William Patry has an excellent post today called "Misuse via Cease & Desist Letters." It discusses the recent trend of lawyers asserting copyright in cease-and-desist letters in an effort to prevent posting of those letters on the Internet.

Patry mentions a recent legal threat to an online publisher, Justin Leonard of Scottsdale, Arizona. Leonard publishes three websites: infomercialblog.com, infomercialratings.com, and infomercialscams.com. These websites give users of infomerical products the opportunity to voice their criticisms and defenses of these products and associated sales tactics.

On September 21, 2007, DirectBuy, a company that apparently helps customers to buy furniture directly from manufacturers, sent a cease-and-desist letter to Leonard through its lawyers, Dozier Internet Law, P.C. The letter claims that Leonard and his users had defamed the company by referring to its direct-buy plan as a "scam" and a "nightmare." It threatens a lawsuit unless Leonard removes "all defamatory and disparaging statements" about DirectBuy from his websites and compensates the company for its attorneys fees and costs. Most interestingly, the letter ends with an assertion of copyright on behalf of the law firm:

Please be aware that this letter is copyrighted by our law firm, and you are not authorized to republish this is any manner. Use of this letter in a posting, in full or in part, will subject you to further legal causes of action.

Public Citizen Litigation Group got involved on behalf of Leonard. Lawyers for the group not only posted the Dozier firm's letter, but sent a powerful (yet cheeky) response entitled "How not to write a cease and desist letter -- an open letter in response to your September 21 threat." The response not only disputes DirectBuy's defamation claim and its expansive reading of the important recent CDA 230 case, Fair Housing Council v. Roommate.com, 489 F.3d 921 (9th Cir. 2007), but also takes the Dozier firm to task for its copyright warning, calling it "the worst thing about your letter". The Public Citizen lawyer continued:

Such a posting [of the letter] would be fair use. Moreover, inquiry by my colleague Greg Beck produced the interesting information that the copyright in the letter has not been registered. Sadly, according to what you told him, you have been successful in this intimidation because none of your cease and desist letters has ever been posted.

There is always a first time. We are posting the letter on the Public Citizen web site (the letter can be found at http://www.citizen.org/documents/directbuycd.pdf) so the public can assess our differences by comparing your contentions with our responses. By this letter, we are inviting you to test the validity of your theory that a writer of a cease and desist letter can avoid public scrutiny by threatening to file a copyright law suit if his letter is disclosed publicly on the Internet.

Patry adds an interesting dimension to the case by arguing that the Dozier firm's letter constitutes a misuse of copyright. Specifically, he argues that "it is misuse to assert copyright in a letter for the sole purpose of suppressing speech that is either non-infringing or fair use."

Copyright misuse is an equitable doctrine that precludes enforcement of a copyright during the period of misuse. In order to establish the defense of misuse, a defendant in a copyright infringement action must show that the copyright is "being used in a manner violative of the public policy embodied in the grant of copyright." Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 978 (4th Cir. 1990). Patry's assertion, as well as the debate it sparked in the comment section to his post, led me to do some quick research. Here's what I found:

Most of the cases dealing with copyright misuse, and all of the important appellate court decisions, involve either a copyright owner committing an antitrust violation or imposing highly restrictive licensing agreements on licensees. Moreover, the doctrine is relatively new, and there is still disagreement among courts about its proper scope (e.g., over whether an antitrust violation is required). At first glance, these are good reasons to question whether the misuse doctrine extends as far as Patry contends.

That said, at least one court has held that threatening a copyright lawsuit to discourage use and publication of materials not protected by copyright constitutes misuse. Shloss v. Sweeney, No. C 06-03718, slip op. at 15-16 (N.D. Cal. Feb. 9, 2007). In that case, a scholar researching Lucia Joyce (James Joyce's daughter) sued Stephen Joyce, an agent of the Joyce estate, seeking a declaratory judgment that he had engaged in copyright misuse. At the motion-to-dismiss stage, the court held that allegations that Joyce had used the threat of copyright litigation to intimidate the scholar from using "non-copyrightable fact works such as medical records" and "works to which [the estate] did not own or control copyrights, such as letters written by third parties," were sufficient to establish copyright misuse. Id. at 16.

The Shloss case is not dispositive of the question whether a cease-and-desist letter that disregards a strong fair use defense can be copyright misuse. It is merely a district court case, and its facts are distinguishable because it involved someone trying to use his copyrights to assert control over facts (and works owned by other people), not a countervailing claim of fair use. Determining whether a use is "fair" or not requires a notoriously fact-sensitive analysis that's difficult to call ahead of time. A court might be hesitant to brand someone a copyright "misuser" for doing this analysis wrong. On the other hand, it is not unheard of for a court to view a use as so obviously fair that claiming otherwise is sanctionable conduct. See Online Policy Group v. Diebold, Inc., 337 F. Supp.2d 1195, 1204 (N.D. Cal. 2004). Also, the "fair use is hard to call" argument misses Patry's essential point -- the lawyer here is misusing copyright not because he gets the fair use analysis wrong, but rather because his assertion of copyright is aimed at suppressing speech rather than vindicating the firm's copyright.

It's an interesting idea, but perhaps an academic one. As one of Patry's readers ( LKB) pointed out, what's the point? In the case of a letter like this one, the claim of misuse is predicated on establishing the affirmative defense of fair use. So, if you prove fair use, you defeat the infringement suit and you don't need to establish a second defense of copyright misuse, which a court would push aside as unnecessary anyway.

Perhaps the real lesson to take away from all this is as follows: Don't be bullied by a lawyer threatening you with a copyright infringement suit for republishing the contents of a threatening letter. One way or another, this is an extremely weak legal argument, and one that the lawyer is extraordinarily unlikely to pursue.