Commentary

A Preliminary Report on the Chilling Effects of "Cease and Desist" Letters

By Tricia Beckles and Marjorie Heins

When does copyright control end and "fair use" begin?

Fair use allows students, artists, journalists, and others to borrow and quote from copyrighted material without permission if they are doing it for purposes like commentary, parody, or news reporting. But the contours of this fair use defense to copyright infringement are vague, and in the real world, most disagreements don't get decided in court. Instead, copyright owners - especially corporate ones - send threatening "cease and desist" letters to those they think are violating their copyrights or trademarks. Needless to say, these letters do not advise the recipients that their borrowing might be fair use.

As part of FEPP's research into how well fair use is actually protecting artists, journalists, webbloggers, and others, we have been examining an extensive database of cease and desist letters put together by the Chilling Effects Clearinghouse (www.chillingeffects.org). Chilling Effects, a joint project of the Electronic Frontier Foundation and six law school clinical programs, serves as a resource for those who want to know what the law says about areas such as fan fiction, copyright and fair use, domain names, trademarks, anonymous speech, and defamation on the Internet. The Web site's depository contains almost 800 cease and desist letters, going back to 1997.

We analyzed 131 cease and desist letters deposited with Chilling Effects during the first five months of 2004 and chose seven typical ones for this preliminary report. Obviously, this is not a scientific sample: those who deposit the letters that they've received with Chilling Effects are likely to be more knowledgeable about their rights than most. And seven is far too small a number of experiences to yield accurate overall conclusions. Nevertheless, we think even these very preliminary results are interesting and suggestive.

Many of the letters are actually not sent to the alleged wrongdoers, but to Internet Service Providers or search engines like Google. Under §512 of the Digital Millennium Copyright Act (the "DMCA"), ISPs must remove Web sites or other online material once they receive a "take-down" letter from a copyright owner saying that the material is copyright-protected. ISPs can be liable for copyright infringement simply for hosting this material, unless they comply "expeditiously" with these take-down letters.1

Seven Examples

Following are descriptions of seven incidents in 2004 based on cease and desist or take-down letters on the Chilling Effects site.

r A March 9, 2004 take-down letter from The New York Times to Verio, the Internet Service Provider for The National Debate (www.thenationaldebate.com) complained that The National Debate infringed on the Times's copyright "by displaying a 'New York Times corrections page,'" and by instructing others in how to "similarly infringe upon The New York Times's federally protected copyrights."2 The page in question, www.thenationaldebate.com/other/NYTCorrections.htm, mimics the official New York Times correction page.

The National Debate calls its version "a parody intended to express through satire a dissatisfaction with a policy of The New York Times and was in no way intended to confuse people that it was a legitimate New York Times on the Web page."3 After a tense period, and with assistance from friends on other sites that agreed to "mirror" the National Debate site, the Times evidently abandoned its efforts to eliminate The National Debate's parody version of the corrections page.

TND described this incident as "a misguided attempt to use copyright law to silence criticism of The New York Times," and reported:

FIRST ROUND: Blogosphere 1, New York Times - DMCA 0
NEXT MATCH: Blogosphere v. New York Times - Columnist Correction Policy.4

Obviously, TND was not intimidated by the cease and desist letter, and the Times backed off. The parody site would have a strong claim of fair use had the Times chosen to litigate.

r In a January 28, 2004 take-down letter to Google, Mir Internet Marketing, which sells Web optimization products, claimed that ProLinks, Inc. (www.productivitylinks.com) used 14 words of copyrighted text from Mir's site. The words were: "Search engines are carefully tuned information management systems" and "not a process of manipulation or."5 These phrases, when typed into Google, produced a link to the ProLinks site.

Google responded by providing the following notice when these phrases are used in Google searches: "In response to a complaint we received under the Digital Millennium Copyright Act, we have removed 1 result(s) from this page. If you wish, you may read the DMCA complaint for these removed results."6 In addition to this removal of the site's link from Google's search results, the link cited in the letter as containing copyrighted text no longer works.7

In this case, the copyright owner succeeded in suppressing words that ProLink was using to market its products. ProLink didn't have much of a claim for fair use, though the copying of 14 words that are commonly used in describing Web products might be considered so minor as not to amount to a copyright violation. Although Mir would probably argue that ProLink's copying these phrases took traffic away from Mir's site, the nature of the Internet is such that no online business can really assure that potential customers won't wander off to other sites.

r In a March 18, 2004 letter to one Jarrett Graham of www.paypalredirectpro.com, eBay, which owns the PayPal trademark, claimed domain name and trademark infringement. eBay said paypaldirectpro would cause customer confusion - the essence of a trademark law violation. To get their point across, eBay's lawyers also warned: "the Anticybersquatting Consumer Protection Act provides for serious penalties (up to $100,000 per domain name) against persons who use, sell, or offer for sale a domain name that infringes or dilutes another's trademark."8

Going to www.paypalredirectpro.com today results in an "under construction" message, which suggests that Graham was sufficiently intimidated to take down his site. It's difficult to imagine much of a claim for fair use here, although some courts have held that companies cannot use trademark law to suppress Web sites that parody or criticize them (e.g., Walmartsucks.com).9

r In a January 28, 2004 cease and desist letter to the owner of the www.sincereamore.com site, lawyers for CBS television asserted that the site's transcripts from the television show Caroline in the City, along with fan fiction summaries of the episodes, infringed CBS's "exclusive copyrights and trademarks." The letter somewhat patronizingly advised that "you may not have been aware of the applicable laws" - without mentioning, of course, that fair use is also part of the applicable law. Although CBS threatened legal action if the information were not removed, the letter assured the site owner that CBS was "quite happy to know" that Caroline in the City had such loyal fans, and to "please understand that it doesn't bring us any pleasure to send legal letters to our fans."10

The site owner removed the transcripts and fan fiction, resulting in an outcry from fans.11 In August, a new owner bought the site and seems to have re-posted summaries of episodes (though not transcripts). She wrote: "woo, I got rid of that depressing letter Ann posted a few months ago. And if you look closely on the left, you're in for a little surprise: The dearly missed section is back!!" There is also a disclaimer explaining that the site is completely nonprofit and has no connection with the producers of the show.12

Fan sites and fan fiction are popular forms of commentary on art and entertainment, and there is a strong argument that their plot summaries, quotes, and other borrowings constitute fair use. Certainly, it's difficult to understand how this activity can adversely affect a television program. In addition, it's important that producers not have total control over cultural commentary on their work, which by necessity often include quotes and borrowings.

r In a January 27, 2004 letter, Pet Friendly, Inc. (a company that designs, manufactures, and markets pet products) told Pet Friendly Rentals of San Diego, California that its use of the term "Pet Friendly" amounted to trademark infringement. Pet Friendly, Inc., calling itself "the exclusive supplier of rope chew toys" for pets "to the largest retailer in the world," claimed that Pet Friendly Rentals' use of "the name Pet Friendly™ will cause the public to mistakenly assume that [their] business activities originate from, are sponsored by, or are in some way associated with Pet Friendly, Inc."13

Despite the letter, Pet Friendly Rentals is still up and operating.14 A search on Google also yields www.petfriendly.ca (pet-friendly Canadian vacation rentals) and www.petfriendlytravel.com/Pages/states/georgia/georgia.html (ditto for the State of Georgia).

"Pet friendly" is a common enough term that trademark confusion is unlikely. Just as Fox News couldn't stop Al Franken from using the term "fair and balanced," so it's difficult to maintain that any one company can own the term "pet friendly." Evidently, Pet Friendly Rentals was not intimidated, despite the threatening tone of the cease and desist letter.

r In an April 14, 2004 letter from Waathiq & Associates' attorney to Google, Waathiq demanded that Google remove links and search terms relating to David Waathiq and leading to www.worldwidewarning.net, which contains numerous vociferous allegations against Waathiq's business practices.15 It is not clear how Google responded, since using David Waathiq as a search term still leads to the WorldWideWarning site.16 In this case, it doesn't seem that defamatory (but arguably true and therefore legal) expression about Waathiq was chilled.

r Finally, a February 5, 2004 letter from Chick Publications, Inc. to OSP System Management Enterprise, Inc (a Web hosting company) claimed that www.howardhallis.com, a comedy and comic-book site, contained copyrighted artwork created by Jack T. Chick, and demanded its removal.17 OSP notified Hallis, who deleted Chick's artwork, evidently assuming that he had no right to use it for purposes of parody. He wrote: "Taken down due to legal stuff. It will never appear again. … Sorry folks. Cthulhu destroys all that you love!" He added: "I myself don't agree with Chick's fundamentalist Christianity … The piece was done in fun, but you got to realize that the laws can censor you. Just look what's happening to Howard Stern."18

On this same Web page, Hallis has posted letters from his fans protesting the suppression of his parody. One reader wrote: "i was very impressed by your 'Cthulhu Chick Tract' - i thought it was hilarious, and a nice spoof on the original (which i consider intellectually insulting). i am sorry that you had to take the page down. However, i am also surprised, as i thought that 'fair use' laws allowed the modification of copywrited material for parody purposes."19

As this reader suggests, the parody may well have been protected by fair use. Since Hallis felt forced to remove it, this is a good example of how the DMCA's take-down provision undermines fair use.

Preliminary Conclusions

Even based on this small number of examples, we can infer that cease and desist letters sometimes - but not always - have chilling effects on speech that might qualify as fair use. Critical factors in determining whether the recipient of such a letter will comply seem to include awareness that fair use provides a defense; support from the community; and a non-risk-averse temperament.

DMCA take-down letters seem more likely to have consistent chilling effects. This is because the law requires the ISP to remove the material once the letter (if it's in proper form) has been received, without actual proof of a copyright violation, and then puts the onus on the Web speaker to assert his or her rights. Yet even here, we found one example of a take-down letter (regarding the WorldWideWarning site) that did not result in suppression of the accusations against David Waathiq.

As FEPP's research continues, we will try to learn more about how artists and others react to cease and desist letters, and what kind of support and information is available for those who receive them.

October 5, 2004

For more on FEPP's Fair Use Research Project, or if you have a "cease and desist" experience to report, go to The Fair Use Project

NOTES

1. The DMCA does require ISPs to "notify the subscriber" whose material has been removed as a result of §512's notice-and-take-down rules. If the subscriber submits a "counter-notification" in the form prescribed by the law, the ISP must then undo the removal, unless the company that originally complained goes to court. See "The Progress of Science and Useful Arts": How Copyright Today Threatens Intellectual Freedom, p. 39 (noting that "there is no time specified for notifying the subscriber ('promptly' is all the DMCA says), and many individuals do not have the legal knowledge or wherewithal to follow the procedure laid out by the law. Meanwhile, the mandatory take-down may last indefinitely. It allows the industry to short-circuit lengthy and burdensome lawsuits, but risks suppressing a great deal of legitimate expression in the process.")

2. Chilling Effects, "NYT Targets Parody Site with DMCA Cease & Desist," http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=1178.

3. http://www.thenationaldebate.com/other/NYTCorrections.htm (visited 10/4/04).

4. Id.; http://www.thenationaldebate.com/other/NYTCorrections2.htm (visited 10/4/04).

5. Chilling Effects, "Mir Internet Marketing Claims Copyright Infringement (#34)," http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=1073.

6. http://www.google.com/search?sourceid=navclient&ie=UTF-8&q=%22Search+engines+are+carefully+tuned+information+management+systems%22. The link leads to the take-down letter on the Chilling Effects site.

7. http://www.productivitylinks.com/WebServices.html.

8. Chilling Effects, "eBay Blocks ReDirectPro," http://www.chillingeffects.org/domain/notice.cgi?NoticeID=1184. On the Anticybersquatting Consumer Protection Act, see http://www.submerged-ideas.com/litigation/anticybersquat.htm (visited 10/4/04).

9. See discussion of the "sucks.com" phenomenon in "The Progress of Science and Useful Arts."

10. Chilling Effects, "Caroline in the City Fan Fiction," http://www.chillingeffects.org/fanfic/notice.cgi?NoticeID=1067

11. Sincere Amore correspondence page, "Fanfic and Transcript Removal," http://www.sincereamore.com/board/viewtopic.php?t=462 (visited 10/4/04).

12. www.sincereamore.com; http://www.sincereamore.com/main_content/disclaimer.html (visited 10/4/04).

13. Chilling Effects, "Pets Even Unfriendlier?," http://www.chillingeffects.org/domain/notice.cgi?NoticeID=1065.

14. http://www.pet-friendly-rentals.com (visited 10/1/04).

15. Chilling Effects, "Complainant Asks Google to Delist Critical Website," http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=1254.

16. http://davidwaathiq.worldwidewarning.net (visited 10/1/04).

17. Chilling Effects, "Chick Tracts Complains of Cthulhu Infringement," http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=1226.

18. http://www.howardhallis.com/bis/cthulhuchick (visited 10/4/04).

19. Id.