IP: Worth reading -- EFF responds to threats from Barney's attorneys: Get lost

[David Farber <dave@farber.net>]

>Date: Mon, 9 Jul 2001 02:01:39 -0400
>From: Declan McCullagh <declan@well.com>
>To: politech@politechbot.com
>
>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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