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A federal judge erred in finding a parody Web site to be a commercial use and in deeming its owner a cybersquatter, the Web site owner has argued in a brief to the 4th U.S. Circuit Court of Appeals ( People for the Ethical Treatment of Animals Inc. v. Michael T. Doughney, No. 00-1918, 4th Cir.). Michael T. Doughney was ordered to release the domain name PETA.org to the animal rights activist group after Chief U.S. Judge Claude M. Hilton of the Eastern District of Virginia granted the motion of People for the Ethical Treatment of Animals (PETA) for summary judgment in June. In their lawsuit, PETA had alleged service mark infringement, unfair competition, service mark dilution and cybersquatting by Doughney, who established the PETA.org Web site in 1995 as a parody of the nonprofit organization. Standing for “People Eating Tasty Animals,” Doughney’s PETA.org Web site contained information and materials surrounding the fur and leather industries, as well as hyperlinks to Web sites extolling the virtues of meat. While in operation, PETA.org described itself as “a resource for those who enjoy eating meat, wearing fur and leather, hunting and the fruits of scientific research.” In 1996, Network Solutions placed the PETA.org Web site on “hold” status after the nonprofit organization voiced its concerns. Since that time, the contents of the PETA.org Web site have appeared at another domain address registered to Doughney, www.mtd.com/tasty. ATTORNEYS’ FEES Despite his finding of infringement, Judge Hilton denied a motion by PETA to recover $305,000 in attorney fees in the case. Because Doughney’s conduct was not malicious, fraudulent, willful or deliberate in nature, the case failed to qualify as “exceptional” under the Lanham Act, Judge Hilton said, thus making the awarding of fees inappropriate. “Doughney registered the domain name because he thought that he had a legitimate First Amendment right to express himself this way. . . . Doughney put up a website which he believed was a reasonable parody and was never a commercial competitor of the plaintiff. There is no evidence of intent to do financial harm,” Judge Hilton wrote. ‘WELL-EXECUTED PARODY’ Attorneys for the defendant identified two “key” errors in the decision: Judge Hilton’s determination that Doughney’s Web site could not be a parody because its content was not “simultaneous” with the PETA.org domain name and Judge Hilton’s treatment of the domain and the contents of the Web site as two distinct elements. In his appeal to the 4th Circuit, Doughney strongly criticized the decision to grant PETA summary judgment as one that “erroneously equates the expected dissonance in the mind of the parody viewer, with the legal standard of ‘likelihood of confusion’ of consumers.” “Parody is inherently the presentation of conflicting and antithetical ideas, which may initially confuse the viewer with the specific goal of highlighting the conflict. This is not the same as the trademark concept of intentionally inducing consumer confusion as to the source of a commercial product….The trademark was used not to divert business or create confusion, but to set up the inherent conflict and dissonance that is the very essence of well-executed parody,” the appeal states. As such, Doughney argued, the domain name and Web site should receive protection under the First Amendment as artistic expression. The appeal cites the case of L.L. Bean v. Drake Publishers, Inc. (1st Cir.), which held that “denying parodists the opportunity to poke fun at symbols and names which have become woven into the fabric of our daily life, would constitute a serious curtailment of a protected form of expression.” ‘DISTURBING ERROR’ Judge Hilton also erred in making the determination that the reference to PETA’s trademark in the parody domain name constituted commercial use, Doughney argued. Calling the distinction “perhaps the most disturbing error in the decision,” Doughney argued that the PETA.org Web site was a forum for expression, not profit, and thus not governed by the Lanham Act. “There was no evidence that Doughney benefited in any way from such links….There was no commercial activity on the site, which was purely informational and critical of PETA by virtue of the parody….Doughney has never had any profit motive in his use of the PETA.org domain name; it was used purely to express his political message,” the appeal states. ACTIONABLE DILUTION The finding by Judge Hilton that the Web site actionably diluted the PETA trademark is also erroneous, Doughney contended, because no economic harm was proven by the animal rights activist group and because dilution law can not apply to satire, parody or critical commentary. Judge Hilton based his decision on the fact that the content found on Doughney’s Web site were antithetical to the “purpose and message of PETA.” Doughney rejected that rationale. “If this, alone, were enough to establish actual economic harm, any website or book or article critical of a trademark holder whose famous trademark was mentioned would instantly be dilutive, actionable, and no one could ever comment adversely about a trademark owner’s activities, in a parody or otherwise. Such is not the law,” Doughney argued. CYBERSQUATTING Doughney’s conduct did not rise to the level of cybersquatting, his attorneys contend, because he never sought financial compensation for the PETA.org domain name, because he failed to act in bad faith, and because the incidents in question occurred years before the issue was the subject of legislation. “There is no way Doughney could or ever will profit financially from a situation where he has borne all the costs of producing and communicating the parody, including the massive legal fees to defend this suit. . . . There is simply no indicia of warehousing domain names nor any practice of trafficking in them, as required not only by the Cybersquatting Act, but also the comparable ICANN Uniform Domain Name Dispute Resolution Policy and Rules,” Doughney said. In addition, the Anti-Cybersquatting Protection Act became law four years after Doughney registered the PETA.org domain name, Doughney said. “To apply a law first discussed in late 1999 by Congress … to conduct of a party that had no way of knowing in 1995 that his activities might be judged illegal four years later is not only unfair, but Constitutionally objectionable as retroactive legislation,” Doughney said. People for the Ethical Treatment of Animals is represented by David Neil Ventker of Huff, Poole & Mahoney in Virginia Beach, Va. Michael T. Doughney is represented by G. Gervaise Davis III and Eric Barki Boustani of Davis & Schroeder in Monterey, Calif. Richard T. Rossier of McLeod Watkinson & Miller in Washington, D.C., is of counsel.

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