Copyright threats in C&D letters

Here is a link to an account of a cease and desist letter written by  Donald Morris of a firm called Dozier Internet Law.  The letter complains that a website defamed Dozier's client, DirectBuyCd.  The letter concludes by asserting copyright in its contents and claiming that republication would subject the recipient to further causes of action. (Public Citizen's response is at the bottom of the page, and here is the Dozier firm's reply.)

The copyright threat is not incoherent, but neither is realistic.  William Patry thinks it is misuse, which is a defense to infringement.  I agree, and I believe reproducing the letter is fair use, along the lines of the 9th Circuit's conclusion that Jerry Falwell's reproduction of Larry Flynt's parody of him was fair use. (796 F.2d at 1156).   

I do not know how often C&D letters assert such a threat.  (Click here for a threat letter including a similar notice, sent to "The Smoking Gun" regarding its exposure of James Frey.)  But I agree that the practice is contrary to the purpose of copyright law, and in some cases might deter recipients from shedding light on C&D letters that go too far.  Such letters may disrupt legitimate free expression, so they should be subject to scrutiny.  That means the practice of asserting copyright to keep such letters hidden should be stopped. The question is how.

I don't think current rules prohibit this tactic. 

One comment on the Patry blog suggests the letter violates MR 4.1.  But either the firm or the client has rights in the letter at fixation (my guess is that it is not a work for hire so the firm has the rights). To allude to a claim asserting those rights is not to make a false statement; even if it were, it would be one of law, which is typically not actionable and is a very risky theory for discipline.  Rules governing the filing of frivolous claims seem not to extend to such pre-filing letters, which instead might fall within the "litigation privilege" established by rules such as California's Civil Code 47(b).  Rules governing impermissible threats, such as Cal. R. Prof. Conduct 5-100, don't fit very well either.

Nevertheless, the public and the bar have an interest in monitoring such cease and desist letters to ensure that they do not wrongly limit the exchange of ideas and opinions.  The recipient of this letter knew enough about the law to obtain assistance, but other recipients may not be so savvy. Courts have an interest as well; Judge Kozinski should know how his opinion in Fair Housing Council of San Fernando Valley v. Roommates.com, LLC, is being used.

There is a case here for a disciplinary rule prohibiting threats aimed at reproduction of such letters, a prohibition that should be carefully tailored not to chill the substance of the letters.  Here, as a first cut, is some proposed language; I am inclined to add it to MR 4.3, which already addresses advice to unrepresented parties:

"In dealing on behalf of a client with a person who is not represented by counsel a lawyer shall not . . . . (b) explicitly or implicitly threaten the recipient of any communication from the lawyer with legal action based on the reproduction, performance, or display of that communication." 

Reproduction and display should be self-explanatory; I include performance to pick up voice mails, though that probably is not vital.  No doubt this can be improved, but it may be useful as a starting point.

DM

Comments

[Eric Goldman]

Plaintiffs should be accountable for their actions. So why limit the restriction to letters to *unrepresented* parties? IMO, the effort to use copyright as a backdoor way to conduct enforcement actions in secret should be impermissible across the board. Eric.

[Bill Gallagher]

This is a classic! I first ran across this tactic several years ago when defending a client who had received such a C&D letter claiming copyright in the text--and the client immediately posted it to the web. I agree that this type of "guerilla" resistance to tenuous claims in IP C&D letters is warranted, and may even be very effective. Mocking lawyer over-reaching can work. I even teach my IP students not to write anything in a C&D letter they wouldn't want posted to the web.

One further issue for consideration though: my current empirical research-in-progress on "strategic intellectual property litigation" shows how lawyers representing IP owners routinely use tactics that, while arguably not unethical, do effectively squelch speech and competition--and that's precisely the intent. Thus, the problem addressed in this post is more widespread than the claim of copyright in a C&D letter--and it is more challenging to either resist or prohibit by means of ethics rules.

[John Steele]

David,

While I agree with the views of you and the commentors (hi, Eric & Bill), it seems to me that this is better addressed by substantive law than by revisions to the ethics rules. Any thoughts on the pros and cons of using ethics rules or substantive law on this point?

[David McGowan]

I agree with Eric that the tactic is no more commendable when aimed at represented parties, but I think it is less threatening, which is why I suggested a narrower approach. I would have no objection to making it a stand-alone rule.

I think an ethics rule is more likely to get something done than a revision to copyright law. The statute is already riddled with too many rifle-shot provisions (does anyone teach section 114 any more?) and the problem is really not so much the default copyright rules but a particular form of pre-litigation tactic. I would prefer such a rule to a copyright rule governing, for example, business letters.

DM

[John W Dozier Jr, Esq.]

FEDERAL COURT RECOGNIZES COPYRIGHT RIGHTS IN AUTHOR OF LAWYER CEASE AND DESIST

You can find the Dozier Internet Law commentary, comments, and a copy of the decision linked at our homepage at www.cybertriallawyer.com.

Interesting how you law professors jump to the assumption that Mr. McGowan is right on the law and then decide to post your thoughts for posterity about our law firm's ethics in asserting a legal claim for which we were correct in our position.

If you have comments on the issue, you are of course welcome to join in the debate in a quality way, but couching the discussion in terms of an ethics violation is a bit much. Don't you teach your law students to consider both sides of an argument before jumping to conclusions?

So, is there some remedy available to us for this blog...like an apology?

John W. Dozier, Jr., Esq.
Dozier Internet Law
President