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EFF responds to threats from Barney's attorneys: Get lost



Some background:

Barney's attorneys threaten EFF over mirror of anti-Barney hacker 'zine:
http://www.wired.com/news/digiwood/0,1412,44998,00.html

The crude and frankly not that interesting issue of the 'zine in question:
http://www.etext.org/CuD/PPIC/ppic0006

A boilerplate letter from Barney's attorneys (letter to EFF is not online):
http://www.physics.umn.edu/~duvernoi/barney.txt

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:
http://www.martindale.com/xp/Martindale/Lawyer_Locator/Search_Lawyer_Locator/search_result.xml?PG=0&STYPE=N&LNAME=carlin&FNAME=matthew&FN=&CN=&CTY=&STS=&CRY=1&LSCH=

Matthew Carlin threatens cybercheeze.com over "150 Ways to Kill the
Purple Dinosaur":
http://www.politechbot.com/p-02177.html

-Declan

---

http://www.politechbot.com/docs/barney.eff.070801.html

July 9, 2001
   
VIA E-MAIL, FACSIMILE and REGULAR MAIL
   
   Matthew Carlin
   Gibney, Anthony & Flaherty, LLP
   665 Fifth Avenue
   New York, New York 10022
   Telephone: 212.688.5151
   Fax: 212.688.8315
   
   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
   the EFF.
   
   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
   lyrics.
   
   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
       First Amendment).
       
   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. 
   
   Trademark Claim
   
   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.
   
   Copyright Claim
   
   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
       purposes.
       
   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
   586.
   
   (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
   clarified:
   
   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.
       
   Campbell
   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.
       
   Campbell
   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
   material.
   
   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
   relief.
   
   Please do not hesitate to contact me with any further questions or
   concerns.
   
   Sincerely,
   
   
   
   Cindy A. Cohn



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