[Politech] Copyrighting cease and desist lawyer nastygrams? [ip]

From: Declan McCullagh (declan@private)
Date: Thu Jan 06 2005 - 07:00:12 PST

[Yes, the C&D letter is copyrighted; the real question is (or should be) 
  whether copyright law extends so far as to prevent the recipient from 
redistributing it freely. ChillingEffects.org gets around this problem 
by providing a modicum of commentary with the nastygram. --Declan]

-------- Original Message --------
Subject: Copyrighting Cease and Desist Letters?
Date: Wed, 5 Jan 2005 13:43:38 -0800
From: Joseph Lorenzo Hall <joehall@private>
Reply-To: joehall@private
To: Declan McCullagh <declan@private>, Dave Farber <dave@private>

Hi Declan, Dave,

I thought either or both of you would be interested in this.
Attorneys for a resort are claiming that a cease and desist letter
that they sent in a trademark issue is covered by copyright and,
therefore, not forwardable.  (The below is written in [Markdown][0]

best and happy new year, Joe

[0]: http://daringfireball.net/projects/markdown/



### Copyrighting Cease and Desist Letters? ###

*Can attorneys claim copyright in cease and desist letters they send
(to prevent them to be forwarded)?*

[TechDirt][1] has an interesting story up, ["Since When Is It Illegal
To Just Mention A Trademark Online?"][2]

The trademark issue between [Urinal.net][5] and the [Marco Beach Ocean
Resort][6] is not what I find interesting (that is, it's clear that
the site is using it in a descriptive sense, and in terms of trademark
jurisprudence, this is [fair or nominative use][7].)

What interests me is the following (from the TechDirt post):

> I asked the maintainers of the site if I could see a copy of the
   cease & desist, but apparently **the lawyers claim that the cease &
   desist is copyrighted to them and that the recipient is not allowed
   to forward it to anyone.** I wonder if that means they can't even
   forward it to a lawyer? So, as far as I can tell, the [Marco Beach
   Ocean Resort][6] seems to think that [...] any cease and desist is
   to be some sort of "secret" cease & desist that can never be shown
   to anyone, which seems to go a bit beyond what rights copyright
   gives them.

This is pretty silly and, if true, would have major implications for a
site like [ChillingEffects.org][8] (created by w00t! [Wendy][9]).

First, to file a copyright infringement lawsuit against
[Urinal.net][5], [MBOR][6]'s attorneys would have to register the
copyright in the C&D with the copyright office, and there's a small
but real chance that it would not be issued (sometimes, under a "rule
of doubt" the Copyright Office will issue the registration but send a
letter saying that the work may or may not be copyrightable. A court
would have to determine this for sure.).

Attorneys claiming that they have a copyright in a C&D? Well, lets
check the four factors of fair use that would be weighed in a
copyright infringement lawsuit:

   * **purpose of the use** - (I was trying to avoid having to go to or
     link to [Urinal.net][5], but I just did.) The only thing
     commercial about this website is the Google AdWords at the bottom
     (they do have a sad-if-true and funny-any-which-way ["Career
     Opportunities" page][10]: "Throw your career in the toilet! -
     Urinal Dot Net is Hiring!").

     It would seem that this site's use of a C&D - likely for display
     purposes, if any - would more than likely be non-commercial (I
     can't imagine that they'd start to sell viewings of the C&D letter
     or start selling t-shirts of the C&D!).

   * **nature of the work** - Unless these attorneys are damned
     creative, I can't imagine that there's much in the way of
     creativity in a trademark-related C&D letter. It would seem that
     most of the text would be factual and legal prose (that they
     likely ripped off of other attorneys within or without of their

   * **amount of work taken** - Well, to publish the C&D, they'd want
     to publish the whole thing, like a scanned image.

   * **effects on market for the work** - The idea of attorneys selling
     their carefully crafted C&D letters is hilarious. I can't imagine
     anyone would buy them, much less how they'd advertise them for

So, in short, only one of the four factors (amount) would seriously
weigh against [Urinal.net][5]. They should post the C&D to let the
world see what ridiculous claims the lawyers for [Marco Beach Ocean
Resort][6] are making.

[1]: http://techdirt.com/
[2]: http://techdirt.com/articles/20050105/0132239_F.shtml
[3]: http://tygar.blogspot.com/
[4]: http://www.bloglines.com/blog/tygar
[5]: http://urinal.net/
[6]: http://www.marcoresort.com/
[7]: http://www.publaw.com/fairusetrade.html
[8]: http://www.chillingeffects.org/
[9]: http://wendy.seltzer.org/blog/
[10]: http://urinal.net/jobs.html

Joseph Lorenzo Hall
UC Berkeley, SIMS PhD Student
blog: http://pobox.com/~joehall/nqb2/

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