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http://www.nytimes.com/2001/05/11/technology/11CYBERLAW.html May 11, 2001 Cyber Law Journal: Does a Parody Site Go Too Far? By CARL S. KAPLAN One day about seven years ago, Michael T. Doughney was driving his car when he saw a bumper sticker that read: "People Eating Tasty Animals." The slogan -- a subversive swipe at the animal rights group People for the Ethical Treatment of Animals, widely known as PETA -- struck Doughney as extremely funny, he said in a recent interview. It also planted a seed in his mind. The following year he was the first to register the Internet domain name "peta.org." He soon posted a Web site called "People Eating Tasty Animals" at this domain that mocked what he considered to be the extremist views of the animal rights activists. From that simple beginning has arisen the longest-running legal dispute in the history of domain name litigation, lawyers say. The controversy, pitting Doughney against PETA, a Virginia-based nonprofit organization, has snaked its way from the offices of the original domain name registrar, Network Solutions, Inc., to arguments in federal district court in Virginia. Each side believes, as a matter of law and principle, that it should get to use the domain name "peta.org." Now the dispute may finally be coming to a close. Earlier this week, a panel of three judges from the United States Court of Appeals for the Fourth Circuit, in Richmond, Virginia, heard arguments from lawyers for both sides in the heated case. A decision is expected in a few months. At the heart of the dispute are two intriguing questions that might be more suitably posed to an English professor than a judge. What, precisely, is a parody on the Internet? And may a domain name that uses someone else's trademark be considered part of the joke? The questions are important because parodies are considered literary creations that are smiled upon by the First Amendment. If Doughney can show that his use of the domain name "peta.org," which served to transport people to his humorous Web site, is part of the overall parody, he is free of any trademark infringement. In a larger sense, the legal riddles are significant because they highlight a protracted battle between companies that wish to protect their trademarks or other intellectual property from misuse by those who register domain names and/or publish Web sites that spoof or criticize the targeted firms. Doughney's Web site, which was up and running for a few months in 1996 at its original peta.org address (it has since moved to another location), bills itself as "a resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research (and more!)." It links to over 30 groups and organizations that PETA probably would not approve of, including Beef Today Magazine and the Yahoo! Hunting Page. In late 1996, People for the Ethical Treatment of Animals, which has a registered service mark for "PETA," succeeding in getting a domain name registrar to place Doughney's domain name on hold so that he could no longer use it. In 1999, PETA filed a federal complaint against Doughney, charging that his use of the "PETA" mark in his domain name created the false impression that the organization was affiliated with his mocking Web site. The group claimed that Doughney's actions amounted to trademark infringement, unfair competition, cybersquatting and other wrongs. Last June, federal district judge Claude M. Hilton, in Alexandria, Virginia, agreed with PETA and issued a summary judgment ordering Doughney to transfer his domain name registration to the animal rights group. In reaching his decision, Judge Hilton concluded, significantly, that Doughney did not use the "PETA" mark in the context of a protected parody. Many courts have declared that 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, noted Judge Hilton. A classic example, which he didn't mention, is the MAD Magazine parody of the Star Trek television show, entitled "Star Blecch." Another is the booklet created by Spy Magazine some years ago entitled "Spy Notes" that resembled the look of Cliffs Notes. In the PETA case, said Judge Hilton, Internet users would not realize that they were not on an official PETA web site until "after" they had used PETA's mark to access the web page "www.peta.org". "Only then would they find Doughney's People Eating Tasty Animals," he said. Thus, stated the court, there was no parody because Doughney's use of the famous PETA name and his use of his Web site were "not simultaneous." On appeal, Doughney's lawyer, G. Gervaise Davis III, a partner in the Monterey, California-based law firm Davis & Schroeder, argued that the court below carried the simultaneous element too far -- to the point where it defied common sense. The district court's view that parody components have to be simultaneous and instantaneous is "ridiculous," said Davis in an interview. He said that in parody, there must be a brief lag between the time readers are lured to the work in the expectation that it is one thing, and the moment of the payoff when they realize it's actually a parody. The interval may be just a few seconds, but it exists nevertheless. "For example, if the parody is the book "The Wind Done Gone," you can't tell it's a parody until after you read the cover and then [start reading] the story," Davis said, referring to the "Gone With the Wind" take-off whose publication was recently stopped by a judge. In the PETA case, he added, "if I handed you a piece of paper that just said, 'People Eating Tasty Animals,' and you didn't know what PETA was, there would be no parody." A consumer has to know that PETA is an acronym for the animal rights organization, he said. The person has to punch in the domain name and then get taken seconds later to a shocking site that humorously juxtaposes its content with PETA's. The PETA mark in the domain name "sets up the parody," said Davis. In a related point, Davis asserted that the federal trademark laws do not apply to his client's actions because Doughney's Web site and domain name are not used for commercial purposes -- a requirement for the law's application. Meanwhile PETA's lawyer, who speaks like a literary critic at times, thinks Doughney's arguments on appeal won't wash. The two elements of a parody have to hit you simultaneously or there is a great risk of mischief, said the group's long-time lawyer, Philip J. Hirschkop, with Hirshkop & Associates in Alexandria, Virginia. "Suppose I open a store and put "RCA" on the front," he said. "You walk in the store, and there I have a guy dressed up as a member of the Royal Canadian Air Force." Is the use of the mark "RCA" part of the parody, he asked. "No, it is a shill or hook. You're using someone else's trade name to lure 'em in to the store," he said. Hirschkop warned that if the federal Court of Appeals adopted Doughney's view of Internet parody, people with deceptive intent would register domain names incorporating legitimate trademarks and set up fake "parody" sites in hopes of attracting buyout offers. Such deceivers would thus evade cybersquatting and trademark infringement laws. He said one person's attempt to do just that by registering the domain name for some law firms and posting so-called parody sites was rejected by a federal court last year. Doughney, 42, a Maryland-based Internet entrepreneur who is now retired, said in an interview that he did not register "peta.org" with an intention to sell it or transfer it to PETA. He said he did it with an eye to setting up a site poking fun at the animal rights group. "They are ripe for parody," he said. Doughney said that he had spent about $300,000 so far in his legal quest. As co-founder of Digix, an Internet Service Provider that eventually was sold, he reaped "several" million dollars when the company went public, according to Hirschkop. Doughney declined to comment on his net worth. Mark Lemley, an expert in Internet law and intellectual property who is a law professor at the University of California, Berkeley, said that he believed that the district court, in focusing on the simultaneous aspect of parody, analyzed the PETA case in a "rote and very artificial way." "I don't think there is an absolute simultaneous requirement," he said. Still the case is "tough," Lemley said. If a court extends the concept of parody to a domain name that lures people to the mock site, then the trademark owner is forever foreclosed from using the favorable domain name. "The real company here can't use "peta.org.," said Lemley. "I think this is a very touchy issue." ************************************************************************************ Distributed through Cyber-Society-Live [CSL]: CSL is a moderated discussion list made up of people who are interested in the interdisciplinary academic study of Cyber Society in all its manifestations.To join the list please visit: http://www.jiscmail.ac.uk/lists/cyber-society-live.html *************************************************************************************