The owner of “Barney” appears to have acknowledged that it overreached in threatening to sue a New York doctor for poking fun at the children's dinosaur character on a Web site.

Dr. Stuart Frankel responded to Lyons Partnership's threats by filing a declaratory relief action in August seeking judicial confirmation that the Barney parodies on his site qualify as fair use. The dustyfeet.com site describes Barney as an evil merchandising scheme and features a picture of the purple dinosaur with the satanic sign "666" scrawled on its belly.

In a rare legal move, Lyons –- no doubt mindful of its potential exposure to Frankel's attorney's fees -- now insists the case should be dismissed because it promises not to sue Frankel for copyright infringement. “[T]here is no actual case or controversy for this Court to decide,” the motion to dismiss says.

One of Frankel's attorneys, Corynne McSherry of the Electronic Frontier Foundation, said the motion “suggests that they have known all along that their threats have no merit.” But she could not say how Frankel will respond to it.

As recently as June, a Lyons attorney, Matthew W. Carlin of Gibney, Anthony & Flaherty in New York, told Frankel in an e-mail that the materials he was using “are the intellectual property of Lyons Partnership” and it was “unlawful” to use them without Lyons' permission.

But in a declaration attached to the motion to dismiss, Lyons associate general counsel Thomas R. Greenwood says that

Lyons hereby unconditionally and irrevocably covenants, promises and agrees not to sue or otherwise make any claim directly or indirectly against Stuart Frankel ... for infringing any copyright.

In light of this “clear and unequivocal” promise, the motion states, “Frankel has no reasonable apprehension that he will be sued.”

Parodies such as Frankel’s usually qualify as fair use because they are noncommercial and strictly commentary. In Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994), the U.S. Supreme Court said a parody must use the original work to be effective.

Lyons does not admit in its motion that Frankel is protected under fair use and it would be getting off lightly if the case is dismissed, particularly as its threats were such an obvious distortion of copyright law.

In 2002, EFF, which has tangled with Lyons over a Barney parody on its own Web site, suggested it would bring an affirmative claim of copyright misuse on behalf of Frankel. But such a claim was not included in the complaint.

By Peyton Burgess (CNS)
10/9/06