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Solution for cults fake copyright/ trademark suits (last paragraph)

13 Jul 2001

EFF Response to "Barney" Legal Threat
E-zine Parody Is Protected Expression (July 6, 2001)
July 6, 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 you'll 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 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. Orbison's 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.

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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 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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