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 Chilling Effects Clearinghouse > Protest, Parody and Criticism Sites > Notices > Celeb Objects to Image on Foreign Ad-Spotting Site (NoticeID 392, http://chillingeffects.org/N/392) Printer-friendly version

Celeb Objects to Image on Foreign Ad-Spotting Site

August 26, 2002

 

Sender Information:
Leonardo DiCaprio
Sent by: [Private]
Hansen, Jacobson, Teller, Hoberman, Newman, Warren and Sloane, L.L.P.
Californi, 90210-422, US

Recipient Information:
[Private]
Japander.com
Ibaraki, 3030002, Japan


Sent via: FedEx
Re: Re: Leonardo DiCaprio/Rights Infringement

Dear [Recipient]

We represent Leonardo DiCaprio. It has come to our attention that you have been using our client's name and likeness in connection with your website "Japander.com"

Please be advised that your actions constitute, among other offenses, a wrongful use and misappropriation of our client's name in violation of his federal and state common law and statutory rights including, without limitation, rights of publicity and rights under the Lanham Act. If your website features additional uses of our client's name, likeness and/or attributes, said actions will constitute further violations of our client's rights. We have advised our client that the remedies available to him include, without limitation, injunctive relief and recovery of actual and/or statutory damages.

Pursuant to our client's instructions, demand is hereby made that you (i) immediately cease and desist from misappropriating our client's name and likeness, (ii) confirm to me in writing that you have done the foregoing. In the event that you fail to do so within 10 days, our client is prepared to pursue his legal and equitable remedies against you in connection with this matter.

Nothing in this letter is intended or shall be construed to constitute an express or implied waiver of any rights or remedies which our client may possess in connection with this matter, all of which are hereby expressly reserved.

Very Truly Yours,

[Sender's Attorney]

cc: [Private]

 
FAQ: Questions and Answers

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Question: What is fair use?

Answer: Copyright law seeks to promote the production and distribution of creative works by conferring property rights on authors. The principle of fair use serves to mediate between these property rights and the constitutional rights of public access and free speech embodied in the First Amendment. Fair use serves an important social function by allowing for the use of parts of creative works for the sake of criticism, commentary, and reporting.

To decide whether a use is "fair use" or not, courts consider:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and,
  4. the effect of the use upon the potential market for or value of the copyrighted work.[17 U.S.C. 107(1-4)]

The principles of fair use are invoked when the transaction costs associated with gaining authorization from copyright owners to make use of works is too burdensome in reasonable circumstances. Fair use also permits the reproduction of art and information for the private, noncommercial sharing of those works. Fair use allows for market competitors to use copyrighted works in ways that allow them to extract the public domain aspects of those works in order to develop innovative products.


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Question: What is the right of publicity?

Answer: The right of publicity is a right to prevent the unauthorized commercial use of someone's identity, including name, image, or likeness. A natural person (and that person


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Question: Does the Lanham Act protect against misappropriation of likeness?

Answer: The Lanham Act may prohibit the unauthorized use of a celebrity's identity if someone uses the likeness, voice, or other uniquely distinguishing characteristic in a way likely to make consumers believe -- falsely -- that the celebrity sponsors, approves of, or is associated with the unauthorized user's goods or services.


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Question: What is a "Permanent Injunction"?

Answer: An injunction is "A court order commanding or preventing an action. * To get an injunction, the complainant must show that there is no plain, adequate, and complete remedy at law and that an irreparable injury will result unless the relief is granted... [A]permanent injunction [is] [a]n injunction granted after a final hearing on the merits. * Despite its name, a permanent injunction does not necessarily last forever."


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Question: What are "actual and statutory damages" for a right of publicity claim?

Answer: In a right of publicity claim, actual damages is the loss the plaintiff suffered due to the misappropriation of identity. The statutory damages is a minimum fine the court can assess, particularly if actual damages are difficult to assess. In California the minimun for statutory damages is $300.


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Question: What is this laundry list of things the C&D says will happen if I don't obey?

Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you unless you capitulate. This list generally includes, but is not limited to:
(1) ceasing use of the allegedly infringing mark or surrendering the domain name;
(2) rendering an accounting;
(3) posting corrective advertising;
(4) obtaining an injunction;
(5) recovering costs and fees.

Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that Torquemada never thought of them).

Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied:
(1) your domain name is identical or confusingly similar to your opponent?s;
(2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona fide business or for non-commercial fair use purposes); and
(3) your name is registered and used in bad faith.

An accounting basically means that you disclose the following information to your opponent:
(1) the date you began using the allegedly infringing mark;
(2) the names of individuals who knew of the use when it began;
(3) the amount of traffic at your web site or business at your store; and
(4) your profits and revenues during the time you used the allegedly infringing mark.

Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your opponent?s, and that you are not affiliated with your opponent.

An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing trademark.

Some provisions of the Lanham Act permit a trademark holder to recover attorney?s fees and court costs from an infringer.

That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the smorgasbord of legal options with your opponent?s right to inflict any of them on you.


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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?

Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.


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