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."

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