People for the Ethical Treatment of Animals v. Doughney
Encyclopedia
People for the Ethical Treatment of Animals v. Doughney, 263 F.3d
359 (4th Cir. 2001), was an important Internet trademark decision by the United States Court of Appeals for the Fourth Circuit
.
Michael Doughney registered the domain name
peta.org in 1995 and created a website called "People Eating Tasty Animals". The site described itself as "a resource for those who enjoy eating meat, wearing fur and leather, hunting and the fruits of scientific research".
People for the Ethical Treatment of Animals
(PETA) sued Doughney, alleging trademark infringement
, trademark dilution
and cybersquatting
. The case was initially heard in the United States District Court for the Eastern District of Virginia
, and both parties cross-appealed. The circuit court affirmed the district's court ruling, which had granted summary judgment to PETA. However, the court denied PETA's cross-appeal for attorney's fees and costs, because it held that Doughney's action was not malicious.
In 1996, PETA requested that Doughney voluntarily transfer the domain name, because it owned the trademark "PETA". Doughney refused to do so, leading to the lawsuit. PETA asserted claims of service mark infringement, unfair competition
, trademark dilution, and cybersquatting. Initially, PETA did not seek compensation other than enjoining Doughney from using the peta.org domain and an order to transfer peta.org to PETA. The district court ruled in favor of PETA in its summary judgment, leading to the appeal of the case to the circuit court.
Doughney claimed that his peta.org website was a parody of the PETA organization, and was free speech permissible under the First Amendment
. Relying on Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Group, Inc., the court ruled that in order to constitute a parody, the peta.org domain must simultaneously convey that (1) the site was the PETA site; and (2) the contradictory message that it is merely a parody.
The court held that the domain name "peta.org" only conveyed the first meaning, and thus did not qualify as a parody. The court was unwilling to consider the domain name in conjunction with the site's content for the purposes of determining whether the site "simultaneously" conveyed these two meanings, writing, "Looking at Doughney's domain name alone, there is no suggestion of a parody... The domain name does not convey the second, contradictory message needed to establish a parody -a message that the domain name is not related to PETA, but that it is a parody of PETA. Doughney claims that this second message can be found in the content of his website. Indeed, the website's content makes it clear that it is not related to PETA. However, this second message is not conveyed simultaneously with the first message, as required to be considered a parody. The domain name conveys the first message; the second message is conveyed only when the viewer reads the content of the website."
This refusal to consider a site's content when determining whether it qualifies as a parody was arguably rejected by the Fourth Circuit a few years later in Lamparello v. Falwell
, 420 F.3d 309 (4th Cir. 2005), where in discussing PETA v. Doughney, the court wrote, "[t]o determine whether a likelihood of confusion exists, a court should not consider how closely a fragment of a given use duplicates the trademark, but must instead consider whether the use in its entirety creates a likelihood of confusion." When dealing with domain names, this means a court must evaluate an allegedly infringing domain name in conjunction with the content of the website identified by the domain name."
(ACPA), it raised it during its request for summary judgement. Before and during the litigation, Doughney made statements suggesting that PETA should "settle" with him and "make him an offer". This was seen by the court as his attempt to profit from the peta.org domain. Because of this and the fact that the domain name is identical to the distinctive PETA trademark, the court ruled that Doughney violated the ACPA. However, the court further held that PETA was not entitled to damages because Doughney registered and used the domain prior to ACPA's enactment. Instead Doughney was merely required to surrender the domain.
right to do so.
Federal Reporter
The Federal Reporter is a case law reporter in the United States that is published by West Publishing. It begins with cases decided in 1880. It was preceded by Federal Cases...
359 (4th Cir. 2001), was an important Internet trademark decision by the United States Court of Appeals for the Fourth Circuit
United States Court of Appeals for the Fourth Circuit
The United States Court of Appeals for the Fourth Circuit is a federal court located in Richmond, Virginia, with appellate jurisdiction over the district courts in the following districts:*District of Maryland*Eastern District of North Carolina...
.
Michael Doughney registered the domain name
Domain name
A domain name is an identification string that defines a realm of administrative autonomy, authority, or control in the Internet. Domain names are formed by the rules and procedures of the Domain Name System ....
peta.org in 1995 and created a website called "People Eating Tasty Animals". The site described itself as "a resource for those who enjoy eating meat, wearing fur and leather, hunting and the fruits of scientific research".
People for the Ethical Treatment of Animals
People for the Ethical Treatment of Animals
People for the Ethical Treatment of Animals is an American animal rights organization based in Norfolk, Virginia, and led by Ingrid Newkirk, its international president. A non-profit corporation with 300 employees and two million members and supporters, it claims to be the largest animal rights...
(PETA) sued Doughney, alleging trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
, trademark dilution
Trademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
and cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
. The case was initially heard in the United States District Court for the Eastern District of Virginia
United States District Court for the Eastern District of Virginia
The United States District Court for the Eastern District of Virginia is one of two United States district courts serving the Commonwealth of Virginia...
, and both parties cross-appealed. The circuit court affirmed the district's court ruling, which had granted summary judgment to PETA. However, the court denied PETA's cross-appeal for attorney's fees and costs, because it held that Doughney's action was not malicious.
Background
In 1995, Doughney registered the domain name peta.org for the fictitious organization "People Eating Tasty Animals." The website contained links to over 30 sites including some that promoted the sale of leather goods and meats. At the bottom of the page, the website inquired "Feeling lost? Offended? Perhaps you should, like, exit immediately" and provided a link to the actual People for the Ethical Treatment of Animals website.In 1996, PETA requested that Doughney voluntarily transfer the domain name, because it owned the trademark "PETA". Doughney refused to do so, leading to the lawsuit. PETA asserted claims of service mark infringement, unfair competition
Unfair competition
Unfair competition in a sense means that the competitors compete on unequal terms, because favourable or disadvantageous conditions are applied to some competitors but not to others; or that the actions of some competitors actively harm the position of others with respect to their ability to...
, trademark dilution, and cybersquatting. Initially, PETA did not seek compensation other than enjoining Doughney from using the peta.org domain and an order to transfer peta.org to PETA. The district court ruled in favor of PETA in its summary judgment, leading to the appeal of the case to the circuit court.
Accusation of trademark infringement/unfair competition
PETA was a registered trademark that belonged to People for the Ethical Treatment of Animals. Thus the trademark infringement claim centered on whether "defendant used the mark "in connection with the sale, offering for sale, distribution, or advertising" of goods or services" However, the court concluded that because the website prevented others from accessing the actual PETA website, it was a use in "commerce".Doughney claimed that his peta.org website was a parody of the PETA organization, and was free speech permissible under the First Amendment
First Amendment to the United States Constitution
The First Amendment to the United States Constitution is part of the Bill of Rights. The amendment prohibits the making of any law respecting an establishment of religion, impeding the free exercise of religion, abridging the freedom of speech, infringing on the freedom of the press, interfering...
. Relying on Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Group, Inc., the court ruled that in order to constitute a parody, the peta.org domain must simultaneously convey that (1) the site was the PETA site; and (2) the contradictory message that it is merely a parody.
The court held that the domain name "peta.org" only conveyed the first meaning, and thus did not qualify as a parody. The court was unwilling to consider the domain name in conjunction with the site's content for the purposes of determining whether the site "simultaneously" conveyed these two meanings, writing, "Looking at Doughney's domain name alone, there is no suggestion of a parody... The domain name does not convey the second, contradictory message needed to establish a parody -a message that the domain name is not related to PETA, but that it is a parody of PETA. Doughney claims that this second message can be found in the content of his website. Indeed, the website's content makes it clear that it is not related to PETA. However, this second message is not conveyed simultaneously with the first message, as required to be considered a parody. The domain name conveys the first message; the second message is conveyed only when the viewer reads the content of the website."
This refusal to consider a site's content when determining whether it qualifies as a parody was arguably rejected by the Fourth Circuit a few years later in Lamparello v. Falwell
Lamparello v. Falwell
Lamparello v. Falwell, 420 F.3d 309, is a legal case heard by the United States Court of Appeals for the Fourth Circuit concerning cybersquatting and trademark infringement...
, 420 F.3d 309 (4th Cir. 2005), where in discussing PETA v. Doughney, the court wrote, "[t]o determine whether a likelihood of confusion exists, a court should not consider how closely a fragment of a given use duplicates the trademark, but must instead consider whether the use in its entirety creates a likelihood of confusion." When dealing with domain names, this means a court must evaluate an allegedly infringing domain name in conjunction with the content of the website identified by the domain name."
Accusation of cybersquatting
Although PETA did not initially allege that Doughney violated the Anticybersquatting Consumer Protection ActAnticybersquatting Consumer Protection Act
The Anticybersquatting Consumer Protection Act ', 15 U.S.C. § 1125, is an American law enacted in 1999 and established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name...
(ACPA), it raised it during its request for summary judgement. Before and during the litigation, Doughney made statements suggesting that PETA should "settle" with him and "make him an offer". This was seen by the court as his attempt to profit from the peta.org domain. Because of this and the fact that the domain name is identical to the distinctive PETA trademark, the court ruled that Doughney violated the ACPA. However, the court further held that PETA was not entitled to damages because Doughney registered and used the domain prior to ACPA's enactment. Instead Doughney was merely required to surrender the domain.
Ineligible for compensation
The court ruled that PETA was ineligible for an award of attorney's fees because Doughney did not maliciously infringe the trademark because he was creating a parody and had a First AmendmentFirst Amendment to the United States Constitution
The First Amendment to the United States Constitution is part of the Bill of Rights. The amendment prohibits the making of any law respecting an establishment of religion, impeding the free exercise of religion, abridging the freedom of speech, infringing on the freedom of the press, interfering...
right to do so.
External links
- From Book Covers to Domain Names: Searching for the True Meaning of the Cliffs Notes Temporal Test for Parody, 7 J. High Tech. L. 19 (2007). — Fourth Circuit opinion affirming the grant of summary judgment to PETA.