The Great Change: Turning Cathy into a Lawyer

Read Part II.

The third item of interest was an unfortunate decision from a magistrate in the District of Idaho who is allowing DMCA [Digital Millennium Copyright Act] subpoena mechanisms to proceed in order to identify an anonymous critic on a blog. Normally there are protections available to keep bloggers' identities from being divulged to an opposing litigant - except when it comes to allegations of copyright infringement, for which the DMCA makes it relatively easy for accusers to discover the identities of the accused.

The perverse thing about this particular case is it had started out as a run-of-the-mill libel-sort of case that the presumptive plaintiff turned into a copyright one when its original takedown notice got posted by an anonymous compatriot of the anonymous takedown recipient. The problem with the magistrate's ruling allowing the plaintiff to invoke copyright on the takedown notice is that it's now able to get information about these people's identities that it wouldn't have had any right to before. And, more seriously, it would mean that anyone will now be able to menace anyone else with a takedown notice, because no matter how ridiculous that notice is, the recipient will never be able to share the threat publicly without risking his identity being unmasked.

I recommend people read Eric Goldman's explanations of the case and all the issues it raises, but I would like to add one other element that has not been addressed.

The magistrate based his decision to allow the DMCA subpoena mechanisms to proceed on the fact that the presumptive plaintiff, a company called "Melaleuca," had actually gone so far as to register the original takedown notice with the U.S. copyright office. Registering something with the copyright office raises the presumption of it actually being copyrighted. Of course, it doesn't actually indicate whether it was copyrightable, as registration is generally pro forma. Which can be a problem because not everything is actually copyrightable. According to the statute, it must, for instance, have sufficient originality, and the copyright protection would then only apply to those original parts. Arguably no takedown notice, a generally standard document varying only in its specific facts (note that facts themselves are also not copyrightable), could really meet this criteria, and there's certainly no evidence to suggest that this one somehow did.

But let's pretend that the letter was properly copyrighted. According to the copyright office's records, the copyright owner is the company. However the letter was written by its General Counsel Ken Sheppard.

So here's the thing: works are copyrightable by their authors. Whoever wrote it owns it. There is an exception to this rule, however, which is that an employing entity can own what an employee wrote as a "work made for hire." The copyright in the takedown notice had legitimately passed to Melaleuca because he was an employee of it. The thing about that, though, is that he was also their lawyer...

Attorney-client privilege exists to protect from discovery communications made between a client and its lawyer made in the pursuit of representation. The idea behind the privilege is that we want clients to be able to speak candidly with their advocates without fear that what they say so candidly could be used against them. On the other hand, we don't want lawyers to become co-conspirators with their clients. We draw lines, varying from jurisdiction to jurisdiction, to decide when a lawyer has stopped being an advocate and started being a participant. Just because you were talking to your lawyer (however engaged) does not magically protect everything you say - there are exceptions. Exceptions that are extremely difficult to draw, particularly with regard to in-house counsel, but that we can perhaps try to draw here.

A takedown notice normally appears to be an instrument of advocacy. The client wishes to demand something of another, and this is what the advocate drafts to try to get it. The problem in this case is that the takedown notice Sheppard drafted was not an instrument of advocacy; it was the creation of the very substance of the company's claim. Sheppard was subsumed by the company, his purported "client," not as a detached advocate but an inseverable part of it. Thus the communications made surrounding this relationship should not be eligible for coverage by the attorney-client privilege as they were not made in the course of representation but rather the company's own course of business.

Typically this sort of copyright situation regarding takedown notices wouldn't come up, partly because the copyright claim itself is so weak, but also because, to the extent a takedown notice is copyrightable, an external counsel would likely hold his own copyright in the letter (barring a specific agreement otherwise), and trying to enforce it against the client's opposition would likely put his interests impermissibly at odds with those of his client. But the same issue could arise even with external counsel when, like with internal counsel, the lawyer stopped advocating for the client and started being the client. Imagine a lawyer drafting legal instruments just for the purpose of enhancing the client's intellectual property portfolio. No privilege should apply there, and any related communications would be discoverable.

My thinking is that when the lawyer creates the substance of the client's claim - in this case the copyrightable work - the relationship is no longer one of representation and no longer deserving of the protection. I don't mean that merely drafting a takedown notice would forever annul any privilege; particularly if takedown notices are inherently copyrightable lawyers would be disqualified immediately upon producing any legitimate work. But when we take a closer look at the relationship between client and attorney in a case such as this, particularly being an in-house counsel situation, I don't think we can presume that the related communications should necessarily be protected. Sheppard in this case was not acting in a representative capacity for the client; he was acting as the client.

I'm interested in what others might think about what I'm suggesting, including whether there's better language to try to describe what makes this situation different from other in-house counsel ones. Something about it certainly feels different, which I hope I've captured, and which I hope is actually there. It seems manifestly unfair for a plaintiff to profit from pursuit its claims beyond what the claims themselves are worth. Granted this type of situation could be avoided if the DMCA were not written as anonymity-unfriendly as it is, or if this Idaho decision had gone the other way. I think it's a bad ruling for many reasons (see Eric's site for more), but if it is allowed to stand then perhaps the risk of having their internal communications discovered would provide enough of a disincentive for other plaintiffs to try to similarly use copyright law to do an end run around the protections otherwise afforded to anonymous speakers.

Edited.