Perfect 10 thinks that DMCA takedown demands should be protected by copyright

Perfect 10 is at it again – this time still pressing the argument that its DMCA notices may not be reproduced. (source). Most copyright attorneys know that if they send a DMCA notice, it very well may wind up on chillingeffects.org. If you send a DMCA notice to Google, it absolutely, positively, will. There are many of my own DMCA notices up there, and I am neither uncomfortable with that fact, nor do I mind my efforts being held up to scrutiny. If I am going to issue a DMCA notice, having content taken off the Internet without any judicial review at all, my maneuvers should be at least subject to the prying eyes in the marketplace of ideas.

Perfect 10 shamefully disagrees. They are wrong. Here is why:

It is no secret that the film, The People vs. Larry Flynt is one of my favorite movies of all time. 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 Central District of California also pointed out portions of the Copyright Act’s legislative history, which seem to take aim at Perfect 10’s position.

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, if you send a DMCA notice to someone else, claiming that there is illegal content on their site, they should be able to use that letter for many purposes – including comment on the DMCA notice itself.

While strictly-speaking, DMCA notices may be covered by copyright law, this type of fair use seems to be required under the First Amendment.

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, 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 a Perfect 10 DMCA notice and used it as my own, then I might be committing copyright infringement. On the other hand, if I use Perfect 10’s DMCA notice as part of a critique of Perfect 10, or of the DMCA in general, or as part of a study on the DMCA, then that that is a valuable addition to the marketplace of ideas — and it 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. A cease and desist or a DMCA notice 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.” 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.

Conclusion

In short, if you issue a DMCA notice, you should not expect that it will remain confidential, nor should you expect that it will not wind up on chillingeffects.org. 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.

5 Responses to Perfect 10 thinks that DMCA takedown demands should be protected by copyright

  1. Tim Oey says:

    Very interesting, thanks for the post. By similar logic it would seem to be fair use to include an entire email from an email list in a public post (on a blog or another email list) when one is responding to said email even outside the forum in which the email originally appeared. I’ve seen “threats” against individuals doing this but it seems to me that your DMCA logic would likewise apply to them too. Thoughts?

  2. I would say so. If you get into a discussion with someone, I don’t think that they could properly claim that their copyright prohibits you from reproducing the online conversation, especially if you do so for comment or criticism purposes.

  3. Like you I have served a fair number of DMCA notices in my time and I assume, as I assume with every letter of demand that I write, that these may be offered up for public scrutiny at some point. This is a useful self-editing exercise aide memoire.

    What bothers me is when government departments decides to release confidential documents in support of registrable trade marks to anyone who lodges an FOI request. A lot of the stuff lodged as evidence in support of Trade Marks is not only confidential to to the applicant but also proprietary information belonging to the Applicant’s solicitor.

    Happy to give you a bit more of a heads up about this privately. It sucks.

  4. MikeZ says:

    First off I thought the NFL no longer has a salary cap as the collective bargaining agreement wasn’t extended? http://nfl.fanhouse.com/2010/02/11/no-nfl-salary-cap-no-problem/

    That aside from a competition perspective I think the MLB is FAR more like socialism than the NFL. Sure the NFL has a salary cap and no team can spend more than this and in theory this gives all teams equal footing. The problem though is all teams aren’t required to spend a minimum amount. According to USA today the Rams have half the salary as the Giants. (http://content.usatoday.com/sports/football/nfl/salaries/totalpayroll.aspx?year=2009) So this isn’t much difference from MLB.

    I’m sure the argument from the teams with low payrolls is they can’t afford to pay thier players more. Here is where MLB looks a lot more like socialism and it takes money directly from the wealthy teams and gives it to the ‘poor’ teams so it can in theory be used to increase their payroll and have some parity. The problem in MLB is that the soft Salary Cap is set incredibly high, and most big markets have multiple MLB teams. Boston is lucky in that 5 1/2 states (counting half of CT) root for a single team. Population wise there are probably more people in Southern California but they have 3 MLB teams.

    Assuming the NFL teams have parity, I would still think placing a bet on Detroit getting to the Superbowl anytime in the next couple of decades is a bad bet. How many years do they have to give us crappy Thanksgiving entertainment before we can swap them for the Patriots on Thanksgiving day.

    • C’mon, Detroit might finish 6-10 this season, and 7-9 could mean a playoff berth in the lowly NFC.

      It would be sorta cool if the Pats were the Thanksgiving game every year though.

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