People For The Ethical Treatment of Animals V. Doughney - Accusation of Trademark Infringement/unfair Competition

Accusation of Trademark Infringement/unfair Competition

PETA was a registered trademark that belonged to People for the Ethical Treatment of Animals. Thus the trademark infringement claim centered on whether "defendant used the mark "in connection with the sale, offering for sale, distribution, or advertising" of goods or services" However, the court concluded that because the website prevented others from accessing the actual PETA website, it was a use in "commerce".

Doughney claimed that his peta.org website was a parody of the PETA organization, and was free speech permissible under the First Amendment. Relying on Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Group, Inc., the court ruled that in order to constitute a parody, the peta.org domain must simultaneously convey that (1) the site was the PETA site; and (2) the contradictory message that it is merely a parody.

The court held that the domain name "peta.org" only conveyed the first meaning, and thus did not qualify as a parody. The court was unwilling to consider the domain name in conjunction with the site's content for the purposes of determining whether the site "simultaneously" conveyed these two meanings, writing, "Looking at Doughney's domain name alone, there is no suggestion of a parody... The domain name does 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 is a parody of PETA. Doughney claims that this second message can be found in the content of his website. Indeed, the website's content makes it clear that it is not related to PETA. However, this second message is not conveyed simultaneously with the first message, as required to be considered a parody. The domain name conveys the first message; the second message is conveyed only when the viewer reads the content of the website."

This refusal to consider a site's content when determining whether it qualifies as a parody was arguably rejected by the Fourth Circuit a few years later in Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005), where in discussing PETA v. Doughney, the court wrote, "o determine whether a likelihood of confusion exists, a court should not consider how closely a fragment of a given use duplicates the trademark, but must instead consider whether the use in its entirety creates a likelihood of confusion." When dealing with domain names, this means a court must evaluate an allegedly infringing domain name in conjunction with the content of the website identified by the domain name."