ELECTRONIC
FRONTIER
FOUNDATION

January 21, 2019

VIA Email

 

Re: my-washingtonpost.com

Dear Mr- 

I represent the Yes Men in connection with the above-listed domain name and related
actions on January 16, 2019. I have reviewed your letter demanding that the site be shut
down and all distribution all physical copies ofthe spoofnewspaper end.

We are frankly disappointed that the Washington Post has chosen to take this approach.
Given the content of the site and the physical paper, and the ample publicity the spoof has
generated, it is difficult to imagine that any member of the public would be confused.
Moreover, given the Washington Post?s long history of defending free speech and fair
use, we had hoped that your paper would recognize that the spoof site is entirely legal
critical speech.

Trademark Issues

The Post does not have a valid trademark complaint. First, the site is fully protected by
the nominative fair use doctrine. See. e. g. Century 21 Real Estate Corp. v. Lendingtree,
425 F.3d 21 1, 218-221 (3d Cir. 2005); New Kids on the Block v. New America Pub., 971
F.2d 302, 308 (9th Cir. 1992). Indeed, courts have noted that nominative fair uses are
particularly likely to be found in parodies. Radiance Foundation. Inc. v. NAACP, 786
F.3d 316, 327-333 (4th Cir. 2015), Mattel. Inc. v. Walking Mountain Prod, 353 F.3d 792,
808 n. 14 (9th Cir. 2003). Second, the spoof is sheltered by the First Amendment. See
Universal Comm 'n Inc. v. Lycos. Inc., 478 F.3d 413, 423 (lst Cir. 2007); Cliff'Notes
v. Bantam Doubleday Dell Publ'g Group, 886 F.2d 490, 495 (2d Cir. 1989); CPC Int'l.
Inc. v. Skippv Inc., 214 F.3d 456 (4th Cir. 2000); Mattel. Inc. v. MCA Records, 296 F.3d
894, 906 (9th Cir. 2002). Third, the site is noncommercial; it is obviously intended to
raise political awareness, not to sell or advertise goods or services. Therefore, it is beyond

815 EDDY STREET, SAN FRANCISCO, CA 94109 USA phone +1.415.436.9333 fax +1.415.436.9993 efforg

January 21, 2019
Page 2 of3

the reach of the Lanham Act. See 15 U.S.C. 127, 1125; Farah v. Esquire Magazine,
736, F.3d. 528, 541 (DC. Cir. 2014); Utah Lighthouse Ministry v. Found. For Apologetic
Information and Research, 527 F.3d 1045, 1052-53 10th Cir. 2008); Bosley Med. Inst. v.
Kremer, 403 F.3d 672, 677 (9th Cir. 2005); Taubman v. WebFeats, 319 F.3d 770, 774
(6th Cir. 2003); CPC Int 214 F.3d at 461. Finally, with respect to any dilution claim
you believe you may have, please note that news commentary is also exempted from the

dilution statute (in addition to the noncommercial use and fair use exemptions). See 15
U.S.C.A. ?l 125(c)(3).

As for your concern that the site does not include a disclaimer, trademark law does not
require any such thing. The parodic nature of the site is evident on its face, and there has
been ample press coverage to dispel any momentary confusion including both my
client?s own press release and the Post?s own reporting and commentary. There was
never any opportunity for confusion to lead to a mistaken purchasing decision of any kind
the type of confusion that is the subject of trademark law. See. Radiance, 786 F.3d
at 324.

Copyright Issues

With respect to your allegations of unauthorized copying, the site is obviously designed
for purposes of criticism and comment and protected by the fair use doctrine. l7 U.S.C. 
107 (?the fair use of a copyrighted work . . . for purposes such as criticism [and]
comment . . . is not an infringement of copyright?). Any use my clients may have made
of material copyrighted by the Washington Post is highly transformative. See generally
Campbell v. 510 US. 569, 579 1994) (?[Transformative] works . . . lie at the
heart of the fair use doctrine?s guarantee of breathing space within the confines of
copyright . . . parody has an obvious claim to transformative value?); Castle Rock Ent. v.
Carol Pub. Group. Inc., 50 F.3d 132, 141 (2d Cir. 1998) (A transformative work ?is the
very type of activity that the fair use doctrine intends to protect for the enrichment of
society").

Further, my clients copied no more than necessary for purposes of the parody. As the
Supreme Court has recognized, parodies must o?en use substantial portions of an original
work to make their point. Campbell, 510 US. at 588; see also Mattel, 353 F.3d at 803 n.8
(holding that ?entire verbatim reproductions are justi?able where the purpose of the work
differs from the original?)

Finally, critical transformative uses rarely if ever supplant markets for the original
material. Campbell, 510 US. at 591-92; see also Harper Row v. Nation Enters.,471
US. 539, 567-69 (1985). In this case, the website is plainly not a substitute for the
original, nor does it invade any licensing market for the Post?s copyrighted works.

More broadly, the website serves the public interest by advancing political criticism and
debate on the several pressing political issues. Nimmer on Copyright, ('the

815 EDDY STREET, SAN FRANCISCO, CA 94109 USA phone +1.415.436.9333 fax +1.415.436.9993 eff.org

January 21, 2019
Page 3 of3

public interest is also a factor that continually informs the fair use analysis"); see also
Sony v. Universal, 464 US. 417, 431-32 (1984) (?courts are more willing to ?nd a
secondary use fair when it produces a value that bene?ts the broader public interest?);
Mattel, 353 F.3d at 806 (?the public bene?t in allowing . . . social criticism to ?ourish is
great?).

Accordingly, my clients decline to meet your demands. That said, in the interests of
resolving this matter amicably, my client has removed all links to washingtonpost.com.

If you have any further concerns, please do not hesitate to contact me.

Sincerely,

Corynne McSherry
Legal Director
Electronic Frontier Foundation

815 EDDY STREET, SAN FRANCISCO, CA 94109 USA phone +1.415.436.9333 fax +1.415.436.9993 eff.org