Perez Hilton's cease and desist letter to NOM: ignoring the fair use elephant in the room

I've obtained the original April 30 cease and desist letter from the attorney for Mario Lavandeira (aka Perez Hilton), demanding that the National Organization for Marriage stop using a three-second clip of footage apparently owned by Lavandeira in a NOM TV ad. The clip, from Lavandeira's video blog, features the celebrity blogger calling Miss California USA Carrie Prejean a "dumb [beep]" -- an example of what NOM criticizes as intolerance directed at those who oppose same-sex-marriage.

Here's the letter, from Lavandeira's counsel Todd Rubenstein of Morris Yorn Barnes & Levine, a transactional entertainment boutique in Los Angeles :

National Organization for Marriage
20 Nassau Street, Suite 242
Princeton, NJ 08542

Re: Perez Hilton / Copyright Infringement

To Whom It May Concern:

This law firm represents Mario Lavandeira a/k/a Perez Hilton.

We have become aware that without authorization or legal right, the National Organization for Marriage ("NOM") is using copyrighted footage owned by Mr. Lavanderia (the "Materials") in a commercial (the "Commercial") as part of a fundraising campaign for NOM. At no time did Mr. Lavandeira grant NOM permission to use or reproduce copyrighted material owned exclusively by Mr. Lavandeira.

This unauthorized, offensive conduct has caused and will continue to cause substantial damage to our client. Any unauthorized publication, reproduction or dissemination of the Materials constitutes an infringement of our client's copyright in violation of the U.S. Copyright Act, Title 17 of the United States Code Section 101, et seq., and exposes the copyright infringer, and anyone else acting in concert with him to civil liability,damages, injunctive relief and reimbursement of all attorneys' fees and costs incurred by our client in connection with any copyright infringement action. Section 106 of the Copyright Act provides in relevant part:

"[T]he owner of copyright under this [Act] has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work . . .(2) to prepare derivative works . . .(3) to distribute copies . ..and (5) to display the copyrighted work publicly."

Be advised that under 17 U.S.C. Section 101, et seq., NOW may be held liable to Mr. Lavandeira for up to $100,000 in statutory damages.

This letter is also copyrighted material owned by Mr. Lavandeira and may not be published or reproduced without Mr. Lavandeira's permission.

Mr. Lavandeira intends to protect the use of his copyright to the fullest extent allowable under law. Accordingly, demand is hereby made that NOM immediately: (i) cease and desist from any further use of the Materials in any manner or medium, including, but not limited to, in the Commercial; and (ii) confirm to this office in writing that you will comply with the foregoing.

We demand that you respond affirmatively and immediately, failing which we have been instructed to pursue all remedies available to us in law and equity to enforce Mr. Lavandeira's rights. If we are forced to take legal action against you, then we will prosecute to the fullest extent possible, seeking both compensatory and punitive damages as well as attorneys' fees and costs. Govern yourselves accordingly.

Nothing contained herein shall be deemed a complete statement of any legal or factual position, all of which are hereby expressly reserved.

Very truly yours,


TODD RUBENSTEIN, ESQ.

TR/ng

Enclosures

cc: Mario Lavandeira

Barbara Lavandeira

Andrew Meyer

Bryan Freedman, Esq.

Rubenstein's letter simply ignores the elephant in the room: fair use. Often a letter like this will include a section saying something like, "We expect that you will claim that your conduct is protected under the fair use doctrine. But that is incorrect, for the following reasons..." Here, the fair use defense is so strong that I guess I shouldn't be surprised that Lavandeira's attorneys can't even muster up an argument why it doesn't apply. As I've previously written, and as Sam Bayard of the Citizen Media Law Project agrees:

This is one of those rare moments when fair use analysis is easy -- the use is for purposes of criticism and commentary on a burning public issue, the amount of material taken is very small, and there is no conceivable harm to the market for Lavandeira's work.

Rubenstein's statement that "Any unauthorized publication, reproduction or dissemination of the Materials constitutes an infringement of our client's copyright..." is simply wrong. It is not true that "any" unauthorized use of copyrighted material "constitutes an infringement." Section 107 of the Copyright Act is clear: "the fair use of a copyrighted work...is not an infringement of copyright" (my emphasis).

And to the extent that Rubenstein is suggesting that the use was not fair because it was "part of a fundraising campaign for NOM," courts have rejected this very argument. See American Family Life Insurance Co. v. Hagan, 266 F. Supp. 2d 682 (N.D. Ohio 2002) (use of mark in a political campaign spot that included “solicitation of contributions” was “properly classified not as a commercial transaction at all, but completely noncommercial, political speech”); Mastercard Int’l Inc. v. Nader 2000 Primary Comm., Inc., 70 U.S.P.Q.2d 1046 (S.D.N.Y. 2004) (even if candidate’s ad resulted in increased contributions, the ad would still not be “commercial”; “If so … all political campaign speech would also be ‘commercial speech’ since all political campaigns collect contributions”).

As to the threat to seek statutory damages, I have no idea where the "$100,000" figure comes from. Section 504(c) provides for statutory damages ranging from $750 to $30,000 per infringed work, or up to $150,000 in the case of willful infringement.

NOM has already rejected Lavandeira's demand in this letter. I don't know if the blogger will follow through with his threat to sue. But I do know that using three seconds of footage in a purely political context, to criticize the copyright owner's own words, is about the clearest case of fair use one will ever encounter. I doubt such a suit would survive a motion to dismiss -- let alone pass any copyright lawyer's laugh test. We're in Rule 11 territory here.