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Just A Joke: The Parody Defense In Domain Name Cases

By Stephen Feingold and Kathy Critchley

When should a third party be able to incorporate a trademark in a domain name as a form of parody? Historically the question of parody has more often been raised in copyright infringement cases where the defendant concedes that he has used a copyrighted work, but has done so in order to make a social criticism or comment. Generally courts will examine such claims by looking at whether the amount of the copyrighted work taken was no more than necessary to conjure up the original in the mind of the targeted audience and whether the parody was commenting on the copyrighted work or merely using the creativity of another to make a statement about some unrelated topic or issue. See eg, Elsmere Music, Inc v. National Broadcasting Co., 482 F. Supp. 741, 747 (S.D.N.Y. 1980), aff'd, 623 F.2d 252 (2d Cir. 1980) (finding Saturday Night Live's use of 'I Love Sodom' to be protected parody of 'I Love New York').

Parody in the trademark context is less frequent and the guidelines for evaluating it are less clear. While it has been stated that '[a] parody must convey two simultaneous ' and contradictory messages: that it is the original, but also that it is not the original and instead is a parody,' Cliff Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d 490, 494 (2d Cir. 1989), this clear and concise statement of the law is often ignored. At one end of the spectrum the use of Mutants of Omaha as a protest against nuclear war was not a parody, even though it appears to be clearly within the Cliff Notes standard. See Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988). On the opposite end of the spectrum is the recent 'Barbie' case where Judge Kozinski advised Mattel to 'chill' over the use of 'Barbie' in a song by a pop music group. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 908 (9th Cir. 2002), cert. denied, ' S. Ct. ' (2003).

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