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Parody: a Safe Harbor under the Anti-Cybersquatting Protection Act

By Martha L. Arias

he Antic-Cyber squatting Protection Act (ACPA), 15 U.S.C.S § 1125(d), prohibits bad-faith, for profit, and abusive registration of Internet domain names in violation of the rights of trademark owners.  This practice is known as cyber squatting.  A successful cyber squatting claim must prove three elements: (1) that the affected trademark was distinctive at the time the domain name was registered; (2) that the domain name registered is identical or confusingly similar to the trademark; and (3) that the defendant used and registered the domain name with a bad faith and intent to profit. 15 U.S.C.S § 1125(d)(1)(A).  In traditional trademark violation cases, parody is used as element to determine whether there is likelihood of confusion; it is not a standing-alone defense.  In cyber squatting cases, however, parody has been used as a defense within the ACPA safe harbor provision.

 

ACPA safe harbor provision, 15 U.S.C.S § 1125(d)(1)(B)(ii), precludes a finding of bad faith when the defendant had reasonable grounds to believe that the use of a domain name was a fair use or otherwise lawful.  Thus, a defendant alleging parody under this safe harbor provision must prove that his use of the trademark in the domain name was fair use or otherwise lawful.  ACPA provides nine non-exclusive factors to determine whether the use of a trademark involves bad faith intent to profit. 15 U.S.C.S. § 1125(d)(1)(B)(i). Factor four in this list says that the court should consider "the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name."  This fourth factor enunciated by the ACPA seems to support the safe harbor provision by directing the court to consider the non-commercial or fair use of the mark.  So, can a defendant in a cyber squatting case successfully argue that he registered a domain name for non-commercial purposes and with the intent to criticize or parody a particular trademark?

Probably yes.  If the defendant proves that he registered the domain name not with the intention to profit but as a forum for satire, parody, criticism, or similar expressions regarding a particular trademark. An example of parody defense under the ACPA safe harbor provision is the case of Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045  (10th Circ. 2008).  Plaintiff, Utah Lighthouse Ministry (ULM), was created to criticize the  Church of Jesus Christ of Latter-day Saints (LDSs).  ULM had website in which it sold books and displayed their criticism against LDSs.  The defendant, Foundation for Apologetic Info. & Research (FAIR), is a New York foundation that responds to criticisms of the LDSs church.  FAIR had its own website and also created a website parodying ULM's website, which had similar content and graphics to those found in ULM's website.  The parody site had language similar to the one found in ULM's site but distorted and with the words "Destroy, Mislead, and Deceive" written across the stripes. The parody website contained no advertising or goods for sale but it had a lighthouse which is ULM's trademark. 

 

ULM filed a lawsuit against FAIR for (1) trademark infringement; (2) unfair competition under federal law; (3) unfair competition under Utah law; (4) trademark dilution; (5) cyber squatting; and (6) trade dress infringement under federal law. Defendant moved for summary judgment in all six counts and the court granted it. Regarding the cyber squatting claim, ULM claimed that FAIR violated 15 U.S.C.S § 1125(d) when FAIR created a similar website to that used by ULM.  The district court held, and the court of appeals affirmed, that  there was not evidence that defendant used its mark in connection with the sale of goods or services, or that defendants' use was likely to cause confusion among consumers. The court further said that the FAIR website was a parody and there was little, if any, likelihood of confusion or that consumers would not recognize it as a parody website. Additionally, under ACPA's safe harbor provision, defendant reasonably believed that the use of ULM's domain name and trademark was legal.   

 

Full post as published by IBLS Internet Law Blog on October 01, 2008 (boomark / email).