September 6, 2001 | Read Time: 2 minutes
A federal appeals court upheld a lower-court ruling that a former Internet entrepreneur must surrender the Web address peta.org to People for the Ethical Treatment of Animals because his use of the address violated the organization’s trademark.
In 1995, Michael T. Doughney reserved the Internet address with Network Solutions, a domain-registration company in Herndon, Va., and for about six months used it for his People Eating Tasty Animals Web site. Mr. Doughney described the site as “a resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research.”
In 1996, People for the Ethical Treatment of Animals asked Mr. Doughney to voluntarily transfer the Internet address to the charity, which has owned the PETA trademark since 1992. When Mr. Doughney refused to give up the address, the Norfolk, Va., nonprofit organization complained to Network Solutions, which placed the domain name on hold pending resolution of the dispute. Mr. Doughney then moved his Web site to http://www.mtd.com/tasty.
PETA sued Mr. Doughney in 1999 for “service-mark infringement, unfair competition, dilution, and cybersquatting.” Mr. Doughney responded by arguing that his Web site was a parody, protected by his constitutional right to free speech.
Circuit Judge Roger L. Gregory explained in the decision of the U.S. Court of Appeals, which upheld an earlier district-court ruling, that to meet the legal definition of a parody, a work 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.”
“Looking at Doughney’s domain name alone, there is no suggestion of a parody,” wrote Judge Gregory. He then agreed with the district court’s opinion that “an Internet user would not realize that they were not on an official PETA Web site” until after using the acronym that PETA has trademarked to get to the Web site.
Jeff Kerr, PETA’s general counsel, said that the organization was thrilled by the decision. “It’s a win for trademark holders,” he said. “It’s consistent with the entire development of case law in domain names that you can’t take somebody’s trademark and try to use it as your own, and I think that would benefit any nonprofit organization that finds itself faced with a similar situation from another cybersquatter.”
For the full text of the decision: Go to http://pacer.ca4.uscourts.gov/cgi-bin/getopn.pl?OPINION=001918.P.
