Just A Joke: The Parody Defense In Domain Name Cases

When should a third party be able to incorporate a trademark in a domain name as a form of parody? Historically the question of parody has more often been raised in copyright infringement cases where the defendant concedes that he has used a copyrighted work, but has done so in order to make a social criticism or comment. Generally courts will examine such claims by looking at whether the amount of the copyrighted work taken was no more than necessary to conjure up the original in the mind of the targeted audience and whether the parody was commenting on the copyrighted work or merely using the creativity of another to make a statement about some unrelated topic or issue. See eg, Elsmere Music, Inc v. National Broadcasting Co., 482 F. Supp. 741, 747 (S.D.N.Y. 1980), aff'd, 623 F.2d 252 (2d Cir. 1980) (finding Saturday Night Live's use of 'I Love Sodom' to be protected parody of 'I Love New York').

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.

In Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir. 1961), the Second Circuit set forth eight factors relevant to determining a likelihood of confusion in the context of trademark infringement, they are: (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion; (6) reciprocal of defendant's good faith in adopting its own mark; (7) the quality of defendant's product; and (8) the sophistication of the buyers. Id. at 495. Courts rejecting the parody defense base their conclusions on an application of the Polaroid factors which, invariably in these circumstances, weigh in favor of the Plaintiff. After all, only strong well-known marks are going to be parodied and to be effective the parody must market to the same target audience. Furthermore, since the copying is generally intentional, courts are able to buttress these decisions by the abundance of case law that finds, as the Ninth Circuit held in Brookfield, supra, at 1059, that just '[the defendant's] intent may be sufficient to justify the inference that there are confusing similarities.' (citation omitted).

While one can try and find some principle that reconciles these lines of cases, the most honest analysis acknowledges that the outcome most often depends on how the particular judge assigned to the case perceives the objectionable material. If they see the humor, as the Judges did in the Barney case, the trademark owner is not likely to succeed almost without regard to the quality of the other evidence that may be introduced. Barney the purple dinosaur invokes such revile among some adults (perhaps equal to the love bestowed on Barney by so many toddlers) that even evidence that children were being traumatized by seeing Barney beaten up by the San Diego Padres' chicken mascot was insufficient to prove confusion. Lyons Partnership v. Giannoulas, 179 F.3d 384, 389-90 (5th Cir. 1999). Even evidence of real confusion or injury to the plaintiff's brand may not be enough to overcome the court's own subjective response to the trademark and parody at issue.

Inconsistency Among WIPO Panels and Other Arbitration Associations in Analyzing Parody

The inconsistent holdings from the Federal courts resulting from the subjective nature of this determination is also reflected, perhaps not surprisingly, in domain name cases decided by special arbitrators brought pursuant to the Uniform Dispute Resolution Policy (UDRP). Parody is an often cited defense to claims of cyber-squatting. It should not be surprising that in most cases where the registrant has had a history of multiple domain name registrations or did not put up the claimed 'parody' site until after receipt of a cease and desist letter, the parody defense is rejected out of hand, often with only a passing analysis. Unfortunately, in some cases where the evidence of bad faith is not strong and reasonable minds could differ on the actual intent of the registrant, the parody defense has been rejected without sufficient analysis. Indeed, in many of the 'lawfirmsucks' cases there has been a tendency to simply reject the very concept that someone could parody a law firm. The addition of the word 'sucks' to a law firm name would seem to both identify the trademark owner while at the same time make it clear that the site was not emanating from the law firm. To find that harsh comments mixed with crass jokes about lawyers will not be viewed as parody by the general public is to live in a world with blinders. See eg, Hunton & Williams v. American Distribution Systems, Inc., WIPO Case No. D2000-0501 (August 1, 2000).

On the other extreme is the Jerry Falwell case. In that case, the Registrant adopted the domain name 'jerryfalwell.com' and used it to spoof the well-known Reverend. However, as much as the content of the site might, and in our opinion would, qualify as legitimate parody, it was undisputed that the Registrant took Reverend Falwell's entire name. There is simply no way that the use of the disputed domain name both conjured up the Complainant while making clear that the domain name was not originating from him. Yet, in a split decision, the panel concluded that the site was parody and therefore not actionable within the UDRP. Reverend Dr. Jerry Falwell v. Gary Cohn, WIPO Case No. D2002-0184 (June 3, 2002). Certainly, this trend has contributed to a perception among some that the UDRP is unfairly applied in favor of certain groups and against others.

The panelist in A&F Trademark, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900 (September 19, 2001) (Weinstein J.) attempted to reconcile these cases by setting forth a clear standard that is easily applied to determine if there is a legitimate parody defense. The two-part test requires the panel to determine 1) whether the domain name itself has the capacity to constitute parody, and 2) whether registrant's use of that domain name, on its Web site or otherwise, is consistent with its claim of parody. Id. at 6.

The A&F panelist, however, recognized that not every possible domain name that meets that standard is actually being used to create a parody site. Therefore, in A&F, the panelist articulated a second additional factor that must be satisfied, namely that to be a parody there must be some relationship between the content on the parody site and the trademark or its owner. Thus, applying this newly created standard to the facts in that case, the panelist rejected the parody defense because the content of the site ' adult pornography ' bore no relationship to the Complainant and was nothing more than a clever pun.

The A&F standard, if applied more frequently, could be an important step providing greater predictability and consistency in adjudicating abusive domain name registration cases brought under the UDRP where parody is raised as a defense. Indeed, this standard provides a useful framework for deciding this same issue when it arises generally in federal trademark litigation.

Stephen W. Feingold sits on the Editorial Board for this publication and is a partner at Pitney, Hardin, Kipp & Szuch, LLP. He is also an Adjunct Professor of Trademark Law at Fordham University School of Law. Kathy Critchley is an associate at Pitney Hardin specializing in Intellectual Property Litigation.

When should a third party be able to incorporate a trademark in a domain name as a form of parody? Historically the question of parody has more often been raised in copyright infringement cases where the defendant concedes that he has used a copyrighted work, but has done so in order to make a social criticism or comment. Generally courts will examine such claims by looking at whether the amount of the copyrighted work taken was no more than necessary to conjure up the original in the mind of the targeted audience and whether the parody was commenting on the copyrighted work or merely using the creativity of another to make a statement about some unrelated topic or issue. See eg, Elsmere Music, Inc v. National Broadcasting Co. , 482 F. Supp. 741, 747 (S.D.N.Y. 1980), aff'd, 623 F.2d 252 (2d Cir. 1980) (finding Saturday Night Live's use of 'I Love Sodom' to be protected parody of 'I Love New York').

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.

In Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir. 1961), the Second Circuit set forth eight factors relevant to determining a likelihood of confusion in the context of trademark infringement, they are: (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion; (6) reciprocal of defendant's good faith in adopting its own mark; (7) the quality of defendant's product; and (8) the sophistication of the buyers. Id. at 495. Courts rejecting the parody defense base their conclusions on an application of the Polaroid factors which, invariably in these circumstances, weigh in favor of the Plaintiff. After all, only strong well-known marks are going to be parodied and to be effective the parody must market to the same target audience. Furthermore, since the copying is generally intentional, courts are able to buttress these decisions by the abundance of case law that finds, as the Ninth Circuit held in Brookfield, supra, at 1059, that just '[the defendant's] intent may be sufficient to justify the inference that there are confusing similarities.' (citation omitted).

While one can try and find some principle that reconciles these lines of cases, the most honest analysis acknowledges that the outcome most often depends on how the particular judge assigned to the case perceives the objectionable material. If they see the humor, as the Judges did in the Barney case, the trademark owner is not likely to succeed almost without regard to the quality of the other evidence that may be introduced. Barney the purple dinosaur invokes such revile among some adults (perhaps equal to the love bestowed on Barney by so many toddlers) that even evidence that children were being traumatized by seeing Barney beaten up by the San Diego Padres' chicken mascot was insufficient to prove confusion. Lyons Partnership v. Giannoulas , 179 F.3d 384, 389-90 (5th Cir. 1999). Even evidence of real confusion or injury to the plaintiff's brand may not be enough to overcome the court's own subjective response to the trademark and parody at issue.

Inconsistency Among WIPO Panels and Other Arbitration Associations in Analyzing Parody

The inconsistent holdings from the Federal courts resulting from the subjective nature of this determination is also reflected, perhaps not surprisingly, in domain name cases decided by special arbitrators brought pursuant to the Uniform Dispute Resolution Policy (UDRP). Parody is an often cited defense to claims of cyber-squatting. It should not be surprising that in most cases where the registrant has had a history of multiple domain name registrations or did not put up the claimed 'parody' site until after receipt of a cease and desist letter, the parody defense is rejected out of hand, often with only a passing analysis. Unfortunately, in some cases where the evidence of bad faith is not strong and reasonable minds could differ on the actual intent of the registrant, the parody defense has been rejected without sufficient analysis. Indeed, in many of the 'lawfirmsucks' cases there has been a tendency to simply reject the very concept that someone could parody a law firm. The addition of the word 'sucks' to a law firm name would seem to both identify the trademark owner while at the same time make it clear that the site was not emanating from the law firm. To find that harsh comments mixed with crass jokes about lawyers will not be viewed as parody by the general public is to live in a world with blinders. See eg, Hunton & Williams v. American Distribution Systems, Inc., WIPO Case No. D2000-0501 (August 1, 2000).

On the other extreme is the Jerry Falwell case. In that case, the Registrant adopted the domain name 'jerryfalwell.com' and used it to spoof the well-known Reverend. However, as much as the content of the site might, and in our opinion would, qualify as legitimate parody, it was undisputed that the Registrant took Reverend Falwell's entire name. There is simply no way that the use of the disputed domain name both conjured up the Complainant while making clear that the domain name was not originating from him. Yet, in a split decision, the panel concluded that the site was parody and therefore not actionable within the UDRP. Reverend Dr. Jerry Falwell v. Gary Cohn, WIPO Case No. D2002-0184 (June 3, 2002). Certainly, this trend has contributed to a perception among some that the UDRP is unfairly applied in favor of certain groups and against others.

The panelist in A&F Trademark, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900 (September 19, 2001) (Weinstein J.) attempted to reconcile these cases by setting forth a clear standard that is easily applied to determine if there is a legitimate parody defense. The two-part test requires the panel to determine 1) whether the domain name itself has the capacity to constitute parody, and 2) whether registrant's use of that domain name, on its Web site or otherwise, is consistent with its claim of parody. Id. at 6.

The A&F panelist, however, recognized that not every possible domain name that meets that standard is actually being used to create a parody site. Therefore, in A&F, the panelist articulated a second additional factor that must be satisfied, namely that to be a parody there must be some relationship between the content on the parody site and the trademark or its owner. Thus, applying this newly created standard to the facts in that case, the panelist rejected the parody defense because the content of the site ' adult pornography ' bore no relationship to the Complainant and was nothing more than a clever pun.

The A&F standard, if applied more frequently, could be an important step providing greater predictability and consistency in adjudicating abusive domain name registration cases brought under the UDRP where parody is raised as a defense. Indeed, this standard provides a useful framework for deciding this same issue when it arises generally in federal trademark litigation.

Stephen W. Feingold sits on the Editorial Board for this publication and is a partner at Pitney, Hardin, Kipp & Szuch, LLP. He is also an Adjunct Professor of Trademark Law at Fordham University School of Law. Kathy Critchley is an associate at Pitney Hardin specializing in Intellectual Property Litigation.