Just A Joke: The Parody Defense In Domain Name Cases

Parody in the trademark context is less frequent and the guidelines for evaluating it are less clear. While it has been stated that '[a] parody must convey two simultaneous ' and contradictory messages: that it is the original, but also that it is not the original and instead is a parody,' Cliff Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d 490, 494 (2d Cir. 1989), this clear and concise statement of the law is often ignored. At one end of the spectrum the use of Mutants of Omaha as a protest against nuclear war was not a parody, even though it appears to be clearly within the Cliff Notes standard. See Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988). On the opposite end of the spectrum is the recent 'Barbie' case where Judge Kozinski advised Mattel to 'chill' over the use of 'Barbie' in a song by a pop music group. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 908 (9th Cir. 2002), cert. denied, ' S. Ct. ' (2003).

For trademark owners seeking to prove infringement, the obvious problem in most parody cases is that the average consumer will seldom confuse a parody with the business of the registrant. Thus, in both Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D. Va. 2000) and Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Ca. 1998), the courts found that the respective uses of lucentsucks.com and ballysucks.com were not an infringement. It should be noted that while the 'Ballysucks' case is often cited in cases where domain names are the subject of trademark infringement claims, see eg, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1065, 50 U.S.P.Q.2d 1545, 1566 (9th Cir. 1999); Nissan Motor Co. v. Nissan Computer Corp., 61 U.S.P.Q.2d 1839, 1844 (C.D. Cal. 2002); Playboy Enterprises, Inc. v. Netscape Communications Corp., 55 F. Supp. 2d 1070, 1085, 52 U.S.P.Q.2d 1162, 1173 (C.D. Cal. 1999); Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1119, 56 U.S.P.Q.2d 1662, 1673 (D. Minn. 2000), it is often overlooked that the domain name at issue in that case was not ballysucks.com. See Wal-Mart Stores, Inc. v. Walsuck and Walmart Puerto Rico, WIPO Case No. D2000-0477 (July 20, 2000) at 16 n.10. (Abbott F. Panelist). Rather, the 'Bally Sucks' site was just one of the many sites accessible within the 'www.compupix.com' web site. Bally, 29 F. Supp. 2d at 1162.