[LETTER SENT BY CINDY A. COHN, LEGAL DIRECTOR, ELECTRONIC FRONTIER FOUNDATION]

March 1, 2002

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: Another Copyright Infringement Claim based upon Barney Parody

Dear Mr. Carlin,

As you may recall, I am the Legal Director for the Electronic Frontier Foundation (EFF). As you also may recall from my last letter to you on July 9, 2001, the EFF is the leading online civil liberties organization in the world. For the past twelve years we have worked to ensure that constitutional and human rights, including the First Amendment rights of Americans, are respected online.

I last wrote to you in July, 2001 because you sent a letter to the EFF making baseless threats of copyright infringement and trademark infringement based upon the existence of a parody of Barney on the EFF website. In clear and unequivocal language, I explained to you that parody was protected expression under the First Amendment and a recognized exception to both copyright and trademark law. I also pointed out that making baseless legal threats was a breach of your ethical duties as a licensed attorney in the State of New York. I advised you to immediately cease making these threats. You failed to respond to my letter.

I write now because it seems that you also did not heed my advice. You are continuing to make unfounded legal threats to legitimte Internet speakers who parody Barney. EFF represents Dr. Stuart Frankel, who has received two threatening e-mails based upon a website that you identify as <http://www.asan.com/users/gecko/enemy.html>. The first e-mail was sent on February 11, 2001 and a second sent on February 21, 2002. For reasons unrelated to your threatening letter, Dr. Frankel's website has moved from the URL you mentioned to <http://www.speakeasy.org/~gecko/evil/parasite.html>.

First, as was the case with the EFF website, Dr. Frankel's website has no commercial purpose and is a blatant parody of Barney. It is clear and presents no likelihood that anyone would confuse it with the original character.

As you did when you baselessly threatened EFF, your letter to Dr. Frankel first claims that his website "describes the use and threat of violence toward Barney." And as was the case for the EFF website, a "threat of violence" against an imaginary character is plainly not the correct standard for legal liability under copyright law. To the contrary, such statements bolster the argument that Dr. Frankel's website is a parody:

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. Seuss 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. 28 F. Supp. 2d 1120, 1141 (CD.Cal. 1998) (song "Barbie Girl" is a parody).

Next, you note that Dr. Frankel's website uses "images of Barney" and claim that "[I]t is unlawful (pursuant to 17 U.S.C. 501(a) and other laws) to use this property without the permission of Lyons Partnership."

Of course as a licensed attorney practicing intellectual property law in the State of New York, you should be aware that this statement is misleading at best, if not flatly false. Using copyrighted images as part of a parody is, and has long been, completely lawful under the doctrine of fair use and requires no permission from Lyons Partnership.

As I did in July, let me once again reacquaint you with 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). The 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. Here, Dr. Frankel's website uses the juxtaposition of two images of Barney in order to criticize Barney. At the top of the website is a "normal" picture of Barney and at the bottom is an "after the show," picture that has been altered to make Barney look mildly satanic.

The Supreme Court's four-part analysis in the Campbell case 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.

The Supreme Court held that the Campbell parody was protected despite the fact that it was a commercial recording. Here, the use of the Barney [images] is noncommercial, making our case even stronger than that in Campbell. As you will recall from my last letter, 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 an image of Barney, 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, two photos of Barney have been used: one showing him normally and the second "after the show." 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. Since the text of the web[page you objected to] does not mention Barney by name, it is the juxtaposition of the two photos that make the parodic point.

(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 work is immaterial for purposes of fair use analysis of parodies:

[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 images of Barney.

* * *

Thus, as they were when you threatened the EFF directly, your claims are baseless and a misuse of your copyrights. We once again urge you to cease threatening noncommercial hosts of parodical material. Should you continue, or should you carry out your threat to send this baseless threat to Dr. Frankel's ISP, we will investigate bringing affirmative claims against you for, among others, copyright misuse and intentional interference with contractual relations.

As I mentioned in my first letter to you, EFF, along with several [...] prominent law schools, has launched the Chilling Effects project at www.chillingeffects.org in order to try to give Internet users information about their rights under law so that they will not be cowed into silencing themselves based upon baseless threats such as yours. You will find both your letter to EFF and your letter to Dr. Frankel there. We hope that we will not have to add additional letters from you or other representatives of Lyons Partnership to that website.

Finally, we would like to once again remind you that New York State Code of Professional Responsibility DR 7-102 [1200.33] and Federal Rule of Civil Procedure 11 provide for sanctions for litigation undertaken without support in existing law or sufficient evidentiary support. Please do not hesitate to contact me with any further questions or concerns.

Sincerely,

ELECTRONIC FRONTIER FOUNDATION

Cindy A. Cohn
Legal Director

cc: Dr. Stuart Frankel

nastygram 1
nastygram 2
back