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
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
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
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.
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.
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.,
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.
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
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.
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.
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
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
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.
4. Id.; http://www.thenationaldebate.com/other/NYTCorrections2.htm
5. Chilling Effects, "Mir Internet Marketing
Claims Copyright Infringement (#34)," http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=1073.
The link leads to the take-down letter on the Chilling Effects site.
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
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
12. www.sincereamore.com; http://www.sincereamore.com/main_content/disclaimer.html
13. Chilling Effects, "Pets Even Unfriendlier?,"
15. Chilling Effects, "Complainant Asks Google
to Delist Critical Website," http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=1254.
17. Chilling Effects, "Chick Tracts Complains
of Cthulhu Infringement," http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=1226.