ICING ON THE CAKE
Barney, the big purple dinosaur beloved by the toddler set, is a no-show at kiddie birthday parties, and if the company that licenses Barney products has its way, any adults parading around in purple dino costumes will soon become extinct.
“There’s neither hide nor hair of Barney. We can’t even have a dinosaur character that kind of looks like him,” says Marsi Roberson, owner of Animal Crackers Entertainment in Lake Forest, which provides costumed characters for parties.
Roberson used to send a big purple dinosaur to entertain kids at birthday parties but stopped because she was afraid of being sued.
“Mothers are calling us in a panic. They’re all asking us, ‘You mean you don’t have Barney? But I bought everything for a Barney party!’ They’re livid about it,” Roberson says.
They’re not the only ones.
The Lyons Group and Lyrick Studios, which own the trademark and copyright for the dinosaur, have sent letters to costume shops around the country threatening to sue them for selling, renting or using costumes resembling Barney.
About 400 letters were sent in October and another 250 were mailed in March, after the company sued a major costume supplier and obtained the names of all shop owners who had purchased purple dinos.
“For a limited time, you may be able to settle this dispute for substantially less than you may be required to pay if Lyons proceeds with its lawsuit against you,” states the letter from Lyons’ attorneys.
The letter demands that shop owners pay Lyons a fee and orders them to surrender their purple dinosaurs. In April, the National Costumers Assn. Inc. reported that Lyons has sought damages ranging from $7,500 to $75,000 per shop.
“Lyons sent letters basically threatening them with financial extinction unless they paid them money. That’s one mean purple dinosaur,” says Hal Rosner, a San Diego attorney who specializes in copyright and costume law and represents about 40 costume shops that have received the letters.
Lyons has taken “aggressive” action against the owners to guard Barney’s image and to protect children who “love and trust Barney,” said Susan Elsner Furman, media relations manager for Lyons and Lyrick in Richardson, Texas. That image has made Barney the No. 1-rated TV program for children under age 6, she says.
“Not allowing Barney impersonators is based on the safety of children and the trust factor. It’s easy to abuse a child’s trust if you’re a bogus Barney,” Elsner Furman says.
Lyons does not license adult-sized costumes because it fears that even well-meaning adults might act in an un-Barney-like way, she says.
“We don’t have the ability to control who’s in the costume. There are a lot of things adults might do that Barney would not do. They might do something that might freak children out. They might remove Barney’s head in front of the children, and Barney is real,” she says.
Even if they are not identified as “Barney,” all purple dinosaurs are an infringement, Lyons says.
“They can have a dinosaur costume. It’s when it’s a purple dinosaur that it’s illegal, and it doesn’t matter what shade of purple, either,” Elsner Furman says.
Shop owners say they assumed the dinosaurs were legal because they purchased them from a reputable costume company.
“We were buying the costume as a purple dinosaur because these kids wanted it at their birthday party,” says Vicki Williams, owner of the Rental Boutique in Santa Ana who received the letter last year. Williams sent Lyons the costume, and her insurance company recently settled out of court with the company.
“They wanted $7,500 per costume, but I settled for less,” Williams says.
“They wanted huge penalties. It’s been a money grab,” Rosner says. “These letters are overbearing and highly threatening.”
Elsner Furman would not disclose the amount of the damages sought by Lyons but said the fees are based on how much money the shops “made off our legal rights.” She disputed the notion that Lyons has profited from the settlements:
“It’s not a money issue. We do not make money on this. If we did [want to make money], we’d license the adult costumes. We could make a lot of money that way. But we choose not to do so to protect children.”
During the past four years, Lyons has sent 1,000 letters to shop owners and will continue to seek damages from those who have made money off of its trademark, Elsner Furman said. Several Orange County shop owners say their insurance companies already have paid off Lyons.
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Williams and other owners argue that it would have been more Barney-like of Lyons to first issue a cease-and-desist order before seeking damages.
Disney has issued similar orders without demanding money, they said.
For its part, Disney would not discuss details of its policy regarding costume trademark infringement, but the company does take steps to prevent unauthorized use of Mickey Mouse and the gang.
“We do protect our characters,” says Ken Green, spokesman for the Walt Disney Co. in Burbank. “Where we’d learn of a company renting costumes of our characters or providing [character] services without our permission, we would certainly enforce our copyrights.”
Green says Disney is “not prepared to go into the various measures” it takes against those who infringe on its copyrights.
Costume shop owners say their gripe isn’t with Disney, but with Lyons for levying the hefty fines.
“[Lyons] feels every shop should be copyright experts. I don’t think that the responsibility should be with mom-and-pop shops,” Rosner says. “It denies reality to expect them to examine every costume” to determine whether it’s legal.
Lyons maintains that shop owners already knew that they weren’t supposed to rent or sell a purple dinosaur that could be confused with Barney.
The company has taken out ads in costumer trade magazines warning them not to carry Barney look-alikes, and it’s common knowledge in the industry that many trademarked characters are off-limits, Elsner Furman said.
“Barney’s illegal and they know it. We’re not out there to put people out of business. It’s their responsibility to make sure they’re not violating the law. Most shop owners know they’re breaking the law. It’s Costume Shop 101,” she says. “It’s tacky to make a buck off someone’s legal trademark rights. It’s so un-Barney-like to do that.”
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The costume controversy has left some shop owners wondering when is a dinosaur just a dinosaur, and when is it Barney?
Under so-called trade dress laws, they can be found in violation if their costumes capture the “look and feel” of a character protected by copyrights or trademarks, according to Rosner. They’re liable if they confuse customers into thinking that their cuddly brown bear is Winnie-the-Pooh, or that their dinosaur is Barney.
“I’m skittish to even sell a dinosaur,” said one shop owner who asked to remain anonymous because her attorney is still negotiating a settlement with the Lyons Group. “The ‘B’ word is not a good word around our house.”
Rosner maintains that Lyons can’t lay claim to all purple dinos.
“No one owns the right to an idea. It’s that the costume can’t be substantially similar,” he said. “Basically, if you have a dinosaur that’s fat and chubby with an idiotic smile, you might be capturing the total look and feel of Barney.”
The Lyons Group says that children automatically think of Barney when they see a purple dino, so all purple dinos are suspect.
“If you ask any child in the world who a purple dinosaur is, they’ll say Barney,” Elsner Furman says. “Barney is love and innocence. It’s ironic that some people would twist that around.”
