Sending a cease and desist letter can be a dangerous thing. Even if you feel sure you have the legal grounds to back up your threat, a nastygram, once sent out, can – pick your metaphor – boomerang back to bite you or leave you (as Hamlet left Rosencrantz and Guildenstern) hoist with your own petard. Liberation Music Pty Ltd. (LMP), an Australian record company, recently learned that lesson when it sent such a letter to renowned copyright attorney Lawrence Lessig in regard to his unlicensed use of LMP’s copyrighted property, the song “Lisztomania” by the rock band Phoenix. Lessig turned around and filed a declaratory judgment action against LMP last week: he wants a federal judge to declare that his use of “Lisztomania” is permissible under the Fair Use provision of the Copyright Act. Now LMP not only has to be a defendant when it hoped to be a plaintiff, LMP also has to answer a copyright challenge brought by one of the world’s leading experts on copyright law. Plus, LMP has to do this not in Melbourne but in Massachusetts. (The case, filed on August 22, 2013, in Federal District Court for the District of Massachusetts, is Lawrence Lessig v. Liberation Music Pty Ltd.)
The matter arose in June of this year when Lessig posted on YouTube a video of a lecture entitled “Open,” which he gave at a Creative Commons conference on innovative uses of technology in 2010. Part of the lecture focused on the imaginative ways in which people are using available technology. To illustrate his points, Lessig showed the audience short clips of videos inspired by a “Lisztomania” craze, which had been created and posted online by various people around the world when the song was popular.
A few weeks after the lecture video had been posted on YouTube, LMP sent a takedown request to YouTube under the Digital Millennium Copyright Act (DMCA), a provision in the Copyright Act which protects online service providers – like YouTube – from copyright infringement liability on the condition that they remove copyrighted works when informed by the copyright owner that the works were posted without permission. YouTube, as required under the DMCA, informed Lessig that it had received the notice, and removed the lecture. The DMCA allows for a counter-notification to restore removed materials, so Lessig sent one to YouTube, and YouTube, again complying with the DMCA, informed LMP. It was after its receipt of the counter-notification that LMP sent a cease and desist letter directly to Lessig. The letter threatened Lessig with a lawsuit for copyright infringement if Lessig did not retract his counter-notification within 72 hours. Lessig responded by throwing down his gauntlet.
Lessig’s complaint contains two counts. Each one is interesting, but not for the same reasons. Because the matter involves the DMCA, in one of his counts Lessig asks the court to find that LMP violated the DMCA’s requirement that a party sending a takedown notice must have a good-faith belief that infringement has occurred before sending a takedown request. In other words, Lessig wants the court to infer from the facts that LMP knew that Lessig was in the right and that LMP knew it was doing something wrong in sending its notification. This is a cheeky moral claim at best: no one understands better than Lessig that Fair Use is always debatable and never a black-and-white issue, that it is fact-specific in its context, that it must be determined on a case-by-case basis, and that the determination requires a court to weigh four separate factors, any one of which may tip the scales in favor of either party. The Court may, with some justification, look askance at that count.
Second, the wording Lessig uses for his fair use count is very curious. In paragraph 65 of his complaint, Lessig asks the Court to find that “Professor Lessig is entitled to declaratory judgment that his use in his ‘Open’ lecture of video clips that used ‘Lisztomania’ as a soundtrack is lawful under the Fair Use Doctrine and does not infringe the Defendant’s copyright.” The italics are mine. By wording the request in this way, Lessig glosses over the facts about the two very different forums in which the lecture appeared. He mixes apples and oranges: what may be a fair use during a lecture given to a live audience may not be a fair use when a video of that lecture is posted on YouTube. Lessig’s wording also ignores two key facts about LMP’s behavior in this case: LMP did not object to Lessig’s use of the “Lisztomania” clips when he first gave the lecture in 2010 before a live conference audience; however, LMP did object when, three years later, Lessig posted the lecture video containing the clips on YouTube, where it could be accessed by millions. The effect of Lessig’s wording is that he asks the Court to ignore the context-specific facts of the case and to make a much broader Fair Use ruling than those facts may merit. Consequently, the Court may look askance at that count, too.