People for the Ethical Treatment of Animals, Inc. v. Doughney, 113 F.Supp.2d 915 (E.D. Va. 2000) (full-text) (cross motions for summary judgment); 2000 U.S. Dist. LEXIS 13421 (E.D. Va. Aug. 31, 2000) (motion for attorney's fees); 263 F.3d 359, 60 U.S.P.Q.2d (BNA) 1109 (4th Cir. 2001) (full-text).
Factual Background Edit
Plaintiff, the People for the Ethical Treatment of Animals, had used the mark PETA since 1980 to promote public awareness of animal rights. In September 1995, defendant registered the domain name "peta.org" and used it for a website called "People Eating Tasty Animals," which was targeted to "those who enjoy eating meat, wearing fur and leather, [and] hunting." Defendant's website contained over thirty links to commercial sites promoting, among other things, the sale of leather goods and meats.
Trial Court Proceedings Edit
The court granted plaintiff's motion for summary judgment on its claims of trademark infringement, dilution, and cybersquatting. First, the court held that defendant infringed plaintiff's PETA mark, finding that the defendant had used the "peta.org" name in commerce in connection with the distribution of information "services." Commercial use was further established by the hyperlinks on defendant's website to commercial websites. And defendant's copying of plaintiff's mark created a presumption of likelihood of confusion, which was supported by evidence of actual confusion.
Second, the court found dilution by blurring because defendant's "peta.org" site contained materials antithetical to the purpose of PETA, and such use of the mark caused actual economic injury by lessening the mark's selling power as an advertising agent for plaintiff's goods and services.
Third, defendant was liable under the ACPA because he had a bad-faith intent to profit by using the "peta.org" name in a commercial manner. The court rejected defendant's argument that his website was a parody. Although defendant was free to criticize PETA from any other website, doing so at the "peta.org" website caused many people to initially assume that they were accessing an authentic PETA website and resulted in confusion rather than a legitimate satire.
The court also rejected defendant's defenses of trademark misuse and unclean hands. Although plaintiff had itself registered several domain names containing trademarks of others and used them for websites criticizing the trademark owners for mistreating animals (e.g., "ringlingbrothers.com" and "voguemagazine.com"), it voluntarily transferred those names to the trademark owners when they objected. Additionally, the court found these websites "not properly the subject of an unclean hands defense," as "[w]hat is material is not that the plaintiff's hands are dirty, but that he dirtied them in acquiring the rights he now asserts." The court thus ordered defendant to transfer the "peta.org" domain name to plaintiff and enjoined defendant from using domain names containing the PETA mark or any colorable imitations or confusingly similar marks.
After prevailing on its motion for summary judgment, plaintiff filed a motion seeking attorney's fees of $276,000, claiming that defendant's infringement was willful. The court denied plaintiff's motion, however, finding that defendant's infringement was not willful because (1) defendant believed he had a legitimate First Amendment right to parody plaintiff's organization, (2) defendant was never a commercial competitor of plaintiff, and (3) defendant had no intent to harm plaintiff financially.
Appellate Court Proceedings Edit
As to trademark infringement, the appellate court noted that defendant need not have actually sold or advertised goods or services on the "peta.org" website to satisfy the requirement that defendant used the name "in connection with" goods or services. Rather, defendant need only have prevented Internet users from obtaining or using PETA's goods or services, or need only have connected the website to others' goods of services. Here, defendant's use of the PETA mark in the "peta.org" domain name was likely to prevent Internet users from reaching PETA's website. Moreover, by providing links to commercial websites offering goods and services, defendant used plaintiff's PETA mark "in connection with" the sale of goods or services.
The district court properly rejected defendant's parody defense and found that defendant's use of the "peta.org" domain name created a likelihood of confusion. Noting that a parody must convey two simultaneous and contradictory messages (i.e., it is the original, but also that it is not the original, but a parody), the court held that the domain name conveyed only the message that it was related to PETA.
Although defendant correctly noted that the second message could be found in the content of his website, the court held that the messages must be conveyed simultaneously to be considered a parody. Internet users seeking the official PETA site would not realize that they were at a different site until after they reached the "peta.org" site.
Defendant attacked the district court's ACPA holding on several grounds, including: (1) plaintiff did not plead an ACPA claim, but raised it for the first time in its motion for summary judgment ; (2) the ACPA cannot be applied retroactively; (3) defendant did not seek to profit from using the PETA mark; and (4) defendant acted in good faith. Even though plaintiff did not specifically plead an ACPA claim, the district court properly amended the pleadings by entering findings on unpleaded issues. The argument that the ACPA may not be applied retroactively was also unavailing, as the Act specifically states that it "shall apply to all domain names registered before, on, or after the date of the enactment." The lower court's finding of bad faith was supported by, among other things, defendant's public statements recommending that plaintiff should settle with him and defendant's history of registering domain names identical or similar to marks or names of famous people or organizations.
Defendant argued that the district court's denial of plaintiff's motion for attorney's fees triggered the application of the ACPA 's safe-harbor provision. The appeals court, however, held that a defendant who acted partially in bad faith in registering a domain name was not entitled to the benefit of the ACPA's safe-harbor provision. Finally, the appellate court affirmed the district court's finding that plaintiff was not entitled to attorney's fees because defendant's conduct was not malicious, fraudulent, or willful. Plaintiff argued that the district court's decision was inconsistent with its bad-faith finding under the ACPA, but the appeals court held that a bad-faith determination under the ACPA does not compel a finding of malicious, fraudulent, willful, or deliberate behavior required to obtain attorney's fees.
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