People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001), was an important Internet domain trademark infringement 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.
Background
In 1995, Doughney registered the domain name peta.org for his website titled "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, 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" 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. The court relied on Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Group, Inc., to rule 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" itself 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".
Accusation of cybersquatting
Although PETA did not initially allege that Doughney violated the Anticybersquatting Consumer Protection Act (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 Amendment right to do so.
See also
- Planned Parenthood Federation of America, Inc. v. Bucci
References
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).
- "People for the Ethical Treatment of Animals v. Doughney". FindLaw. â€" Fourth Circuit opinion affirming the grant of summary judgment to PETA.