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 Chilling Effects Clearinghouse > Copyright > Notices > Cease and Desist Letter/Copyright Infringement (NoticeID 11360, http://chillingeffects.org/N/11360) Printer-friendly version

Cease and Desist Letter/Copyright Infringement

June 28, 2007

 

Sender Information:
imageline, Inc.
Sent by:
[Private]


Ashland, VA, 23005, US

Recipient Information:

WPClipart


Rochester, NY, 14616, USA


Sent via: FedEx
Re: COPYRIGHT INFRINGEMENT NOTIFICATION - Personal and Confidential

[redacted]

It has been brought to my attention that several of your companies and/or web properties,
including www.WPClipart.com and www.pcbypaul.com, have been infringing copyright
registered works owned exclusively by Imageline, Inc. for some time. The continued
infringing activity was confirmed earlier this week. Thus far, we have identified
four hundred and twenty (420) independent works (electronic clip art illustrations.
Design templates, and/or animations) owned by Imageline on your websites
(see enclosed listing). In addition to making these individual copyright-registered
works available to your customers for download, the entire collection of infringed
images has been downloaded by you routinely to your network of worldwide
distribution partners (Google lists over 42,000 websites/pages associated
with your company/product on a recent search of "WPClipart" on their system),
and well over 1000,000 times (from numbers documented on your partners' websites)
to end user customers. The entire WPClipart cliip art library also appears to be
bundled with a number of high volume Linux-based software CDS/DVDs as well.
As yet, we do not know the distribution numbers associated with these products.
Finally, the creation of derivative works based on Imageline proprietry content
is not only permitted, but encouraged, by you and many of your distribution
partners as well.


These are all very serious copyright infringements and must be ceased immediately.


We are also very concerned about the involvement of Google, Inc. with this illegal
distribution and infringement network. It appears that you solicit customers for
various Google products and services (i.e. Google-branded applications) from your
web pages displaying pirated images, and Google places "Ads by Google" on not only
all of your clipart pages, but on many of the web sites of your distribution
partners as well. In one of your clipart sections, alone ("Armed Services"),
over fifty-two (52) Google ads (see enclosed listing) were listed on pages
displaying the infringing Imageline clipart illustrations. On its website,
Google references the availability of these infringing clip art images owned
exclusively by Imageline (both directly and indirectly) through the Google
web and image search engines. Google also references you, your products, and
your distribution partners in the "Public Domain" sections of its website
identified through both "web" and "image" search inquiries. Willful blindness
is not a valid excuse for illegal infringement activity in this country.


Please cease and desist any further display, copy or distribution of our proprietary
clip art illustrations immediately. For your information, no company or individual
had ever been granted the licensing or sub-licensing rights to our copyrighted works
that would allow for the type of unlawful distribution we have found on your WPClipart
website(s) or on the websites of your distribution partners. All of the individual works thus far identified are registered in one of the five copyright registrations filed by Imageline, Inc. with the U.S. Copyright Office in 1996 and 1997. You can access these registrations online through the U.S. Copyright Office's website, www.copyrights.org.


It is our objective to avoid expensive litigation pertaining to these copyright
violations, but, as you can see from the magnitude of the distribution, we have
already suffered extensive and irreparable damage in the marketplace. We desire
to a) cease the current infringing activity at both WPClipart.com and throughout
your entire worldwide distribution network, b) contact known customers so that
cascading downstream infringement activity can be curtailed, c) establish guidelines
and procedures to make sure infringements do not continue beyond this date of
notification, or re-occur in the future, and d) be appropriately compensated for
the infringements that have already taken place. As you can see with minimal
research, Imageline is not hesitant to protect our rights. In 2003, we took our
infringement claims against NBC/Xoom.com all the way to the U.S. Supreme Court.


[private], it is simply unconscionable that you, Google, and others would claim
that our proprietary graphic arts content is somehow associated with the "Public Domain".
That notion is preposterous. Imageline has been a leader in the design and production
of high quality clip art illustrations, design templates, and animations for over
twenty (20) years. Many of our images are among the most recognized and desired
digital artwork in the world. Our licensing agreements with companies like Microsoft,
Adobe, Apple/Claris, IBM/Lotus, Borland, Computer Associates and others should attest
to our originality and our quality.


Please contact me directly [private] if you are interested
in pursuing settlement discussions pertaining to these violations or if you feel
you, or your attorneys, need any additional information from Imageline.


Sincerely,
[private]

 
FAQ: Questions and Answers

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Question: What are the possible penalties for copyright infringement?

Answer: Under the Copyright Act, penalties for copyright infringement can include:

  1. an injunction against further infringement -- such as an order preventing the infringer from future copying or distribution of the copyrighted works
  2. impounding or destruction of infringing copies
  3. damages -- either actual damages and the infringer's profits, or statutory damages
  4. costs and attorney's fees

A copyright owner can only sue for infringement on a work whose copyright was registered with the Copyright Office, and can get statutory damages and attorney's fees only if the copyright registration was filed before infringement or within three months of first publication. (17 U.S.C. 411 and 412)


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Question: What rights are protected by copyright law?

Answer: The purpose of copyright law is to encourage creative work by granting a temporary monopoly in an author's original creations. This monopoly takes the form of six rights in areas where the author retains exclusive control. These rights are:

(1) the right of reproduction (i.e., copying),
(2) the right to create derivative works,
(3) the right to distribution,
(4) the right to performance,
(5) the right to display, and
(6) the digital transmission performance right.

The law of copyright protects the first two rights in both private and public contexts, whereas an author can only restrict the last four rights in the public sphere. Claims of infringement must show that the defendant exercised one of these rights. For example, if I create unauthorized videotape copies of Star Trek II: The Wrath of Khan and distribute them to strangers on the street, then I have infringed both the copyright holder's rights of reproduction and distribution. If I merely re-enact The Wrath of Khan for my family in my home, then I have not infringed on the copyright. Names, ideas and facts are not protected by copyright.

Trademark law, in contrast, is designed to protect consumers from confusion as to the source of goods (as well as to protect the trademark owner's market). To this end, the law gives the owner of a registered trademark the right to use the mark in commerce without confusion. If someone introduces a trademark into the market that is likely to cause confusion, then the newer mark infringes on the older one. The laws of trademark infringement and dilution protect against this likelihood of confusion. Trademark protects names, images and short phrases.

Infringement protects against confusion about the origin of goods. The plaintiff in an infringement suit must show that defendant's use of the mark is likely to cause such a confusion. For instance, if I were an unscrupulous manufacturer, I might attempt to capitalize on the fame of Star Trek by creating a line of 'Spock Activewear.' If consumers could reasonably believe that my activewear was produced or endorsed by the owners of the Spock trademark, then I would be liable for infringement.

The law of trademark dilution protects against confusion concerning the character of a registered trademark. Suppose I created a semi-automatic assault rifle and marketed it as 'The Lt. Uhura 5000.' Even if consumers could not reasonably believe that the Star Trek trademark holders produced this firearm, the trademark holders could claim that my use of their mark harmed the family-oriented character of their mark. I would be liable for dilution.


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Question: What kinds of things are copyrightable?

Answer: In order for material to be copyrightable, it must be original and must be in a fixed medium.

Only material that originated with the author can support a copyright. Items from the public domain which appear in a work, as well as work borrowed from others, cannot be the subject of an infringement claim. Also, certain stock material might not be copyrightable, such as footage that indicates a location like the standard shots of San Francisco in Star Trek IV: The Voyage Home. Also exempted are stock characters like the noisy punk rocker who gets the Vulcan death grip in Star Trek IV.

The requirement that works be in a fixed medium leaves out certain forms of expression, most notably choreography and oral performances such as speeches. For instance, if I perform a Klingon death wail in a local park, my performance is not copyrightable. However, if I film the performance, then the film is copyrightable.

Single words and short phrases are generally not protected by copyright, even when the name has been "coined" or newly-created by the mark owner. Logos that include original design elements can be protected under copyright or under trademark. Otherwise, words, phrases and titles may be protected only by trademark, however.


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Question: What is copyright infringement? Are there any defenses?

Answer: Infringement occurs whenever someone who is not the copyright holder (or a licensee of the copyright holder) exercises one of the exclusive rights listed above.

The most common defense to an infringement claim is "fair use," a doctrine that allows people to use copyrighted material without permission in certain situations, such as quotations in a book review. To evaluate fair use of copyrighted material, the courts consider four factors:


  1. the purpose and character of the use
  2. the nature of the copyrighted work
  3. the amount and substantiality of copying, and
  4. the market effect.

(17 U.S.C. 107)

The most significant factor in this analysis is the fourth, effect on the market. If a copier's use supplants demand for the original work, then it will be very difficult for him or her to claim fair use. On the other hand, if the use does not compete with the original, for example because it is a parody, criticism, or news report, it is more likely to be permitted as "fair use."

Trademarks are generally subject to fair use in two situations: First, advertisers and other speakers are allowed to use a competitor's trademark when referring to that competitor's product ("nominative use"). Second, the law protects "fair comment," for instance, in parody.


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Question: Does a cease and desist letter recipient have a duty to remove materials alleged to infringe copyright?

Answer: The cease and desist letter gives its recipient ("you") notice that someone is claiming something you've done or something on your site infringes a copyright. If the materials that are the subject of the notice are in fact infringing, then you do have a duty to remove them, although there may be statutory provisions (DMCA Safe Harbor) that protect you from a lawsuit if the materials were posted by someone else. You may have to give the poster notice of the complaint.

If you do not believe that the materials are infringing, or if you believe that you are making fair use of the materials, you may choose to take the risk of not removing the materials, but a lawsuit might follow in which the complainer tries to prove they they are right and you are wrong. If the accuser obtains a court order, then you must take down the materials.


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Question: What if the letter accuses me of something I'm not doing?

Answer: If the cease-and-desist misinterprets what your website is doing, for example claiming you're "reproducing" things you just link to, you can try to send a response that clarifies the facts -- especially if the factual difference is legally relevant. First, though, you may want to judge from the tone of the letter whether that's likely to resolve the matter, or instead just to draw more attention to you and make the requester angrier.


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