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Commentary

Second Preliminary Report on Fair Use and "Cease and Desist" Letters

By Tricia Beckles and Marjorie Heins

In our first analysis of the possible "chilling effects" of "cease and desist" letters, published in October 2004, we found that some of the letters deposited with the Chilling Effects Clearinghouse (www.chillingeffects.org) suppressed speech that might not, in fact, have violated copyright law. The critical factors in determining whether a recipient would comply with the letter's demand seemed to include knowledge of the fair use defense, community support, and a non-risk-averse temperament.

In this second preliminary report, we analyze the results of 10 in-depth telephone interviews of individuals who sent the cease and desist letters they had received to the Chilling Effects site, as well as four letter recipients who filled out an online survey. Chilling Effects Clearinghouse depositors were sent an email by a clearinghouse administrator, informing them of our project and asking for volunteers willing to participate in a telephone interview or written survey. Twenty-five people who were recipients of cease and desist letters alleging copyright and/or trademark infringement responded to that e-mail; four filled out the online survey, and 10 telephone surveys have been conducted so far.

As discussed in our first preliminary report, fair use allows individuals to borrow and quote copyrighted material without permission if they use the material for commentary, parody, news reporting, and other similar purposes that are fair, and don't interfere unduly with the commercial market for the copyright-protected work. 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.

Of the 14 people who participated, 11 were aware of the fair use defense, while three were not. Of the 11, four had a basically accurate understanding of fair use. (One respondent, for instance, said: "In certain limited circumstances, one can use copyrighted material. For example, if the material is for educational purposes - if quotes are not that extensive, if you add commentary - it's fair use.") Four were "partly accurate" in their understanding of fair use; and three were seriously off the mark (e.g., "If something is in the public domain, you can use it as long as you don't profit from it. If it is privately owned, you need to seek permission to use it for any purpose.").1

Of the eight respondents who had a "basically accurate" or "partly accurate" understanding of fair use, only two relied on fair use specifically when they posted the allegedly infringing information on their websites. Both of those sites consisted essentially of commentary (including blogs) - a classic form of fair use.

Interestingly, accurate understanding of fair use did not have a strong relationship to a person's refusal to acquiesce in the demands of a cease and desist letter. Of the eight individuals who had a basically accurate or partly accurate understanding of fair use, four acquiesced and four did not.

LDS is not for Loomis

Even with a basic understanding of fair use (and a reasonable fair use defense), one of the people we interviewed still acquiesced in the demand to remove allegedly infringing information. Roger Loomis, a former Mormon, had established his site (www.LDS4U.com) as an "unauthorized investigator's guide to The Church of Jesus Christ of Latter-day Saints" in order to share his thoughts on the Mormon Church. Mr. Loomis's Internet Service Provider (ISP) received a cease and desist letter from attorneys for Intellectual Reserve, Inc. (IRI), which demanded the immediate removal of copyrighted "missionary discussions." When the ISP forwarded the letter to Mr. Loomis via e-mail, it requested that he "remove the items ASAP."2

The missionary discussions in question included text quoted from official lessons young Mormons are asked to discuss with people they encounter on their travels. Those discussions are aimed at informing non-Mormons about the Mormon faith.

When asked why he acquiesced and removed the quoted text, Mr. Loomis said that it was much easier to remove the material than to get into a "big battle," especially since he was worried about paying the IRI's legal fees if he received an unfavorable ruling. The risk of paying those fees was not worth the "emotional time commitment." At the same time, he thought that he would have had a fair chance of prevailing if he had been able to afford a good lawyer.

Mr. Loomis's decision not to risk paying legal fees and his desire to avoid the emotional toll involved in a legal fight are sentiments shared by many cease and desist letter recipients.

Stalkers Threatened by Gaelic Dreams

One of our interviewees who specifically relied on fair use was the proprietor of the Stalkers Nest site, a "web ring of people" who read certain types of fan fiction. According to the site's operator, fan fiction stalkers prod authors to write new chapters of fiction. A section of the site included current works in progress. In that section, there was an "X-Files" fan fiction titled "Gaelic Dreams."

In November 2002, Gaelic Dreams Imports, an importer of Scottish, Irish, Welsh, and English goods, e-mailed Stalkers Nest and told them that "all references to the name 'Gaelic Dreams' must be immediately removed from your website" since Gaelic Dreams Imports owned both the copyright and domain name registration. They warned that they would "prosecute any and all who knowingly or through misdirection violate the copyright laws of the US and international community."3

The Stalkers Nest operator contacted the Chilling Effects Clearinghouse; then informed Gaelic Dreams Imports that she had done so. She told us that after this, "they didn't bother me any more," and that she believed the people at Gaelic Dreams Imports "were just trying to threaten without much legal proof behind them. I was glad that my friends suggested that I report them, so that I did feel more secure." Some time later, the author of the" Gaelic Dreams" story renamed the entry, partly because she was frightened after the import company contacted her.

The Chilling Effects Clearinghouse is not, in the official sense, a body to which one would "report" such an incident; it is an informational tool that publicizes cease and desist letters and allows individuals an increased knowledge of their legal situation. It also offers access to additional resources. One such resource is the Stanford Law School Center for Internet and Society (http://cyberlaw.stanford.edu). Stanford's Cyberlaw Clinic, part of the Center for Internet and Society, provides legal representation by supervised Stanford Law students in areas involving the public interest and technology.

Bank of America v. Piggy Bank of America

The Stanford Cyberlaw Clinic represents Caroline O., the proprietor of www.piggybankofamerica.com, "your online resource for quality ceramic piggy banks." A week after purchasing the www.piggybankofamerica.com domain name in the fall of 2002, she received a cease and desist letter from Bank of America's legal department stating: "it appears that you have intentionally targeted Internet users who are attempting to reach Bank of America's website. It is our opinion that your registration and use of piggybankofamerica.com is a violation of Bank of America's service mark rights and is misleading to the public. We demand that you and all other entities associated with you immediately discontinue the use of this domain name and that you promptly transfer to us your registration for this domain name and any others including a variation of Bank of America to us."4

Ms. O. said she "panicked and felt helpless" upon receiving the letter. One lawyer told her that it would cost $50,000 if she wanted to contest the Bank's position, but as a small business owner, she felt she could not take the risk. She had several sleepless nights and "finally felt like I should just give it up and turnover my ownership to Bank of America." However, after doing some Internet research, she posted information about her case on a message board and was referred to the Stanford Cyberlaw Clinic, which agreed to represent her pro bono.5

With the clinic's assistance, Ms. O. was able to keep the domain name and began to feel better about the situation. Although she had a positive outcome and it has already been two years, she is "still distracted by the notion that one day Bank of America is going to sue." Ms. O. describes her situation as "haunting" and hopes that "there will be laws to protect small businesses that go through such situations."

Finding Help and Accepting Risk

All of our interviewees told someone about the cease and desist letter; but, unlike Ms. O, many did not retain legal counsel. Of our 14 participants, nine consulted lawyers, but only three retained them (one was on a pro bono basis, while a second was paid for by membership in a trade organization).

Despite the lack of legal counsel, only five of the 14 people we talked to acquiesced in the cease and desist letters' demands even though they thought they had a right to post the material in question. Nine did not acquiesce. They included the three who retained attorneys. The six who did not acquiesce and who did not have counsel all seemed to share a "no surrender" attitude along with a fundamental belief that what they were doing was correct regardless of whether they had an awareness of fair use as a defense or whether their definition was accurate.

Six of our interviewees said they would do it all over again and take the risk of receiving a cease and desist letter. Seven said they would not do it again and one was unsure. Three out of the five who did acquiesce and removed the allegedly infringing material would not take the risk again, while one respondent was unsure. Only one of the five who acquiesced was willing to take the risk of having a similar situation happen again.

"Just an Average Joe"

Larry Smith6 is the former owner and operator of www.mannyramirez.com. He started the site in the mid-1990s on his college server. Mr. Smith called the site the "first real fan site" where people could support Manny Ramirez and share messages.7 In January 2002, Mr. Smith acquired the www.mannyramirez.com domain name; he moved the content from his college server on to the new site around the end of April 2002.

A year later, he received a letter from Manny Ramirez's attorneys telling him to cease and desist in his use of the domain name since it "will cause the public to believe that this web address is operated, sponsored by, and/or authorized by, or is otherwise associated with [Manny Ramirez]."8 Mr. Smith consulted with various local attorneys but each required substantial fees. Ultimately, he represented himself and, after a "back and forth," came to an undisclosed agreement with Mr. Ramirez's attorneys.

Mr. Smith said that when he initially put the site, he "had no clue about the legality, I just put it up as a fan, I was ignorant [about this area of the law] and I didn't know that I could be taken to court." The experience has "soured" him on "superstars." He calls it "unfortunate when lawyers need to get in the way [when] at the end of the day you are only trying to be a fan."

Despite being disheartened by the situation, Mr. Smith said that although he is "just an average joe, [this situation] has educated me on trademark law and intellectual property. I know what to avoid, I know how to protect myself a little better."

Preliminary Conclusions

Our sample size for these telephone interviews was relatively small and, obviously, self-selected; thus, we cannot draw scientific conclusions. Nevertheless, the responses are illuminating. A non-risk-averse temperament, determination, and legal support all seem to correlate with the likelihood of one's resisting the demands of a cease and desist letter. Having an accurate understanding of fair use, on the other hand, does not seem to make a person more likely to resist the demands of a copyright or trademark owner.

The experience of Larry "Just an Average Joe" Smith underscores the importance of legal representation. Unable to afford a lawyer, Mr. Smith represented himself in settlement negotiations with Manny Ramirez's attorneys. Although he cannot disclose the terms of the settlement, Mr. Smith no longer operates the site; we can therefore infer that he acquiesced. He says that he gained "valuable knowledge that will inform his decisions in this area in the future." But whether his fan site would have qualified as fair use will never be known, because the issue was not litigated, and he did not have legal representation.

As our research continues, we will post further preliminary reports. The conclusion of our research will be a full-length policy report with recommendations for strengthening the ability of everyone to make legitimate fair uses of copyrighted works while at the same time protecting the rights of copyright owners.

February 2, 2005

For more on FEPP's Fair Use Research Project, or if you have had an experience with fair use or with a "cease and desist" letter (either as sender or recipient), please go to The Fair Use Project and fill out our survey.

NOTES

1. In fact, once something is in the public domain, it can be used for any purpose regardless of whether the purpose is for-profit or not-for-profit. If work is not in the public domain, part or all of it still might be usable without permission. One major reason that it might be usable is the concept of fair use for commentary, news reporting, and so on.

2. See http://www.chillingeffects.org/notice.cgi?NoticeID=352.

3. This letter is available at http://www.chillingeffects.org/protest/notice.cgi?NoticeID=480.

4. The letter is available at http://www.chillingeffects.org/domain/notice.cgi?NoticeID=460.

5. See the Clinic's description of the case at http://cyberlaw.stanford.edu/about/cases/udrp_cases.shtml.

6. Larry Smith is a pseudonym.

7. ESPN.com calls Manny Ramirez "arguably the best all-around right-handed hitter in the league."

8. The letter is available at http://www.chillingeffects.org/dmca512/notice.cgi?NoticeID=841.


The Free Expression Policy Project began in 2000 to provide empirical research and policy development on tough censorship issues and seek free speech-friendly solutions to the concerns that drive censorship campaigns. In 2004-2007, it was part of the Brennan Center for Justice at NYU School of Law. The FEPP website is now hosted by the National Coalition Against Censorship. Past funders have included the Robert Sterling Clark Foundation, the Nathan Cummings Foundation, the Rockefeller Foundation, the Educational Foundation of America, the Open Society Institute, and the Andy Warhol Foundation for the Visual Arts.

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