Trademark Law and Practice, Pages 177–180

People for the Ethical Treatment of Animals v. Michael T. Doughney

United States Court of Appeals for the Fourth Circuit, 2001
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Facts:

Defendant registered the domain name "peta.org" for a parody website of plaintiff called "People Eating Tasty Animals". The content was antithetical to plaintiff's views and had an exit link to plaintiff's actual website for people who were "lost" or "offended." Plaintiff asked that defendant transfer the domain name, which he refused. Plaintiff then contacted defendant's registrar, which took down the domain name and put it on "hold." Defendant suggested that plaintiff offer to buy it if it wanted the domain, and plaintiff sued to have the domain name taken down.

Procedural History:

District court granted plaintiff's motion for summary judgment, rejecting the parody argument because one could not know that it was a parody just from the URL—one had to actually go to the site and look at it.

Defendant's Argument:

As the site was a parody, it was constitutionally protected by the First Amendment.

Rules:

  • LexisNexis IconWestLaw LogoGoogle Scholar LogoPage 179

    A plaintiff alleging causes of action for trademark infringement and unfair competition must prove

    1. that it possesses a mark;
    2. that the defendant used the mark;
    3. that the defendant’s use of the mark occurred “in commerce”;
    4. that the defendant used the mark “in connection with the sale, offering for sale, distribution, or advertising” of goods or services; and
    5. that the defendant used the mark in a manner likely to confuse consumers.

  • Using a mark "in connection with goods or services" does not require one to sell or advertise goods or services, only to prevent users from obtaining or using the trademark holder's goods or services.

Issue:

Did defendant use the PETA mark in connection with goods or services?

Reasoning:

  • It is likely that users may go to defendant's site thinking it to be plaintiff's by mistake and to get so confused, frustrated, or angry when the site is not plaintiff's (instead one antithetical to it) that they give up looking for it.

  • Defendant also had links on the site to his apartment-guide website and over 30 commercial operations selling various animal products, making the use "in connection with" the sale of goods or services that way as well.

Holding:

Yes, defendant's use of the mark was in connection with goods or services. Affirmed.