from the don't try this at home dept
Last week, we wrote about how entertainer/magician Criss Angel sent a ridiculous threat letter to comedian/magician Harrison Greenbaum after Harrison created a parody website/menu gently mocking Criss Angel’s bizarrely named restaurant, CABLP. Greenbaum had announced on Twitter that he wasn’t going to stand for this kind of bullying, and apparently he made the very smart decision to have Public Citizen Litigation Group lawyer Paul Levy respond on his behalf. If you’ve been reading Techdirt for any length of time, you should probably know that if you’re on the receiving end of a letter from Paul Levy, you’ve probably done something very dumb. But, damn, Paul’s letters are just so entertaining — you can just picture the grin on his face as he writes these. And I’m not going to mention all the puns/references to magic, because I’ll let you spot them all on your own.
It opens up pretty much as you’d expect: this is the situation, your client sent a dumb letter demanding ridiculous things, and no, my client isn’t going to cave to your demands:
I write in response to your January 3, 2022 demand letter on behalf of your clients, Christopher Nicholas Sarantakos, a/k/a/Criss Angel, and unidentified companies, contending that a parody menu created by Harrison Greenbaum and posted on the internet using the domain name CablpRestaurant.com infringed your clients’ copyright and trademark. Your demand letter insists that Greenbaum stop making fun of your client’s menu and that he transfer the domain name to certain unnamed clients that you promise to identify later. As I now explain, Greenbaum is completely within his rights under well-established precedent, both under the copyright and trademark laws and the First Amendment, and he is not going to take any of the steps that you demand.
Then a little background on the situation, with the little zinger of a link to a news article about how basically everyone is baffled by the name of Angel’s restaurant:
First, the facts. Your individual client is, as your letter noted, a well-known magician; in addition, he has, apparently through the unidentified companies, opened a restaurant called Criss Angel Breakfast, Lunch and Pizza, using his professional name; they have chosen eatblp.com and cablp.com as the restaurant’s domain names (the latter points to the former). Greenbaum is a magician, but is also an established comedian and professional comedy writer. Greenbaum regularly satirizes the state of magic and other magicians; this year, your client was one of several magicians who received the homage of being featured in his comedy. As one part of this year’s jokes, Greenbaum made fun of your clients’ restaurant by creating a parody of the menu and posting it online using the domain name CablpRestaurant.com. The name of your clients’ restaurant had already been widely pilloried in the industry, see Schwartz, Is Criss Angel’s ‘Cablp’ the Worst Restaurant Name of All Time?, (May 20, 2021), https://www.vice.com/en/article/3aqdqj/is-criss-angels-cablp-the-worst-restaurant-name-of-all-time. Greenbaum’s approach was more lighthearted. Not one of the other targets of Greenbaum’s jokes has ever threatened to sue over them.
Then there’s the obligatory “lemme explain to you how parody works” part:
Your letter says that Greenbaum has “publicly admitted that [he] intentionally [is] infringing” and “admit[s] that [he] illegally registered” the domain name, but this sleight of hand will not deceive federal judges. Greenbaum has openly proclaimed the registration of the domain name and the publication of the parody; he did not admit that anything of this was illegal or intentionally infringing, not surprising given that his speech is lawful and could not possibly cause confusion about source or sponsorship. The parody menu uses many of the same dish names as your clients’ menu does, but Greenbaum has replaced your client’s food descriptions with humorous references of his own. Each of your clients’ prices ends in .99 (such as $4.99 or $12.99), but on the parody menu, most of the prices are absurdly high (starting at $66.99 and going up to $4801.99), while others are absurdly or low (pizza for $1.99). In addition, both the top and bottom of the menu are larded with disclaimers making clear that the page is a joke, not Angel’s own restaurant page. Before the menu begins, the following appears: “THIS IS VERY OBVIOUSLY A PARODY. IF YOU WOULD LIKE TO ACCESS CABLP’S REAL MENU, CLICK HERE” (and the word “HERE” is hyperlinked to your clients’ actual menu). Next to your clients’ restaurant logo, featuring the encircled A with the letters blp, Greenbaum placed the word “(NOT).” At the bottom, among the other parody signals is the caption, “THIS IS A PARODY AND NOT THE REAL MENU, I MEAN, C’MON, YOU ALREADY KNEW THAT, RIGHT?,” and below that Greenbaum urged his readers to donate to your client’s foundation, the Johnny Crisstopher Foundation, providing two hyperlinks to the page on your client’s web site that appeals for donations to that charity. Moreover, Greenbaum has included “THIS IS A PARODY (DUH!)” in the title tag, which will appear when the parody page begins to show up in search rankings as the Streisand Effect takes hold.
Then, the legal stuff, that basically says “your threatening schtick may work on those unfamiliar with the law, but Paul Levy knows the law.”
You contend that this parody and the domain name violate your client’s trademark rights, but the law has already sawed that claim in half. First of all, Greenbaum has made an entirely noncommercial parody of your clients’ menu, and his speech about your client is entirely opinion; to the extent that it is factual, it is truthful. His domain name truthfully identifies his web site as being about your clients’ restaurant. Truthful speech and opinions are protected by the First Amendment, and that will be his first line of defense. Indeed, in the Ninth Circuit, where your client lives, as well as in many other circuits, such noncommercial uses are not subject to scrutiny under the trademark laws. Bosley Medical v. Kremer, 403 F.3d 672 (9th Cir. 2005); Radiance Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 322 (4th Cir. 2015) (citing cases).
More specifically, many decisions of the federal courts of appeals—including the Ninth Circuit—preclude the use of trademark law to stop the use of domain names in the form www.trademark.com for noncommercial web sites about the trademark holder. In addition to Bosley, these cases include Utah Lighthouse Ministry v. Foundation for Apologetic Information & Research, 527 F.3d 1045 (10th Cir. 2008); Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); Nissan Motor Co. v. Nissan Computer Co., 378 F.3d 1002 (9th Cir. 2004). TMI v. Maxwell, 368 F.3d 433 (5th Cir. 2004); and Taubman v. WebFeats, 319 F.3d 770 (6th Cir. 2003). See also Lamparello and Lucas Nursery and Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004) (cyberquatting law cannot be invoked to cancel domain names for critical web sites about the trademark holder); Utah Lighthouse, supra (same); Lamparello, supra (same). Even Houdini could not wriggle out of those constraints if the case proceeds in the Ninth Circuit.
In the Second Circuit, your claim would have to be one of initial interest confusion, which “requires a showing of intentional deception.” Savin Corp. v. Savin Group, 391 F.3d 439, 462 (2d Cir. 2004), citing Bihari v. Gross, 119 F. Supp.2d 309, 319 (S.D.N.Y.2000); and BigStar Entm’t, v. Next Big Star, 105 F. Supp.2d 185, 207 (S.D.N.Y.2000). Greenbaum’s disclaimers are strong evidence of his lack of deceptive intent. Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 556 (5th Cir. 1998); Fischer & Frichtel Custom Homes v. Fischer Mgt., 2021 WL 1750174, at *6 (E.D. Mo. May 4, 2021); Smith v. Wal-Mart Stores, 537 F. Supp. 2d 1302, 1338 (N.D. Ga. 2008); Virginia Polytechnic Inst. v. Hokie Real Estate, 2011 WL 926862, at *13 (W.D. Va. Mar. 15, 2011). Your implicit initial interest confusion argument cannot prevail on the facts of this case, considering the many prominent “THIS IS A PARODY” statements. Moreover, because Greenbaum has played off your client’s mark as part of an artistic or literary performance, the artistic relevance standard of Rogers v. Grimaldi, 875 F.2d 994, 1000 (2d Cir. 1989), provides a strong defense for Greenbaum’s use.
The threat letter also included a copyright claim which was so dumb we didn’t even mention it in our original article, but Levy wasn’t going to let that slide either:
Your claim of copyright infringement does not levitate your threat of litigation into the realm of the plausible. You do not specify which client owns the alleged copyright, but searching the register for copyrights registered by Sarantakos himself, I see that although he has registered the copyright in a number of his works, it does not appear that his menu is one of them. Such registration is a necessary predicate for an infringement suit. 17 U.S.C. § 411. Indeed, one might question whether the menu is original enough to support a claim of copyright; but if it is, Greenbaum has made fair use. The use is both non-commercial and transformative, providing strong support on the first fair use factor. Greenbaum’s use will in no way interfere with the market for your client’s use, hence the fourth factor also favors Greenbaum. The menu is a factual description of the food available for purchase at your clients’ restaurant, which gives them little support on the second fair use factor. And Greenbaum has only used the basic format of the menu as well as a few of the food categories—the least original part of the work—while substituting his own humorous food descriptions and even some parody food categories, so the third factor favors Greenbaum as well.
And then the closing, which contrary to what that famous movie says, is not called “the prestige,” but this works either way:
Greenbaum would prevail whether you sued him in federal court in Las Vegas or in New York, and proceeding under the UDRP would not enable your client to pull a rabbit out of his hat. If you initiate a UDRP proceeding, we will seek a declaratory judgment of noninfringement, and invoke the stay provisions of the URDP so that Greenbaum can defend his First Amendment rights in federal court.
Or, you can just allow your claims to pull a disappearing act. Otherwise, Greenbaum will stand up for his rights rather than complying with your demands.
Anyway, Paul Levy’s greatest magic trick is making thuggish legal bullies crawl into a little ball of despair and (if they have any sense at all) disappear.
On a separate note, I will mention that earlier this week, Criss Angel actually released a touching short documentary film about his young son who has been battling cancer (for what it’s worth, as mentioned in Levy’s letter, in Greenbaum’s parody menu, he directed people to the foundation Angel set up, the Johnny Crisstopher Foundation). I recommend watching the film and it’s nice to see how much time and effort Angel is putting into trying to help kids with cancer. He deserves praise for that. But it seems pretty silly to wipe away that kind of goodwill with thuggish legal threats over someone making a good-natured parody over your silly restaurant menu.