[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