMCA was merely the kind of “gamesmanship” condemned by Professor Lemley, once the subpoena issued, nobody bothered to bring a copyright infringement suit. The point of the DMCA pre-suit subpoena was to unmask a critic. Once this turned out to be a dead end, the author’s rights seem to have been forgotten. The firm knows fully well that if it did bring suit, that claim would be doomed under Fair Use.
Prove it, Randazza
It is no secret that the film, The People vs. Larry Flynt is one of my favorite movies of all time. I require my students to watch it in my Entertainment Law class. Most of my readers are fully aware of the Supreme Court case depicted in the film. However, the lesser known case, mentioned for all of 30 seconds in the film, is the Hustler v. Moral Majority countersuit.
In that case, Jerry Falwell took the “Jerry Falwell Talks About His First Time” Campari parody and sent it to his Moral Majority minions — soliciting donations. Falwell took the entire copyrighted work and used it for a blatantly commercial purpose.
One of Falwell’s top executives conceded that the inclusion of a copy of the ad parody was part of a “marketing approach” to fund-raising, and the court can safely assume that this strategy involved encouraging the faithful to donate money. Hustler v. Moral Majority, 606 F. Supp. 1526, 1534 (C.D. Calif. 1985).
However, the court also found that he was not using the ad to elicit support for purely commercial gain, but even if he was, this did not dissolve the fair use defense.
[T]he court must also consider whether “the alleged infringers copied the material to use it for the same intrinsic purpose for which the copyright owner intended it to be used.” Marcus, 695 F.2d at 1175; Jartech, Inc. v. Clancy, 666 F.2d 403, 407 (9th Cir.), cert. denied 459 U.S. 879, 74 L. Ed. 2d 143, 103 S. Ct. 175 (1982) (same); see Italian Book Corp. v. American Broadcasting Companies, 458 F. Supp. 65, 70 (S.D.N.Y. 1978) (fair use generally sustained if defendant’s use not in competition with the copyrighted use). Under this principle, defendant’s use is more likely to be considered fair if it serves a different function than plaintiff’s.
In distributing the parody Falwell evidently meant to provoke the anger of his followers and to comment on the level of obscenity in the work.
The C.D. of California also pointed out portions of the Copyright Act’s legislative history, upon which a re-poster of Dozier’s demand letters could rely:
The court discerns additional support for Falwell’s position in the legislative history to section 107. The House Report states: “When a copyrighted work contains unfair, inaccurate, or derogatory information concerning an individual or institution, the individual or institution may copy and re-produce such parts of the work as are necessary to permit understandable comment on the state-ments made in the work.” House Report, supra, at 73. It would thus be consistent with congressional intent to find that Falwell was entitled to provide his followers with copies of the parody in order effectively to give his views of the derogatory statements it contained.
Accordingly, when a law firm like Dozier Internet Law sends you a cease and desist letter accusing you of illegal activity, you certainly should be able to use that letter to provide your own supporters with copies of it in order to effectively give your own views on the issue — and to gather support for your cause.
The legal landscape for Dozier’s position gets even more gloomy as we continue to read the Hustler case. The First Amendment, a portion of the Constitution for which Dozier’s firm appears to have far too little respect, also rears her lovely face.
First amendment considerations also enter into the court’s assessment of the purpose and character of defendants’ use. Although the first amendment does not provide a defense to copyright infringement, when an act of copying occurs in the course of a political, social or moral debate, the public interest in free expression is one factor favoring a finding of fair use. See Keep Thomson Governor Committee v. Citizens for Gallen Committee, 457 F. Supp. 957, 959-60 (D.N.H. 1978) (political committee’s use of a portion of rival candidate’s musical composition amounted to fair use in light of public interest in full debate over election and absence of injury to plaintiff). Cf. Robert Stigwood Group Limited v. O’Reilly, 346 F. Supp. 376, 383-84 (D. Conn. 1972), (priests’ un-authorized copying of rock opera, “Jesus Christ Superstar,” was not fair use where facts did not support defendants’ contention that their performance was counterattack to original’s “perverted” version of the Gospel), rev’d on other grounds, 530 F.2d 1096 (2d Cir.), cert. denied, 429 U.S. 848, 50 L. Ed. 2d 121, 97 S. Ct. 135 (1976).
Similarly, anyone who receives a cease and desist letter, from Dozier or any other firm (including my own), could certainly claim that there is a debate at hand. Without the debate, there would be no complained-of statements or actions. It does not take Justice Brennan to see the First Amendment protection inherent in the republication of a demand letter in this context.
The purpose of copyright is to create incentives for creative effort. Even copying for noncommercial purposes may impair the copyright holder’s ability to obtain the rewards that Congress intended him to have. But a use that has no demonstrable effect upon the potential market for, or the value of, the copyrighted work need not be prohibited in order to protect the author’s incentive to create. The prohibition of such non-commercial uses would merely inhibit access to ideas without any countervailing benefit. Sony Corp. v. Universal City Studios, 104 S. Ct. 774, 793 (1984)
Under the “harm to the market for the original” prong of fair use, if the defendant’s use would tend to diminish sales of the plaintiffs work, then the factor can count against the defendant. However, that only applies if it would supplant the marketplace for the original. For example, if I copied Dozier’s demand letter and used it as my own (sorry, I just choked from laughter) then I might be committing copyright infringement. On the other hand, if I use Dozier’s demand letter to ridicule Dozier, and the result of that ridicule is that consumers form the opinion that perhaps it would not not be a wise choice to select Dozier to represent them, that is protected speech.
Let us return to Hustler v. Falwell:
The court has carefully considered all the evidence placed before it in light of the factors set out in section 107. It concludes that the “‘equitable rule of reason ‘ balance,” Sony Corp., 104 S. Ct. at 795, tilts sharply in favor of a finding of fair use. Any other result would mean applying the copyright laws in an inflexible manner and ignoring fundamental considerations of fairness. The ad parody was a satire about Falwell. He was entitled to use it as he did.
Exactly. The cease and desist is an instrument of attack upon the recipient. Any court that would find that this is copyright infringement should be reversed or impeached.
Okay counselor, but do you have a case that is exactly on point?
As a matter of fact, I do.
In Online Policy Group v. Diebold, the Northern District of California held that “fair use is not an infringement of copyright.” This is a slight tilt from the “fair use is an affirmative defense” logic that the Idaho court employed. The N.D.Calif. held that the copying of the copyrighted materials (Diebold email archives) was so clearly fair use that “[n]o reasonable copyright holder could have believed that [they] were protected by copyright.” The court in that case held that the DMCA notice and take down was defective and that the sender was liable for material misrepresentation.
In short, while this is not legal advice, I’d say that if you want to reproduce a cease and desist letter as an act of self-defense, you should feel comfortable that the fair use defense will back you up.
And if you are the author of a cease and desist letter, don’t write anything that you don’t want the entire world to see.
Bottom line, no court has truly supported Dozier’s position – but an undisturbed case, relying on mountains of precedent, refutes it.
Now go get your fuckin’ shine box!
Other Blawgs on this issue:
- Patry, Misuse via Cease & Desist Letters
- Texas Startup Blog, Lawyers seek to muzzle bloggers by use of ©
- Joe Gratz, Federal Court Doesn’t Quite Recognize Copyright in C&D Letter
- Likelihood of Confusion, Copyright in cease and desist letters? Not quite
- Overlawyered, Court Says you can copyright a cease and desist letter,
- Techdirt, Then Again, Posting Cease And Desist Letters May Be Okay
- Consumer Law and Policy Blog, Does copyright law bar the posting of unflattering cease and desist letters?
- Citizen Media Law Project, Court Rejects Bid to Use DMCA to Bypass First Amendment Protection for Anonymous Speech. (This is not exactly about Dozier’s claims, but is the most well-thought-out analysis of the Idaho decision I could find. That is par for the course when it comes to Bayard’s writing).
If anyone else finds another opinion on this issue, I’d love to add it to the list (please add as a comment). I am particularly interested in seeing post that agree with Dozier. I recognize that I’ve slammed him here, but I think it would be only fair to post dissenting opinions — if any exist outside of Dozier’s press release.