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EFFector - Volume 14, Issue 14 - Foreign Bank Pres Drags Journalist into NY Court

   EFFector       Vol. 14, No. 14       July 16, 2001     editor@eff.org

   A Publication of the Electronic Frontier Foundation     ISSN 1062-9424

    IN THE 174th ISSUE OF EFFECTOR (now with over 27,700 subscribers!):

     * Foreign Bank Pres Drags Journalist into NY Court
     * Tech-Savvy Indiana Student Snared in California Court
     * EFF Response to "Barney" Legal Threat

   For more information on EFF activities & alerts: http://www.eff.org

   To join EFF or make an additional donation:
   http://www.eff.org/support/
   EFF is a member-supported non-profit.  Please join EFF today!
     _________________________________________________________________

Foreign Bank Pres Drags Journalist into NY Court

  Electronic Frontier Foundation Urges U.S. Court to Respect Mexican Rulings

    Electronic Frontier Foundation Media Release Advisory

    For Immediate Release: July 12, 2001

    Contact:

     Cindy Cohn, EFF Legal Dir.,
       cindy@eff.org,
       +1 415 436 9333 x108

     Will Doherty, EFF Online Activist / Media Relations,
       wild@eff.org,
       +1 415 436 9333 x111

   New York - The Electronic Frontier Foundation (EFF) today urged a New
   York state court to respect Mexican court rulings that have disallowed
   lawsuits against independent journalist Al Giordano for publishing
   allegations of drug trafficking by Banco Nacional de Mexico President
   Roberto Hernandez Ramirez.

   EFF seeks to protect the First Amendment rights of online, independent
   journalists against the abusive "shopping" by large, powerful
   corporations for favorable jurisdictions. The Mexican bank brought the
   case against a Mexican-based website, produced solely by Giordano, the
   Narco News Bulletin:
    http://www.narconews.com/

   "The EFF is concerned that the bank resorted to New York courts to try
   to shut down this website because it could not do so in Mexican
   courts," said Cindy Cohn, Legal Director for the EFF. "This kind of
   forum shopping threatens to shut down one of the greatest benefits of
   the Internet -- giving a voice to independent, Internet-based
   journalists. Faced with having to defend themselves in far-flung
   jurisdictions, many independent journalists will simply choose not to
   publish on the Internet."

   The case arises from allegations published on the the Narco News
   Bulletin website that the bank president was involved in illegal
   activities in Mexico. The EFF filed an amicus brief urging the New
   York court to rule that it was improper for the bank to force Mr.
   Giordano into New York state court for the statements posted on the
   website. The hearing on the case is set for July 20, 2001.

   Since April 18, 2000, Al Giordano has produced the Narco News
   Bulletin, an online newspaper devoted to spirited investigative
   journalism on the US-Latin America drug trade. Articles posted on the
   Narco News Bulletin website have discussed allegations by others that
   Roberto Hernandez Ramirez, the president of the Banco Nacional de
   Mexico, is involved in drug trafficking. Some of these stories were
   reprinted articles from the Mexican newspaper Por Esto!, published in
   Mexico by Mario Renato Menendez.

   After failing three times to successfully sue Menendez in Mexico over
   the allegations, Banco Nacional de Mexico now seeks to force Menendez
   and Giordano to defend themselves in New York state court against the
   same basic claims. The New York case groups together the allegations
   against the Mexican-based website, hosted in Maryland, with statements
   made by Menendez and Giordano in New York City on a radio broadcast
   and at a Columbia University Law School conference.

   The EFF amicus brief asked the Court to adopt one of two courses of
   action. First, in order to deter abusive forum shopping, the EFF asked
   the court to dismiss the case since Mexican law governs the dispute.

   Alternatively, since Narconews.com mainly republished investigative
   work done by others, the EFF asked the New York court to apply a
   distinct legal standard for libel claims related to republished
   statements. The legal standard requires that a republisher had, or
   should have had substantial reasons to question the accuracy of the
   articles. EFF believes that this higher liability standard for
   republishing on the Internet is necessary to encourage the growth of
   Internet journalism.

  About EFF:

   The Electronic Frontier Foundation is the leading civil liberties
   organization working to protect rights in the digital world. Founded
   in 1990, EFF actively encourages and challenges industry and
   government to support free expression, privacy, and openness in the
   information society. EFF is a member-supported organization and
   maintains one of the most linked-to Web sites in the world:
     http://www.eff.org/

                                  - end -
     _________________________________________________________________

Tech-Savvy Indiana Student Snared in California Court

  Court Reconsiders Due Process for Alleged Software Publisher

    Electronic Frontier Foundation Media Advisory

    For Immediate Release: July 11, 2001

    Contact:

     Allonn Levy, Attorney, HS Law Group,
       ael@hsapc.com,

     Robin Gross, EFF Staff Attorney,
       robin@eff.org,
       +1 415 436 9333 x112

   San Jose, CA - Debate over whether Indiana student Matthew Pavlovich
   must appear in a DVD software publication case will continue tomorrow,
   July 12, in a California court. In December 2000, a unanimous
   California Supreme Court ruled that the appellate court must
   reconsider its decision requiring Pavlovich to defend himself in a
   California court.

   The movie industry trade group DVD-CCA continues attempts to force
   Pavlovich and 500 anonymous posters located all over the world to
   defend themselves against alleged trade secret misappropriation
   despite the hardships these alleged web publishers would face in a
   legal battle fought far from their homes.

   "The importance of Constitutional restrictions on the reach of state
   courts has never been more important than in the Internet age," said
   Pavlovich's attorney Allonn Levy, of the HS Law Group. "Without the
   proper application of these safeguards, the Internet will become a
   liability minefield for users, facing nation-wide legal exposure
   anytime they publish to the Internet, dramatically chilling speech on
   the Web," explained the San Jose litigator.

   "The US Constitution's due process clause guarantees that you will not
   be sued in Santa Clara, California, 2000 miles away from the Indiana
   student dormitory where you surf the web," stated Robin Gross, EFF
   staff attorney for intellectual property and Pavlovich's co-counsel.

   In December 1999, DVD-CCA sued hundreds of individuals, including
   Indiana college student Matthew Pavlovich, for allegedly publishing
   DeCSS software on a website that hosted various Linux-based
   open-source projects.

   The movie industry, represented by its trade group DVD-CCA, filed the
   lawsuit in California alleging trade secret misappropriation. The suit
   attempts to force Pavlovich and 500 anonymous posters located all over
   the world to defend their Internet publication of the software in
   California.

   Trial and appellate courts both denied Pavlovich's motion for
   dismissal, but in a rare move last December, the California Supreme
   Court unanimously granted Pavlovich's petition for review and sent the
   matter back to the appellate court for argument on why the
   non-California resident with no connection to the state should remain
   in the case.

   The U.S. Constitution's due process clause limits a state court's
   ability to assert power over out-of-state defendants who have no
   connection with that state.

   DeCSS is free software that allows people to play DVDs without
   technological restrictions, such as region codes, preferred by movie
   studios.

   At a January 2000 hearing, Santa Clara County Superior Court Judge
   William Elfving ordered defendants to remove postings of DeCSS pending
   the case's outcome at trial. The 6th Appellate Circuit court will hear
   EFF's appeal of Elfving's ruling this fall.

   The appeals court has stayed the alleged trade secret misappropriation
   case pending the outcome of Pavlovich's jurisdictional motion.

   The California 6th Appellate Court will hear arguments on the case on
   Thursday, July 12th at 9:30 a.m. at 333 W. Santa Clara St., 10th
   floor, in San Jose, California. For directions see:
     http://www.courtinfo.ca.gov/courts/courtsofappeal/6thDistrict/

   See Pavlovich's appellate motion to dismiss for lack of jurisdiction:
     http://www.eff.org/IP/DVDCCA_case/20000921_pavlovich_appeal.html

   See DVD-CCA's opposition to original request for dismissal:
     http://www.eff.org/IP/DVDCCA_case/20000825_dvdcca_opp.html

   EFF's archive on California DeCSS case:
     http://www.eff.org/IP/DVDCCA_case/

   Cryptome archive with more legal filings:
     http://cryptome.org/cryptout.htm#DVD-DeCSS

  About EFF:

   The Electronic Frontier Foundation is the leading civil liberties
   organization working to protect rights in the digital world. Founded
   in 1990, EFF actively encourages and challenges industry and
   government to support free expression, privacy, and openness in the
   information society. EFF is a member-supported organization and
   maintains one of the most linked-to Web sites in the world:
     http://www.eff.org/

                                  - end -
     _________________________________________________________________

                     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.

   ***

   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

     _________________________________________________________________

Administrivia

   EFFector is published by:

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   Katina Bishop, EFF Education & Offline Activism Director
   Stanton McCandlish, EFF Technical Director/Webmaster
   editors@eff.org

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