Date: Tue, 02 Jan 2001 11:12:47 -0500
From: Gibney, Anthony & Flaherty, LLP
Subject: Re: Unauthorized Use of Intellectual Property
January 2, 2001
BY E-MAIL: email@example.com
Re: Unauthorized Use of Intellectual Property
This firm is counsel to Lyons Partnership, L.P. (Lyons
Partnership), the owners of the exclusive right to use the
copyrighted children’s dinosaur character Barney® as well
as the federally registered and famous trademark and service
It has come to the attention of Lyons Partnership that you
are operating a website found at URL: www.yuksrus.com/barney.html.
We have reviewed your website and have concluded that it
incorporates the use and threat of violence towards the children’s
character Barney without permission from Lyons Partnership.
As a result of Lyons Partnership's continuous promotion of the
Barney character, Barney has come to be recognized as a distinctive
and famous trademark and service mark. Lyons Partnership vigorously
objects to the unsavory and unwholesome content that you have
associated with its trademark and service mark Barney. The content
that you have placed on your website, used in conjunction with the
federally registered and famous trademark and service mark Barney,
including all relevant hyperlinks to third-party websites,
constitutes a violation of the Federal Trademark Dilution Act
pursuant to 15 U.S.C. 1125(c)(1). By associating the Barney
trademark with violence, your website tarnishes the distinctive
qualities of the trademark and service mark Barney. Remedies
available to Lyons Partnership based upon a violation of the
Federal Trademark Dilution Act include a permanent injunction,
damages, costs and attorneys' fees.
Your actions also constitute direct copyright infringement,
and make you subject to injunction and liable to Lyons Partnership
for its damages, costs and attorneys’ fees. Pursuant to 17 U.S.C.
§ 501(a), "anyone who violates any of the exclusive rights of the
copyright owner as provided by sections 106 through 118, or of the
author as provided in 106(a), is an infringer of the copyright or
right of the author". Lyons Partnership hereby demands that you
immediately cease and desist from diluting its trademark Barney,
as well as reproducing, distributing, performing by means of
digital audio transmission, displaying, or in any other way
infringing upon Lyons Partnership’s copyrights.
Lyons Partnership is prepared to pursue all available remedies
to protect its intellectual property rights. However, Lyons
Partnership will refrain from taking immediate legal action upon
condition that you provide written assurances by January 23, 2001,
that you have ceased and desisted from diluting the trademark and
service mark Barney, as well as reproducing, distributing,
performing by means of digital audio transmission, or displaying
the copyrighted character Barney. Your written assurances must
also state that you have removed all web page content relating to
the unlawful use of the Barney trademarks or copyrights as well
as any links to the official Barney website.
We await an immediate response from you or your counsel.
GIBNEY, ANTHONY & FLAHERTY, LLP
Matthew W. Carlin
cc: Angelo Mazza, Esq.