PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001)

In this case plaintiff, People for the Ethical Treatment of Animals ("PETA"), sued defendant after he registered the domain name “peta.org” and created a website called "People Eating Tasty Animals." The United States Court of Appeals for the Fourth Circuit affirmed the district’s court decision, granting its motion for summary judgment on trademark infringement claims. The court held that the defendant used the mark in connection with goods or services and that he used it in a manner engendering a likelihood of confusion.

How did the court assume in "connection with goods and services"?

The court stated that, to use PETA's Mark "in connection with" goods or services, defendant need not have actually sold or advertised goods or services on the www.peta.org website.  Rather, defendant needed only to have prevented users from obtaining or using PETA's goods or services, or needed only to have connected the website to other's goods or services. Both criteria were fulfilled in this case:

1. Defendant's use of PETA's mark in the domain name of his website was likely to prevent Internet users from reaching PETA's own Internet web site.

2. His website contained a link to the defendants' apartment-guide website.

3. The website provides links to more than 30 commercial operations offering goods and services.

How did the court assume "likelihood of confusion"?  Protection under the theory of "parody".

The defendant did not dispute that the peta.org domain name engendered a likelihood of confusion between his website and PETA. However, he claimed that the inquiry should not end here. According to defendant his website should be considered in conjunction with the domain name because, together, they purportedly parodied PETA and, thus, did not cause a likelihood of confusion.  However, the court did not agree.   A "parody" is defined as a "simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner." A parody must "convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody."

Looking at defendant’s domain name alone, the court held that there was no suggestion of a parody. The domain name ‘peta.org’ simply copied PETA's Mark, conveying the message that it was related to PETA. The domain name did 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 was a parody of PETA. Defendant's use of plaintiffs' mark in domain name did not convey "two simultaneous and contradictory messages" because "only by reading through the content of the sites could the user discover that the domain names are an attempt at parody".  Thus, the court rejected the parody defense. Accordingly, defendant’s use of the peta.org domain name engendered a likelihood of confusion.

Planned Parenthoold Federation of America, Inc. v. Bucci, No. 97 Civ. 0629, 1997 WL 133313 (S.D.N.Y. Mar. 24, 1997)

This case is not very different from the PETA-case. The Planned Parenthood Federation of America ("PPFA") registered a servicemark. A host of a daily radio show registered this name as a domain name and started a website and homepage under the same name. Similar to PETA, the court concluded there was a likelihood of confusion, based on the "Polaroid factors" not very different from the mentoined "Sleekcraft-factors". The court concluded that defendant's use of plaintiff's trademark was subject to the Lanham Act and there was a likelihood of confusion arising from defendant's use of plaintiff's trademark. Like PETA, the defendant's argument that his site was a parody failed due to lack of fulfilling the criteria that it "conveys two simultaneous -- and contradictory -- messages: that it [was] the original, but also that it [was] not the original and is instead a parody."

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Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).  Polaroid factors: the strength of plaintiff's mark, the degree of similarity between the two marks, the competitive proximity of the products or services, the likelihood that the plaintiff will bridge the gap between the two markets, the existence of actual confusion, the defendant's good faith in adopting the mark, the quality of the defendant's product, and the sophistication of the purchasers.

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Protection under Freedom of Speech?

Defendant also claimed protection under the defense of freedom of speech, embodied in the First Amendment.  However, defendants can only utilize the First Amendment defense when use of that mark is part of a communicative message, not when it is used to identify the source of a product.  By using the mark as a domain name and home page address and by welcoming Internet users to the home page with the message "Welcome to the Planned Parenthood Home Page!", the defendant identified the website and home page as being the plaintiff's product. or forum. Therefore, the court held that the defendant was not entitled to First Amendment protection.

In this case the defendant stated that his use of PACCAR’s trademarks was a matter of fair use. Fair use is defined in 15 U.S.C. § 1115 as:

That the use of the name, term, or device charged to
be an infringement is a use, otherwise than as a mark,
of the party's individual name in his own business, or
of the individual name of anyone in privity with such party,
or of a term or device which is descriptive of and used
fairly and in good faith only to describe the goods or
services of such party, or their geographic origin.

15 U.S.C. § 1115 (2001).
TeleScan argued that the domain names containing PACCAR's trademarks truthfully identified the trucks available through its websites and that this use was descriptive or fair use. However, the court failed to grant defense.

In Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998), the court stated that a critical question in a fair use defense would be whether the defendant's use was otherwise than as a trademark.  The answer to that question would essentially turn on whether consumers viewed the words, "ROCK N' ROLL HALL OF FAME," as a label for the defendant's photograph, or as an indicator that the defendant's photograph originated with or was sponsored by the Museum.  As always, the court concluded that the touchstone will be the likelihood of consumer confusion.

Rock and Roll Hall of Fame supports the district court's rejection of TeleScan's fair use defense. A consideration of the eight "likelihood of confusion" factors aided the conclusion that TeleScan's use of PACCAR's trademarks in its domain names created a strong likelihood of confusion regarding the source of the web sites. This is consistent with the view that a finding of a likelihood of confusion forecloses a fair use defense.

Cybersquatting:  Protection from Bad Faith under the ACPA
Coca-Cola v. Purdy, 382 F.3d 774 (8th Cir. 2004)

Defendant, an antiabortion activist, registered over 60 Internet domain names that incorporated plaintiffs' famous trademarks (Coca Cola, Washington Post, Pepsi, McDonalds), in order to attract internet users to antiabortion sites. The websites for the domain names displayed content that did not originate from and was not sponsored by plaintiffs, including color pictures that purported to be dismembered aborted fetuses and links to fund-raising appeals. The domain names he registered included drinkcoke.org, mycoca-cola.com,    mymcdonalds.com, mypepsi.org, and my-washingtonpost.com. The latter name was almost exactly identical to one which the Washington Post had used to operate an interactive online news service, mywashingtonpost.com. The trademark owners brought suit against the defendant under the Anticybersquatting Consumer Protection Act ("ACPA").

Unlike the Lanham Act, the question under the ACPA, 15 U.S.C. § 1125(d), is not whether the domain names are likely to be confused with a plaintiff's domain name, but whether they are identical or confusingly similar to a plaintiff's mark.  The court considered the nine nonexclusive factors in determining whether defendant acted with bad faith intent and held that defendant did.  He registered and used domain names that were identical or confusingly similar to the domain owners' marks with a bad faith intent to profit.   Defendant argued that the First Amendment entitled him to use the domain names at issue to attract Internet users to websites containing political expression and criticism of the plaintiffs. However, the court concluded that use of trademarks has not been protected where it is likely to create confusion as to the source or sponsorship of the speech or goods in question. In this case, there is a strong likelihood for confusion.

Additionally, the court held that the defendant was not protected by the ACPA “safe harbor” provision. That provision provides that "bad faith intent…shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." 15 U.S.C. § 1125(d)(1)(B)(ii)

However, no reasonable grounds were found. On the contrary, defendant continued to register and use domain names in the face of repeated complaints and warnings from the plaintiffs that such conduct was unlawful and even after the district court issued preliminary injunctive relief.  Moreover, defendant was also enjoined in a prior Internet case where he had used a domain name to criticize his former employer and to publish employee social security numbers and salary information mistakenly emailed to his website.

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