Barney parody lawsuit finally settled

On November 21 2006 Lyons Partnership LP (Lyons), the owner of the singing purple dinosaur character Barney, and an individual named Stuart Frankel entered into a settlement agreement ending almost five years of legal wrangling over Frankel's alleged infringement of Lyons's rights in the Barney name and character. The settlement agreement comes on the heels of a declaratory judgment lawsuit for non-infringement filed by Frankel in the Southern District of New York in August 2006 and a motion to dismiss the lawsuit under Rule 12(b)(1) of the Federal Rules of Civil Procedure filed by Lyons on September 29 2006, alleging a lack of subject matter jurisdiction due to the absence of an actual case or controversy.

The substance of the dispute between the parties was Lyons's objection, through a series of cease and desist letters spanning 2002 to 2006, to certain content on Frankel's website, which, as claimed in Frankel's complaint, "pokes fun at the children's television show, Barney and Friends, and specifically at its main character, Barney". The website suggests that Barney lives a secret double life and depicts Barney in contrasting 'evil' images to those of Barney's public persona. For example, the website depicts Barney with horns and sharp teeth, a pentagram and the number 666 emblazoned on his chest, with the suggestion that this is what Barney looks like after the show. It is important to note that this website is Frankel's personal website and is completely non-commercial in nature.

Lyons continued its objections to Frankel's commentary on Barney even after the Electronic Frontier Foundation sent a letter to Lyons's attorneys on Frankel's behalf supporting Frankel's position that the website fell under the doctrine of fair use and would not violate Lyons's IP rights since it:

• had no commercial purpose;
  
  
• was clearly a parody of Barney; and
  
  
• presented no likelihood of confusion with the original character.

The substance of the settlement reached between Lyons and Frankel is a covenant from Lyons not to sue Frankel for any infringement of any IP interest owned or controlled by Lyons based on the content of Frankel's website as it existed at any time through August 23 2006. In addition, Lyons is to pay Frankel $5,000. While this agreement is specific to this controversy, it may have a chilling effect on Lyons's previously very aggressive policing of its intellectual property.

Lara A Holzman, Alston & Bird LLP, New York, with assistance from David Eklund