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EFF responds to threats from Barney's attorneys: Get lost
- Date: Mon, 9 Jul 2001 02:01:39 -0400
- To: firstname.lastname@example.org
- Subject: FC: EFF responds to threats from Barney's attorneys: Get lost
- From: Declan McCullagh <email@example.com>
- Cc: firstname.lastname@example.org, email@example.com, firstname.lastname@example.org,email@example.com, firstname.lastname@example.org,email@example.com, Webmaster@overlawyered.com
Barney's attorneys threaten EFF over mirror of anti-Barney hacker 'zine:
The crude and frankly not that interesting issue of the 'zine in question:
A boilerplate letter from Barney's attorneys (letter to EFF is not online):
Info on Matthew Carlin, the recent law school grad and full-time Barney
lawyer who seems to have spent the last year doing nothing but writing
nastygrams to anti-Barney sites:
Matthew Carlin threatens cybercheeze.com over "150 Ways to Kill the
July 9, 2001
VIA E-MAIL, FACSIMILE and REGULAR MAIL
Gibney, Anthony & Flaherty, LLP
665 Fifth Avenue
New York, New York 10022
Re: Trademark Infringement Claim based upon Barney Parody
Dear Mr. Carlin,
I am the Legal Director for the Electronic Frontier Foundation (EFF).
As you may know, the EFF is the leading online civil liberties
organization in the world. For the past eleven years we have worked
ceaselessly to ensure that constitutional and human rights, including
the First Amendment rights of Americans, are respected online.
We are in receipt of your e-mail dated June 6, 2001, concerning the
presence of a parody of Barney on the EFF's website, as part of the
archives of an online magazine and archive project called Computer
underground Digest (CuD) that EFF hosted until recently.
At the outset, you should note that the EFF no longer hosts the CuD
archive, so the material you mentioned is no longer on our website.
This transfer was part of a longstanding arrangement EFF had with the
official archivists for CuD and has nothing whatsoever to do with your
threats. Thus, there is no basis for any further action by you against
Nonetheless, since we have been alarmed at the number of similarly
baseless threat letters that have been sent by your firm and others
under the guise of trademark and copyright protection, we will address
the substantive allegations contained in your letter. We will also be
publicizing our response, so that others who receive similar letters
from you can have the benefit of our legal analysis.
In fact, your letter comes at an opportune time. The EFF is in the
process of developing a "Chilling Effects Clearinghouse" in
conjunction with the legal clinics of several major law schools. The
purpose is to create a place where recipients of cease and desist
letters such as yours can go to get basic information to assist them
in responding. It is also to create a "hall of shame" for lawyers and
law firms that send out letters that make broad, unfounded and simply
wrong claims about what is required under copyright and trademark law.
We expect that your letter will be a prime example for use in the
project, which we plan to launch in the coming months.
As you should know, the CuD archive is a free archive of online
magazines. CuD has no commercial purpose, nor did EFF's hosting of the
archive. The article to which you object is a blatant, unvarnished
parody of Barney, including revised words to the song used in the
Barney show (which itself appears to be derivative of the children's
song "This Old Man"). The parody is clear and presents no likelihood
that anyone would confuse it with the original character or song
Your letter claims that the EFF website "incorporates the use and
threat of violence toward the children's character Barney." But your
distaste for the material, even when strangely phrased as a "threat of
violence" against an imaginary character, is plainly not the correct
standard for legal liability under either trademark or copyright law.
To the contrary, as a California federal court recently observed:
The fact that plaintiff views the song as 'attacking' the wholesome
image of its product bolsters defendants' arguments that this song
involves a parody, therefore raising First Amendment concerns. See
Dr. Suess Enterprises, L.P., v. Penguin Books USA, Inc., 109 F.3d
1394 at 1400 (observing that parody is a form of social and
literary criticism" implicating free speech interests under the
Mattel, Inc. v. MCA Records, Inc.
, 1998 U.S. Dist., LEXIS 7310 (C.D. Cal., 1998)(song "Barbie Girl" is
a parody). Your letter contains two legal claims, neither of which is
defensible under existing law.
First, you contend that the Barney parody constitutes trademark
infringement under federal law. Of course, trademark infringement
requires that the contested use give rise to a likelihood of consumer
confusion. I think youll agree that there is no plausible likelihood
that anyone could conclude that the parody was created by, or endorsed
by, your clients, and thus no possibility of consumer confusion.
Perhaps recognizing the futility of a trademark infringement claim,
you contend that the Barney parody constitutes trademark dilution in
violation of the Federal Trademark Dilution Act, 15 U.S.C.
§1125(c)(1). It appears that, in preparing your letter, you failed to
consider the rest of that section of the statute, specifically 15
U.S.C. § 1125(c)(4), which provides:
(4) The following shall not be actionable under this section:
(C) Noncommercial use of the mark.
Here, both EFF, as the host for the archive, and the CuD archive
itself, have a noncommercial purpose. There is no basis for a federal
dilution claim against EFF, CuD or anyone else who presents this
parody in a noncommercial context.
Even if the Barney parody did fall within the Federal Trademark
Dilution Act, the First Amendment would prevent its application here.
In L.L. Bean, Inc. v. Drake Publishers, 811 F.2d 26, 33 (1st Cir.
1987), the court held that the First Amendment is a complete shield
from liability for noncommercial uses of marks in artistic or
editorial contexts. That case concerned an adult magazine's parody of
the L.L. Bean outdoorwear catalog. Here, we have an online magazine's
noncommercial parody of your clients' character. As in the L.L. Bean
case, the First Amendment properly shields EFF and others from legal
liability in connection with the expressive, noncommercial parody of
the Barney character.
Second, you claim that EFF's "actions constitute direct copyright
infringement." You fail to identify which of our actions constitutes
copyright infringement. As you should know, the name "Barney" cannot
be protected under copyright law.
We can only guess that you claim a violation based upon a copyright in
the lyrics to the Barney song. If so, then, it seems you have failed
to review the standards for fair use parody under 17 U.S.C. §107 as
interpreted by the Supreme Court in Campbell v. Acuff-Rose Publishing
Publishing 510 U.S. 569 (1994). As you may recall, this case concerned
a parody of the Roy Orbison song "Oh Pretty Woman," done by a rap
group, 2 Live Crew. Because 2 Live Crew had used Mr. Orbisons song in
order to lampoon Mr. Orbison and his genre of music, the Supreme Court
found the use to fall within the bounds of the fair use doctrine.
Similarly, the parody to which you object uses elements of the Barney
song in order to criticize Barney. Accordingly, the Supreme Court's
analysis in Campbell is directly applicable here.
(1) the purpose and character of the use, including whether such use
is of a commercial nature or is for nonprofit educational
Here, the use of the Barney lyrics is noncommercial. In case you were
wondering, the Supreme Court confirmed that the "character" of the use
does not include judicial second guessing about the tastefulness of
the use: "Whether . . . parody is in good taste or bad does not and
should not matter to fair use." Campbell at 582.
(2) the nature of the copyrighted work;
The fact that the Barney song, like "Oh Pretty Woman" in the Campbell
case, falls within the heart of copyrighted expression "is not much
help in this case, or ever likely to help much in separating the fair
use sheep from the infringing goats in a parody case, since parodies
almost invariably copy publicly known, expressive works." Campbell at
(3) the amount and substantiality of the portion used in relation to
the copyrighted work as a whole;
Here, it appears that portions of the "Barney" song that have been
used are the general cadence and the phrase "I hate Barney, Barney
hates me" and variations thereof, which are direct parodies of "I love
you, you love me" in the Barney song. Again, the Supreme Court has
Parody's humor, or in any event its comment, necessarily springs from
recognizable allusion to its object through distorted imitation.
Its art lies in the tension between a known original and its
parodic twin. When parody takes aim at a particular original work,
the parody must be able to "conjure up" at least enough of that
original to make the object of its critical wit recognizable. See,
e.g., Elsmere Music, 623 F.2d, at 253, n. 1; Fisher v. Dees, 794
F.2d, at 438-439.
at 588. Here, the parody similarly "conjures up" enough of the
original to be understood as a parody.
(4) the effect of the use upon the potential market for or value
of the copyrighted work.
It seems highly unlikely that you will be able to prove even a small
effect on the market for Barney products based upon this parody. But
even if you could, the fact that a parody might hurt the market for
the parodied work is immaterial for purposes of fair use analysis:
[W]e do not, of course, suggest that a parody may not harm the market
at all, but when a lethal parody, like a scathing theater review,
kills demand for the original, it does not produce a harm
cognizable under the Copyright Act. Because "parody may quite
legitimately aim at garroting the original, destroying it
commercially as well as artistically," B. Kaplan, An Unhurried
View of Copyright 69 (1967), the role of the courts is to
distinguish between "[b]iting criticism [that merely] suppresses
demand [and] copyright infringement[, which] usurps it." Fisher v.
Dees, 794 F.2d, at 438.
at 592. It seems highly unlikely that you could prove that this parody
"usurps" any demand for the Barney song.
* * *
Thus, whether analyzed as a matter of trademark dilution or copyright
infringement, your claims are baseless. We therefore urge you to cease
sending out similar letters to the other noncommercial hosts of this
Finally, we would like to remind you that New York State Code of
Professional Responsibility DR 7-102 [§1200.33] and new york ethics
rules??Federal Rule of Civil Procedure 11 provides for sanctions for
litigation undertaken without support in existing law or sufficient
evidentiary support. You may rest assured that, should you pursue a
legal course of action against the EFF based upon the frivolous claims
made in your e-mail, we will both defend against your claims with all
of the means at are disposal and will seek appropriate affirmative
Please do not hesitate to contact me with any further questions or
Cindy A. Cohn
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