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 our disposal and will seek appropriate
affirmative relief.

 

Please
do not hesitate to contact me with any further questions or concerns.

 

Sincerely,

 

 

 

Cindy A. Cohn