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Distant Defendant: What if you're at a great remove?

Posted: Sun Feb 26, 2017 3:06 pm
by suedonym
Hello, copyright-thinking people,

This site has been a godsend to me, giving me a good grasp on copyright law. Having spent the last two days poring over it, many of my questions have been answered, and I wish to thank the commenters for their insights and time, in particular Andy J. One pressing question I have, since I have just received a cease-and-desist order, is, in the event it should go to court, how does it play out if the plaintiff is say the U. S. and the defendant is halfway around the world and cannot afford to have someone represent him? Is the defendant obligated to appear in person, or can he make his case via a sworn written or video affidavit? Incidentally, several years ago I had to sue a friend in Canada in small claims court for repayment of a loan. Fortunately, because I live in Central America, I was able to attend court by phone (thank God for Skype!), and was successful in recovering the loan plus interest.

Since this may go to court, I will close with my sincere thanks for any insights and commentary and respectfully remain

suedonym (if it ultimately goes to the upper court, I will apply for a legal name change, and you may henceforth regard me as Suedonym. Anything but Sue.)

Posted: Sun Feb 26, 2017 9:38 pm
by AndyJ
Hi suedonym,

Wow, you have asked a really big question which regrettably has very little to do with copyright per se, and everything to do with various international conventions (eg here), and that means I really shouldn't use this forum to go into too much detail.

I am making four main assumptions. Firstly that this isn't going to be a criminal matter, because then things really get messy with all sorts of rules about extradition and so on. Secondly that you want to defend the claim (ie do not accept liability) and I am also assuming that the alleged infringement involves the internet, and that the server on which your site is hosted is not physically located in the USA.

As a matter of principle a claimant can usually bring a claim where the harm (in law, known as a tort) has occurred and therefore, theoretically the tort occurs wherever your website can be accessed, so the US most probably meets this criterion.

However, the courts in the USA have no power to serve the claim on you if you are based in Central America and so in theory you can just ignore something which just comes through the mail. It does mean that the claimant will probably get a default judgment in his favour (or since he/she is in the USA, 'favor'). However again since the US court has no jurisdiction in your country, you cannot be forced to pay damages and an injunction etc forcing you to stop using the disputed material, cannot be applied against you. However this outcome might mean that you face difficulties if you ever visit the USA at some future date. Obviously if your server is located in the USA, then an injunction can be served on your hosting company for the material (or indeed the whole site) to be taken down.

The way that the US courts can get around this problem is to issue so-called letters rogatory to the court authorities in your country. Not all countries are parties to the various treaties which set out how this may be done. However let's assume that you do formally receive the claim, this same rogatory system would allow you to petition the US court for an order dismissing the claim on the grounds of forum non conveniens. Basically this means that you believe that you would be put at a significant disadvantage if you had to attend a court in the USA. But if the claimant would be at a similar disadvantage if he was required to bring the claim in your country, your grounds will not be sufficient. You can read up on some of the detail about this on Wikipedia. The best chance of your petition succeeding is if the claimant is a large corporation and they are effectively using the claim to bully you (especially if their claim has little merit). Having made your point about the inconvenience to you, it may be that the US court will accept an affidavit containing your defence evidence, but as the USA are signatories to the Hague Evidence Convention (link above), I assume that the Federal courts are used to routinely using a video link (Skype was not invented when the Conventions were drawn up) to allow you to give evidence and be cross-examined. A snag with this may occur if your country does not have the necessary video facilities required by the Convention. Also, by accepting the jurisdiction of the US court you would also be accepting that US copyright law would prevail. This may mean that a defence which is available in your country cannot be used. This in turn may mean that even if you do not need to attend the court, you may need the services of an attorney familiar with US copyright law to argue your case successfully. This would be especially tricky if you were planning on running a defence of fair use, since there is some disparity among the various Federal Circuits as to how they decide such cases. At the very least you will probably need to get a lawyer in your own country to advise you.

I'm sorry I can't be more helpful. I am hampered by my limited knowledge of the day-to-day workings of the US Federal Courts in such circumstances, and of course I have no knowledge about what pertains in your country of residence.

Posted: Mon Feb 27, 2017 4:03 pm
by suedonym
Hello, Andy,

Thank you very much for your time and expertise in crafting such a detailed response. The legalese of it all makes me feel doubly guilty: first, like I am a dastardly criminal desperately seeking to avoid my justice deserts; second, that I have, through my pseudonymous subterfuge, put you to such pains to cover the manifold legal contingencies and courses of action. When, in fact, mine is quite a simple case of alleged trademark infringement, which, I can see, not least owing to your response, is something that will consume, and in short order, exhaust my meager savings and what little time I have left in this life. Therefore, I am now wonderfully at liberty to drop my suedonym and come clean about my alleged nefarious crime.

I have written, over the course of some years, a comprehensive doubly novel grammar covering 330 rules of grammar, punctuation, spelling, and style. What is doubly novel about this grammar is that it is a work of nonfiction written in the guise of a novel. Each rule takes the form of a one-page (81/2x11) story in the manner of a fable (“a short narrative making an edifying or cautionary point, often employing as characters animals that speak and act like humansâ€￾), which you understand, of course, makes each one literally fabulous, each having as its aim the teaching of a moral (rule). A further novel twist is that each is illustrated by one or more celebrities. And so it is that we come to the alleged trademark infringement. Elsie the Borden Cow very charmingly and endearingly illustrates the rule Use the imperative mood to express command. As each rule is further illustrated by an accompanying photo or illustration, I found a charming photo of Elsie being presented with a 70th birthday daisy cake presented to her by Selena Gomez. (There have been 33 Elsies since the first in 1939). I wrote to Borden Dairy and asked if they were the copyright owner of the photo, and if they would grant permission to use it, or another of their choosing. Subsequently, I received a letter from their law firm stating that Elsie and Borden are registered trademarks and that they couldn’t grant permission. Well, had he stopped there it would have been sufficiently lawyerly to make their “we are not amusedâ€￾ point. But he had the effontery to append that, since my book was not yet published, it would not be too inconvenient to remove the photo and all references to Elsie and Borden from the book, and at my earliest convenience to inform him that I had done so. From my unpublished book. That was an abridgment too far, and like waving a red flag in front of a bull. And were I not at such a great remove I would have said, “Bring it on,â€￾ because, having read 21 parody/satire rulings, mine is as strong a case of fair use as any, satisfying all four counts:

1) it is both a parody in that it “imitates for comic effect or ridicule,â€￾ and a satire, as Elsie says,

“Maybe there’s a breed of cow I haven’t heard about (I could never herd about anyone) that expresses milk high in irony. Yes, surely that’s it; a special breed that exists (it can’t be called living) behind the Iron Curtain where the prevailing mooed is there’s no such thing as a strong request, let alone a polite one; just stern commands and bossy orders (Obey!). I got wind once (common in us cows who eat a lot of grass) of a herd of cowmissars there that go around giving such moody imperatives; a breed that, instead of giving milk, ironically milks the people, like Farmer Borden, dry. But I had thought such talk fancy. Maybe these cowmissars can get themselves in the mood to boss their calves, their own flesh and milk, around with ‘Give it up for the State!’; ‘Chew your cud—now!’; and ‘Shut up about your damned God!’ in order to make themselves understood on behalf of the Mother Country, but I can’t even contemplate such a State of existence.â€￾

As such, it is highly transformative.

2) It’s purpose is educational

3) I use no more of the original work than necessary (little more than the trademarked terms Elsie and Borden)

4) due to its parodic nature it is highly unlikely to be confused with any Borden Dairy products or interfere with any potential market for the original.

This raises some trademark questions:

1) Are trademarks perpetual as long as the business or individual perpetuates them?

2) Since trademarks are specific to the term or image, how close can you legally come (say Mikey Mouse, Supperman, Hairy Potter) without infringement? I’m guessing that if it’s just the name, you can come that close, but that if, in addition, you also appropriate their persona and identifying characteristics, not so much! Also, I’m guessing that there’s nothing preventing anyone from using the name Harry Potter in a fictional context that has nothing to do with the original.

I’m sure as I delve into this I’ll have more, but I’ll close by saying, thanks again, Andy, for your time and your kind response.

David Madison

Posted: Mon Feb 27, 2017 8:22 pm
by AndyJ
Hi David,

Thank you for the additional information. Since you don't make any mention of your place of residence, I have assumed that you are still outside the USA.

I think it is necessary to separate those aspects which concern alleged trademark infringement from those pertaining to copyright.

Trademark The US law on trademarks (the Lanham Act) specifies infringement as follows
(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
Source: 15 U.S. Code § 1114
It is therefore something of a stretch to make your use of the names Elsie and Borden in a book fit the parameters set out in the quote above. However there is a further section in the Act which covers similar sorts of acts that, by deceiving the public as to the origin of the goods, have the effect of damaging the interests of the trademark owner. This is sometimes referred to as trademark dilution. This is the likely ground on which Borden Dairy are making their demands for you to remove the references. But even then there has to be the necessary step of misrepresentation, and I really don't see how a book (or at least one fairly small section of it) can be said to confuse people who buy dairy products that this is somehow connected with the Borden Dairy. There appear to be 8 registrations (some are dead) for Elsie / Borden with the US PTO but none of these covers books or anything remotely similar. Incidentally, Borden Dairy LC are not the owners of the trademarks, and have licensed their use from the actual owners, Hexion Speciality Chemicals Inc.

However there is no parody/satire defence in cases involving trademark infringement*. And since the mere words 'Elsie' and 'Borden' don't attract copyright protection, that is an absolute defence against copyright infringement. Thus you don't need to rely on the Fair Use defence, although I agree that your use fits the four-fold test admirably. I assume that you have dropped the idea of the photograph (which would be copyright infringement if it was used without permission).

So on that basis I can't see it is necessary for you to comply with the Borden Dairy's demands over trademark use.

* For the sake of clarity some US legal authorities use the term Trademark Fair Use but this should not be confused with the Copyright Fair Use doctrine. In essence Trademark fair use means use of the words forming a trademark in a descriptive manner, eg a Ford automobile.

Posted: Tue Feb 28, 2017 2:56 pm
by suedonym
Hi, Andy,

Many thanks again for your time and learned insights. I feel as though I’m attending a school of higher learning through you, an ivy-league school at that (Oxford perhaps?).

I was indeed conflating copyright law with trademark law. Being but a few days into this, and having only read the copyright infringement decisions relating to parody/satire, some of which were with Disney, Mattel, Barbie Doll, Warner Bros., DC Comics, Dr. Seuss), I made the leap that these fictional characters and toys, etc., all must surely be covered by trademarks.

I am pleased to read that you don’t feel I need to comply with Borden’s demand; however, I feel it is likely that Borden would press their suit, even knowing they might not prevail, calculating that they can, as you suggest, bully an individual who doesn’t have the resources to mount a protracted defense. And as I use some 15 such fictional characters, all of whom I’m assuming will be trademarked, it could mire me in endless litigation. So, reluctantly, I began today replacing these characters with fictional characters of my of my own devising, or real persons, living or dead, which illustrate the great majority of the stories. Yet it occurs to me now that I might write backup stories for these, and publish the book as is, and if I get other cease and desist letters, replace them. I’m assuming that if you get a c.a.d. (gotta love the acronym), and you desist, that that ends it. It may be that some would not complain. Question: if I were to use a famous fictional character with a pedestrian name (let us say Tom Jones) and which name is trademarked, yet I represent this character as being a person wholly unrelated to the famous Tom Jones (assuming I didn’t accompany the story of the pedestrian Tom Jones with an image of the famous one), am I thus saved harmless? Or could the trademark holder argue, “Yes, but you knew very well—didn’t you?—that people would naturally make the association with my famous Tom Jones, and therefore you were seeking to co-optively piggyback upon his fame, thus infringing on my trademark in an all-too-transparently devious manner.â€￾ [tongue out of cheek]

Regarding using the photo of Elsie: if I did proceed with the Elsie story, I would try to get permission from the copyright holder, which may in fact not be Borden. This spawns several questions regarding images:

1) if you take an image and transform it in a major way, is this considered fair use?

2) I previously read in one of the threads on this forum that if you post a video on YouTube, that you are in effect waiving your copyright protection bye-bye. If this is so, then there is no problem with using a screenshot? But I assume that if someone were to post a video that he doesn’t hold the copyright to, that the actual copyright holder would still retain copyright protection?

Regarding searching of trademarks, is searching the USPTO database sufficient, or do you have to search elsewhere? I would greatly appreciate any links, in the event that some of the fictional characters I use are not trademarked, hence there would be no need for me to change them.

Thanks in abundance and in advance for any insights you may offer.


By the bye, I live in beautifully tropical, relatively low-populated Belize.

Posted: Tue Feb 28, 2017 5:26 pm
by AndyJ
Hi David,

Lots to get through here.

Beware that in changing the names of your characters from fictional but trade marked ones to real people (alive or dead) you could run into another piece of American intellectual property law, namely the publicity right. This is non-Federal legislation (or sometimes the application of common law in a way which is similar) that approximately half the individual states within the USA have adopted. The extent of the legislation varies greatly, but in essence this right protects various elements which are said to embody the personality of a living person (name, likeness, voice and so on) from being exploited without their permission. In most cases this legislation is aimed at advertisers and the like, with the aim of preventing false endorsements. Perhaps the most pernicious of this type is the California Celebrity Rights Act. I say pernicious because that particular statute protects a wide range of personal characteristics for 70 years after an individual's death.

You mention living personalities who have registered their names as trade marks. Frankly, this is probably less of a problem even than Elsie the Cow, because the likelihood of real confusion arising between your characters and any sort of endorsement by the celebrity etc is minimal. However as you are acutely aware, that won't necessarily stop an enthusiastic attorney from bringing a case from which, whether his client wins or loses, the attorney makes a dollar or two. It is interesting that you use the name Tom Jones in your example, since the singer we know of as Tom Jones (real name Thomas John Woodwar) took his stage name from the Henry Fielding character, albeit via the 1963 film adaptation of Fielding's work. It is also a very common name (unlike say, Elvis Presley) and so using such a name for one of your characters would be unlikely to provoke even the most zealous of attorneys to advise their client to sue you.

On to images and copyright. The issue of transformation is a vexed one. As I indicated in an earlier reply, much depends on which Federal Circuit hears the case, when it comes to the matter of how much transformation is required to meet the fair use standard. Or possibly more relevant, how much the new work has been moved to a different artistic context by the changes. A good example can be found in the various cases involving appropriation 'artist' Richard Prince. In Cariou v Prince, Prince's taking and modifying of a number of Patrick Cariou's photographs was held to be infringement at first instance, but this was reversed for the majority of the images, on appeal. In a later case Prince copied a number images from other people's Instagram profiles, and after adding a comment on each, exhibited the images in a New York gallery with price tags in the region of $90,000*. As a result Prince has been sued by a number of people whose images were taken, notably Eric McNatt, and Donald Graham , but none of these cases has been resolved so far. However the details in the cases go to show that it is virtually impossible to provide a yardstick for how much transformation is necessary to avoid an infringement claim. A parody fair use claim, on the other hand, is much more straightforward, based on the famous case Campbell v Acuff-Rose Music, which because it went to the Supreme Court, is generally regarded as settled law.

Youtube. I'm not sure where in the forums you read that putting a video on Youtube effectively means you are abandoning your copyright, but it is not true. Doing so probably means that your work is more likely to be copied, but that is not the same thing as losing (or even diluting) one's rights. Youtube's terms and conditions require users to respect other people's copyright, and of course, many Youtube users do sue over copying. But many, many more use the DMCA takedown system to remove unauthorised copies of their work. However it is also worth noting the mindset of some Youtube users, mainly amateurs perhaps, who just want exposure for their work and have little interest in copyright. It might be fair to say that these people probably have abandoned their rights, but unless they have attached some specific licensing conditions (such as Creative Commons) there is nothing irreversible about such a stance.

USPTO Trademark database. This is the only database you need to consult with regard to US registered trademarks. Each country maintains its own registration system (although in the case of EU trade marks, this is done by the European Union Intellectual Property Office). As far as any non-registered marks are concerned, there is no central database. Your best bet would be to just Google the name and see the amount of relevant returns this produces, as a rough indication of whether or not some goodwill (as opposed to mere notoriety) attaches to the name. Not very scientific but the best I can advise.

*This sort of price tag is indicative of what I mean by something moving into a different artistic context. The original images mostly had next to no commercial value; add the name Richard Prince and the value soars.

Posted: Thu Mar 02, 2017 3:14 pm
by suedonym
Hi, Andy,

My apologies for not replying sooner, but you gave me a lot of homework, and each link procreated more, and those, in turn, whole legions. I think you know the tune. And, like Alice, I followed many down the rabbit hole. But, like Robert Frost,

Oh, I saved the rest for another day,
Yet knowing how way leads on to way,
I doubted if I should ever come back.

The California Celebrity Rights Act rather knocked me off feet, but after I’d “heard great argument about it and about,â€￾ I took cheer from the following, to see that, not only was I not down and out, but that I had solid standing:

. . . any person using such personality's "name, voice, signature, photograph or likeness on or in products, merchandise or goods" without prior consent is liable to be sued for damages and profits arising from the unauthorized use . . .


"a play, book, magazine, newspaper, musical composition, audiovisual work, radio or television program, single and original work of art, work of political or newsworthy value, or an advertisement or commercial announcement for any of these works, shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work."

My initial thought was, Surely that is the world’s biggest “but.â€￾ The book under alleged indictment is a literary work that is both fictional and nonfictional entertainment. It seemed too sweeping, too good to be true. But then I thought, of course! Were this not so how could there ever be an unauthorized biography, criticism in a magazine or newspaper, a parody of a song, the vitriolic rhetoric of political commentary on radio, television, the internet, documentaries exposing corruption such as employees of planned parenthood caught on tape and hidden camera discussing illegal acts; a painting of Tiger Woods; a depiction of blues brothers Johnny and Edgar Winter in a DC Comic as worms, the Autumn Brothers—all done without permission, and all protected by the First Amendment? Further, the New York County Supreme Court in Nussenzweig v. DiCorcia determined that personality rights do not trump legitimate First Amendment rights of artistic free expression.

Respecting trademark, the District Court of the Central District of California dismissed athlete Jim Brown's theory of false endorsement under the Lanham Act and determined that the First Amendment protects the unauthorized use of a trademark in an artistic work when the mark has artistic relevance to the work and does not explicitly mislead as to the source or content of the work.

I was further shored up to read the Lanham Act’s three-prong test for trademark infringement, at least two of which must be met:

1. the conduct of the defendant must have a substantial effect on United States commerce
2. the defendant must be a United States citizen
3. there must be an absence of conflict with foreign law.

My sending up Elsie the Cow, as you noted, is unlikely in the extreme to have any adverse effect upon Borden Dairy’s commerce. And I am not a United States citizen. Two prongs unmet. Furthermore, Justice Scalia opined, “the plaintiff must have suffered or be imminently threatened with a concrete and particularized "injury in fact" that is fairly traceable to the challenged action of the defendant and likely to be redressed by a favorable judicial decision.â€￾

Then, too, I was all the more pleased to discover, that there is also poetic justice in the countersuit of Malicious Prosecution of Trademark, as the estate of Princess Diana discovered when it had to pay the Franklin Mint $25,000,000 for malicious prosecution.

With that, I take heart to look over at Elsie, pleased to see that she, having twice as many, is on even more solid footing.

That said, as you pointed out, the law regarding personality rights varies from state to state, and with so many states and so many celebrities, well, it is all too many with me; and fortified with the above, I think I am just going to have to publish and be damned. After all, many, such as Adam and Eve, Jonah, Jesus Christ, Shakespeare, Chaucer, Antony and Cleopatra and the like, are long dead, and are somewhat unlikely to bring suit. Of the living, my gut tells me that the majority will not complain, some will even be flattered. Any that do, I shall summarily write them out of my will to educate through entertainment, and boldly include them in my Rogue’s List of Mercenary, Washed-up, Anal-retentive Celebrities Not Worth Including, and see how they like that publicity, which they have my permission to enjoy without let or hindrance, or compensation.



Posted: Thu Mar 02, 2017 3:48 pm
by AndyJ
Hi David,

I like your buccaneering style! Good luck with the book.


Posted: Sat Mar 04, 2017 3:10 pm
by suedonym
Hi, Andy,

Many thanks, again, for all your time and expertise. I learned a lot, and am continuing to do so, going down one rabbit hole after another, though it grieves me to say that I’ve yet to run into Alice. Currently, I’m reading all the case summaries for copyright fair use, and I’ll be following these with those of trademark fair use. It’s rather astounding how all over the map the rulings are, and how frequently upper courts not only overturn lower-court rulings, but flame them for being so addleheaded. Regarding images, I’m going to use public domain photos/illustrations whenever possible, and seek permission for copyrighted ones. Beyond that, I will get and learn how to use photo-editing software in order to creatively transform photos/illustrations such that they constitute fair use. God only knows if my book will be finished before I am. Either I, or possumously my estate, will let you know how I get on.