Wednesday, October 10, 2007

Misuse via Cease & Desist Letters

Efforts by lawyers to assert copyright in their pleadings and briefs is not new, and is typically done not to suppress the contents of documents but to prevent their reproduction by competitors. There are occasional exceptions, usually dealing with expert reports. Most recently, lawyers sending cease and desist letters have taken to asserting copyright to prevent the public disclosure of the enforcement effort itself. One law firm that appears to be doing this is the Dozier Internet Law, P.C. , in Glen Allen, Virginia. Here is a link to a letter they sent to an individual, Mr. Justin E. Leonard of Scottsdale, Arizona on September 21, 2007 on behalf of DirectBuy. DirectBuy was upset at things said about them on three websites, www.infomercialblog.com, www.infomercialratings.com, and infomercialscams.com. These sites allegedly contained defamatory statements about DirectBuy (an issue I offer no opinion about). On behalf of DirectBuy, the Dozier firm stated, "Our client will not stand by and allow this misconduct to continue," and therefore demanded various things, while still claiming on behalf of the law firm, not DirectBuy, that "this law firm does not attempt to restrict legitimate free speech... ." The letter however closed with this: "Please be aware that this letter is copyrighted by out firm, and you are not authorized to republish this in any manner. Use of this letter in a posting, in full or in part, will subject you to further causes of action." I am of course using the letter in part too.

Mr. Leonard decided not to roll over and contacted Public Citizen. Public Citizen describes itself as "a national, nonprofit consumer advocacy organization founded in 1971 to represent consumer interests in Congress, the executive branch and the courts." It has a litigation arm, and decided to get involved in the dispute, on October 5th, sending this response, captioned as "How not to write a cease and desist letter." Public Citizen's Paul Levy closed his letter this way in reference to the copyright threat at the end of the Dozier letter:

Such a posting would be fair use. Moreover, inquiry by my colleague Greg Beck produced the interesting information that the copyright in the letter has not been registered. Sadly, according to what you told him, you have been successful in this intimidation because none of your cease and desist letters has ever been posted.

There is always a first time. We are posting the letter on the Public Citizen web site (the letter can be found at http://citizen.org/documents/directbuy.pdf) so the public can access our differences by comparing your contentions with our responses. 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.

Please make me the second time for what is clearly misuse.

40 comments:

Confused said...

Are you suggesting it is misuse for the a writer of a letter to assert a copyright in that letter? Or are you suggesting that the assertion that the recipient's republication of the letter might be unlawful or illegal is the misuse?

If it's the latter, then anyone saying republication, rebroadcast, etc. without express written consent (*cough* NFL *cough*) would also be guilty of misuse.

Maybe, I missed your point.

Anonymous said...

I understand the fair use argument (and agree), but I don't understand your misuse argument.

As I understand copyright misuse, it's an attempt by the copyrighter owner to extend their statutorily granted monopoly beyond the limits set by public policy.

Thus, if copyright owner claimed that in consideration for receipt of a copy of a work, the person receiving the copy agreed to waive any fair use defense, then I'd think that that agreement might form the basis for a copyright misuse defense to a claim of infringement.

But I don't see anything like that happening here. Instead, the law firm is merely making an unjustifiable legal claim.

So, what's your misuse argument?

William Patry said...

Dear Confused, neither. I am asserting that it is misuse to assert copyright in a letter for the sole purpose of suppressing speech that is either non-infringing or fair use.

William Patry said...

Dear Anon., I agree that one form of misuse is, as you state, "an attempt by the copyright owner to extend their statutorily granted monopoly beyond the limits set by public policy." But I think that is what is occurring here: it is against public policy to assert copyright for the sole purpose of suppressing speech that is, in any event, fair. This doesn't turn every unjustified claim of copyright into a misuse case. For example, one might unjustifiably claim that one song infringes another, but this would merely be a false view of the law. In the DirectBuy case, though, not only did the letter writer not care about the expression of the letter or copyright purposes, but it is an effort to make sure that people to whom cease and desist letters have been sent can have those letters publicly discussed. If that isn't against public policy, I don't know what is.

Anonymous said...

I'm curious about originality. I grant you that not much originality is needed, but the form of this letter and the language is hardly much different than countless other C&D letters. I would not be surprised if most of it was cut and pasted from someone else's form letter (maybe one of these lawyers wrote the form while an employee of another firm -- would it possibly be work for hire for someone else). I realize these may all be stretches on an originality argument, but there sure is not much there. I also wonder when this firm chooses to register and file suit, and attaches its C&D letter to the pleadings, is it going to claim that no one can post the pleadings too?

Anonymous said...

I certainly don't defend the rather clownish behavior of DirectBuy's counsel, but Paul Levy might want to take a refresher course on at least one aspect of copyright law. Whether copyright in the C&D letter has been registered is irrelevant to whether the work is protected by copyright. See 17 USC 408(a). In his defense, Mr. Levy's hardly alone -- in my copyright practice, barely a month goes by without at least one opposing counsel arguing that a lack of a copyright registration means that the work isn't protected by copyright.

On the substantive issue, I agree that republication of the letter (at least in the fashion that the writer plainly sought to preclude) would likely be found to be fair use, probably on summary judgment. However, I disagree that Mr. Leonard's rather silly assertions constitute misuse.

According to the Supreme Court (Campbell v. Acuff-Rose Music), fair use is an affirmative defense. Thus, it must be pleaded and proven by the defendant, and can be waived. In other words, absent action by the defendant (pleading and proving fair use), the underlying infringement claim would stand. Asserting a copyright claim that would likely be subject to a valid affirmative defense is certainly foolish, but it's not misuse.

Moreover, what's the point or arguing misuse at all? Misuse doesn't create a right of recovery or invalidate the copyright -- it's nothing more than a defense to a specific infringement claim. Here, the misuse claim would be predicated on the assumption that a fair use defense exists. However, if the fair use defense exists, it's game over, and the misuse defense becomes superfluous.

LKB in Houston

William Patry said...

Registering any work is not a prerequisite to protection, and the scope of originality is thin indeed in such letters.

LKB, yes, fair use and misuse are both affirmative defenses, but misuse also bars further infringement actions until the misuse is cured.

Anonymous said...

I guess I'm still not seeing the point of arguing misuse, other than for the in terrorem effect. To win the misuse argument, you have to first win the fight over fair use. But once you do that, the case is over anyway.

As far as "further infringement actions" go, if the misuse finding relates to the same conduct, then principles of res judicata and collateral estoppel will smoke the plaintiff on the fair use issue in future cases as well. If, however, the fair use issue requires a new factual inquiry (which it probably would), then the question of whether misuse is ongoing similarly requires a new inquiry.

Again, I think asserting the sort of copyright claim raised in the C&D is incredibly foolish, not to mention tactically unwise. But misuse -- like unclean hands -- is a specific defense that's widely misconstrued as being some sort of generic "unfairness" doctrine. Arguing for it in cases like this merely reinforces such common misperceptions, IMHO.

LKB in Houston

William Patry said...

LKB, there needn't be such a complete overlap between fair use and misuse. There could be a use that isn't fair use but which nevertheless still involves an effort to misuse copyright, say by buying up copyrights to suppress all writing about the subject, as when Howard Hughes bought up the rights to stories about him.

Anonymous said...

No question, there can be conduct that constitutes misuse but doesn't implicate fair use inquiries.

My point is that in *this* particular situation, the real issue is whether the republication would be fair use, because the arguable misuse at issue *presumes* a favorable finding on the fair use defense.

LKB in Houston

Andrew Oh-Willeke said...

In my view the C&D letter raises a serious issue of the legal ethics of the firm writing it under Model Rule of Professional Conduct 4.1("In the course of representing a client a lawyer shall not knowingly: (a) make a false or misleading statement of fact or law to a third person"; materiality is not required in Minnesota and Colorado, but is required in some states adopting the Model rule).

The letter also raises some issues under Rule of Professional Ethics 4.5 (threats of prosecution to gain advantage in a civil matter).

To the extent that a C&D letter does violate rule of professional conduct, the notion that a violation was carried out in connnection with a copyright claim does add some substance to the notion that this was indeed copyright misuse, and not merely a fair use question.

There are also conflict of interest questions under Model Rule 1.7(b) (representation of a client may be materially limited by the lawyer's own interests) where a law firm asserts commercial rights on its own behalf in the course of representing a client. Those conflicts can be waived, but were they? As the comment to 1.7 notes "If the probity of a lawyer's own conduct in a transaction is in serious question, it may be difficult or impossible for thelawyer to give a client detached advice."

Paul Alan Levy said...

A number of people have contacted me about my reference to registration, so perhaps this is a good place to say that of course I recognize that registration is a prerequisite to suit but not to protection. Some of my correspondents have expressed concern that non-lawyers reading my letter might misunderstand and thus leave themselves unnecessarily open to suit. The sentence in question was part of a longer passage that referred to this restriction, but which I removed because it was more unkind than necessary. But it would perhaps have been wiser to choose between omitting the reference entirely or being more clear about why I was mentioning that fact.

Although I am grateful to William Patry for his comment on the copyright ramifications of this matter, my larger concern is whether some lawyers serve their clients poorly by making demands which are just bound to give their clients bad publicity. I suppose the Dozier firm figured they had found their way around this problem by threatening to sue over republication of the letter. My public posting was intended to resolve this issue, either legally by prodding Dozier to file suit and getting a decision, or practically by letting the event serve as a warning to other lawyers who are tempted to try the same tactic. My guess is that it will be the latter.

But the tragedy here is that Dozier could have avoided all this by simply retracting its demand to Leonard. I told Morris that I would not feel obliged to post the letter publicly if the threat of litigation had been retracted. Whether he was too proud to do that, or whether he just couldn’t get his client’s permission, it would be interesting to learn.

Tozer said...

My opinion:

I think you, Monsieur Patry, bring up a very important point about copyright misuse. This is not the first threat letter to claim copyright for purposes of suppressing a public debate, merely a recent and egregious example.

It is very clear that there is no constitutional purpose of using copyright in this manner. Claiming copyright on a threat letter for suppression purposes does not in any way fit the constitutional purpose of copyright, to advance the arts and sciences. Nothing other than the suppression of speech is sought or accomplished by the use of copyright in such a manner.

If copyright law worked as the Dozier Internet Law, P.C. posits it does then Mr. Leonard would be immune from suit because if there were any libel on his sites (in arguendo) it would be **copyright** and both DirectBuy and the Dozier firm would be prohibited from citing them in demand letters or in a lawsuit by dint of copyright law. It would seem that attorney Donald E. Morris has painted himself into a corner by using contradictory theories of copyright law. That is, he has fair use for discussion and legal purposes but his target does not. Estoppel anyone?

Additionally, his threat letter appears to be patently disingenuous when he claims that following the non-negociable demands contained therein--including demands for attorney's fees--are the "one and only chance to resolve [the] matter amicably." I think Mr. Morris idea of amicable is not the definition used by actual people.

Anonymous said...

Correction to my earlier (10:44 AM) post . . . my reference to "Mr. Leonard" should have been to "Mr. Morris." My apologies to Mr. Leonard.

LKB in Houston

Anonymous said...

"[M]y larger concern is whether some lawyers serve their clients poorly by making demands which are just bound to give their clients bad publicity."

Of course, five minutes on the phone telling a client to chill isn't going to achieve that 1800-hour billables nut very fast...

William Patry said...

The Citizen media law project has an excellent discuss of the dispute and of misuse; see http://www.citmedialaw.org/copyright-misuse-and-cease-and-desist-letters

Michael said...

I for one am all for the C and D's but if you are going to send them out then let them be public. This whole fight has gotten too personal and it sounds more like two verbose little girls fighting.

But ain't it fun to watch.

Thanks

Michael Kassing
From the non-disparaging site of SizeMonkey.com

Jason in New York said...

This is a sad and unfortunately all-too-common situation where an attorney becomes overzealous in his representation of the client. The reasons for this are legion, but they usually have something to do with the inability of the attorney to say "no" to the client because of fear. I've also seen this occur when an attorney tries to impress the client without prompting by the client and heads for unethical waters in the process.

Early casualties are often law and free speech. Here, it looks like both were buried.

Anonymous said...

Whatever the law may be regarding the copyright angle of this saga, it seems dangerous for Levy and Patry to invite a lawsuit where Levy and Patry have used and disclosed another person's business letter without the other firm's consent.

It is well settled at common law that individuals cannot use letters composed by others, even if they are the recipients of such letters, without the author's consent. See, e.g., Hearst v. Black, 87 F.2d 68
(C.A.D.C. 1936) ("That there is and always has been a property right in letters and other writings which a court of equity will protect is too well settled to discuss. It is one of those rights which antedate the Constitution.")

In recognizing this well settled principle of property ownership in letters (including business letters), the D.C. Circuit long ago quoted and adopted the logic of an English case, Folsom v. Marsh, where the Judge wrote: "In short, the person, to whom letters are addressed, has but a limited right, or special property (if I may so call it), in such letters, as a trustee, or bailee, for particular purposes, either of information or of protection, or of support of his own rights and character. The general property, and the general rights incident to property, belong to the writer, whether the letters are literary compositions, or familiar letters, or details of facts, or letters of business."

This principle has long been accepted by various states. See, e.g., Baker v. Libbie, 210 Mass. 599, 97 N.E. 109, 111 ("The existence of a right in the author over his letters, even though private and without worth as literature, is established on principle and authority. The right is property in its essential features. It is, therefore, entitled to all the protection which the constitution and laws give to property.").

It is hardly surprising that counsel for Google, who would clearly stand to benefit from the minimization of legitimate defamation and other legal claims on-line, would lend his support to the critique of a law firm hired to go after individuals perhaps irresponsibly impugning a company's reputation. There is, and should be no carve out for the internet from the common law, including legitimate defamation claims.

Public Citizen, for its part, is so busy wrapping itself in the First Amendment and asserting with self-righteous indignation that there is no place for cease and desist letters in cyberspace, that it has taken the low road of encouraging the Dozier Firm to initiate collateral litigation against it in a childish attempt to show how tough it is. Give me a break. Perhaps Dozier should sue for conversion of its business letter under the common law. That would surely shut Public Citizen up, tie it up in litigation for years, and make it think twice before it multiplies disputes.

Re-publishing a demand letter and then goading opposing counsel into suing you is certainly an odd way for an attorney to represent a client whose best interests are probably served by preventing the client from being sued and involved in contentious litigation.

William Patry said...

Dear Anonymous, I regret that you didn't have the courage of your convictions and revealed your name. Your remarks about Google benefiting from defamation are absurd. And it appears you didn't bother to read Folsom v. Marsh, our first fair use opinion, very carefully, the statute, or any case after 1900. Fair use lives and lives for precisely the reasons the post touches on. Do you really think that copyright should extend so far as to prohibit my quoting one sentence from a letter and then critiquing it?

John W. Dozier, Jr. said...

Bill:

A couple of thoughts. You cannot apply US law to every dispute over intellectual property. Our client has signficant business interests outside the US.

For the sake of discussion, however, I think US statutory and case law is clear that such a letter is subject to copyright protection.

No implied right to distribute exists in light of the notices in the letter.

I also don't think the fair use defense is going to be available. Levy admits above that "I told Morris that I would not feel obliged to post the letter publicly if the threat of litigation had been retracted." The threat of publication to gain an advantage in a dispute and attempt to extract a release from liability is going to likely foreclose a successful "fair use" defense. This doctrine is grounded in "bad faith" or "unclean hands" concepts, and the courts will likely continue to consider the true motives involved. Nimmer states with respect to such a motive that a "...motive of private gain, pecuniary or otherwise, would never constitute such a justification"...to publish.

Those are my thoughts on this point.

William Patry said...

Thanks, John for your post. It is always helpful to hear from both sides to a dispute. I would assume you would agree that in the case of Pubic Citizen and my posting, U..S law would apply: we are both in the U.S. as are our servers.

I don't understand where the idea comes from that unpublished works are not subject to fair use; they are. Section 107 makes no such distinction, and Judge Leval has noted in some cases, and I think this is one, that there may be a great need to use portions of unpublished works. I in particular used only a very small part, and to illustrate the very point of the blog. I published my first treatise on fair use in 1985, and have been studying it even longer. I am very confident my use was fair.

I of course expressed and express still no views on the merits of the underlying dispute.

John W. Dozier, Jr., Esq. said...

Bill:

Thanks for your comment. I did not intend to raise any issue about your posting or use.

The jurisdiction in which the work is registered will determine the applicable law to the extent enforcement/infringement litigation ensues.

William Patry said...

Thanks, John. I am curious about your registration comment re jurisdiction. In the Itar-Tass case, the Second Circuit held that in actions for infringement brought in the United States under title 17, U.S. law governs and I know of no basis for holding otherwise.

There are of course few countries that even have registration system, so basing anything on registration eliminates the vast majority of countries in the world. But let's say the country of Xanadu has a registration system and a Xanadu author registers there. He or she claims infringement from a U.S. website owned and operated by a U.S. citizen, with servers in the U.S. In a suit filed in U.S. federal court, do you think Xanadu law applies?

Ned Ulbricht said...

John,

When you send someone a threat, you should always expect to read about it in the newspapers.

Your sense of basic fair play is sadly miscalibrated if you think it's alright to threaten people and then further threaten them that they'd better keep quiet about it.

Your tactics are offensive.

Go wash your hands.

john w. dozier, jr., esq. said...

No. I believe that claims brought in the US had darn well better be based on US registration...and will likely be interpreted only under US law.

But that is not to say, of course, that if US law may apply, it serves as a pre-emption of the application and enforcement of other laws in foreign jurisdictions. But we have to delve into the substantive areas of copyright law, international law, and conflicts law to often work through these issues.

Nick Kulbeth, RTP said...

I happen to agree with Dozier on this. The concept of "fair use" implies good faith and fair dealing, and it looks like Levy is lacking both. I am glad to see that this has taken a turn and become more of a discussion more about the copyright laws and the new world order vs. the old world order.

AdamL said...

if public citizen is making these kinds of threats and carrying them out to get out of legal trouble, then not only is fair use not a defense, the way they handled this whole situation just stinks.

in fact, by their own declaration they are attempting to unmask the unfair practices of opposing counsel- but are resorting to even dirtier tactics in response. what exactly is public citizen trying to demonstrate: if you think that is dirty just wait and see how low i am willing to go?

Andrew Oh-Willeke said...

The discussion by Anonymous of property rights in letters, with crusty cases, overlooks the obvious. All of the old cases arise outside the modern copyright regime that brought unpublished and unregistgered works into the realm of copyright law ca. 1976.

Bringing letters into the copyright law regime means that both the benefits of a uniform national regime of protection (particularly important in interstate communication) but the downside of a well developed panopoly of defenses.

Paul Alan Levy said...

I am pleased to report that, following the controversy over a cease and desist letter from Donald Morris of Dozier Internet Law, on this blog and elsewhere, Morris has apparently dropped from his standard demand letter the paragraph asserting that the firm has a copyright in the letter, and that the recipient of the letter would be subject to suit for posting it. On October 12, Morris sent a series of letters to figures in the inventor community, claiming that criticism of a company called “Inventor-Link” was defamatory, and that both a woman who has posted such comments, and web site operators who have allowed such letters to be posted, could be held legally responsible. Morris does not include any claims of copyright or threats of litigation over posting.
Examples of his new letters can be seen at http://www.inventored.org/caution/inventor-link/Demand-Letter-1.html and http://www.inventored.org/caution/inventor-link/Demand-Letter-2.html (the latter posting is accompanied by derisive commentary).


When I first saw the letters, my initial reaction was to compliment Morris for bowing to reality (if not for the remaining contents of his letter). However, I noted a different copyright-type claim in Morris’s letters.

The terms of service on the Inventor-Link web site include an assertion of ownership of the text of the web site, and a prohibition against the use of any text from the web site, or even linking to or referring to the web site “in any unauthorized manner.” Morris’ letters take his recipients to task for using even the following three-line excerpt from the “Inventor-Link” web site without permission:

“Official Site of Inventor-Link LLC - Your Link to Success for Your ... We know how to get your idea from a rough sketch to a finished product in the market place. If your idea has what it takes, we can help you get the results you want www.inventor-link.com”.

Apparently, the posters take issue with the veracity of this claim, and set forth the text to show what they are criticizing.

I had thought to include in this post a suggestion that, in light of Dozier’s insistence in his own posting in response to my letter, at http://www.cybertriallawyer.com/dozier-internet-law, that he respects free speech and advises clients accordingly, that he might want to take a look at what Inventor-Link is purporting to prohibit and to advise them accordingly. However, my colleague Greg Beck took a look at the terms of service on Dozier’s own web site and discovered not only that the same bizarre terms can be found there, but even more oddities including the assertions that the name “Dozier Internet Law” cannot be used “in any manner,” and that persons visiting their web site are forbidden from using their browsers to view the HTML code on the site. Greg discusses the implications of these terms at http://pubcit.typepad.com/clpblog/2007/10/you-hereby-agre.html

Ethan A said...

As Andrew oh-willeke accurately points out, Anonymous' relying on 'common-law' and 'ante-Constituional' principles for the protection of letter contents conveniently ignores much of the last century of copyright jurisprudence and particularly the 1909 and 1976 Acts. However, just that idea is roughly the one explored by Ned Snow of the University of Arkansas in some of his recent work. Those seeking a more extended and scholarly treatment of the idea would perhaps find satisfaction in that curiously similar but not anonymous work.

John Dozier said...

Mr. Levy: Let's stay on issue here. This blog is about the initial cease and desist you published. Considering that our law firm has received many hundreds of profane telephone calls and emails from your constituency, and been generally attacked by your supporters (the mobosphere)online, don't you think a court will look at your threat (which you admitted above) as bad faith? In threatening to attack a lawyer and law firm, as you regularly do, don't you try to intimidate law firms into not giving pre-suit notice or not asserting their client's legal rights in a manner intended to establish a meaningful dialogue to resolve a problem? You seem to be all about protecting the messenger and free speech until you don't agree with what is being said. You waived, on behalf of your client, any fair use defense.

Anonymous said...

In reading this thread, I don't understand the swipes at google vis a vis defamation. It has immunity under 47 USC 230 for everything save that which it creates itself (e.g., zero).

I also wonder how long it will be before the misuse doctrine begins to get real teeth in reviewing not only "no criticism" clauses (which formed the basis for state unfair competition prosecutions in NY) but also so-called 'competitive purpose" restrictions--e.g., you may not use this work to create a competing product. (Reverse engineering is part of this, but certainly not the whole ball of wax).

William Patry said...

Thank you anonymous, I usually suffer such swipes in silence

John W. Dozier Jr. said...

Mr. Levy's actions of attacking the demand letter have resulted in his very same client being sued in federal court in Michigan in yet another lawsuit against the website, apparently with no prior notice. His client complains in his blog that the suit was filed "without warning". These are the exact consequences I predicted in my response to Levy. And it brings to the forefront of this discussion the concept of "judicial economy", and the likely fact that in the future Public Citizen's clients will just be sued without notice, contrary to public policy considerations and resulting in an unfortunate burden on our judicial system. This is obviously not in the best interests of their clients, although this new lawsuit does provide fodder for Public Citizen's publicity machine to reach out to its constituency to raise money. And, to the extent the pertinence to this blog is not clear, this is a second reason why the "fair use argument" will not fly with the courts. So, from this day forward, it is likely Public Citizen and Levy won't have the luxury of trying to resolve legal issues for their clients before suit.

John W. Dozier, Jr. said...

Bill...I appreciate the discussion on this very important issue. Maybe some minds will be changed, maybe they won't. I suggest that, in the spirit of open and fair debate, you add a short and appropriate note to your introductory comments pointing out that the first, and only, US Federal Court decision on this point has just confirmed our position that lawyer cease and desist letters ARE subject to copyright protection. That should put an end to this issue, or at least to the original comments relating to copyright misuse. Thanks.

Your readers can read the decison from a 9th Circuit District Court, now adopted into a final judgment, in pertinent part at http:///www.dozier-internet-law-pc.com.

This decision was reached in November, about a month after your original post, and finalized by a Federal Court Order and Final Judgment in December.

William Patry said...

Thanks, John, I think publishing your comment as I just did gives readers all the information and leads they need and that you requested

Anonymous said...

Check out the Dozier Internet Law Blog:

http://johndozierjr.typepad.com/dozierinternetlaw/

Seems fair.

Anonymous said...

If Cease and Desist letters are covered under copyright, why can chillingeffects.org post them? Many of the posted C&D letters include the "copyright notice" at the bottom. Has anyone ever challenged chillingeffects on this issue?

William Patry said...

Fair use