EFFector Vol. 14, No. 14 July 16, 2001
[email protected]
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
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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.,
[email protected],
+1 415 436 9333 x108
Will Doherty, EFF Online Activist / Media Relations,
[email protected],
+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/
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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,
[email protected],
Robin Gross, EFF Staff Attorney,
[email protected],
+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/
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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
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Administrivia
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