Chick-fil-A Loses Effort to Shut Down Parody Website
New York Internet law firm Lewis & Lin defended against Chick-fil-A’s allegations of trademark infringement.
Brooklyn, New York (December 3, 2012) – Jason Selvig and Davram Stiefler, two Brooklyn-based comedians and social commentators, have won their fight to defend their parody website against Chick-fil-A, the Atlanta-based fast-food chain that was thrust in the national spotlight this year for its stance against gay marriage.
Chick-fil-A’s parent company, CFA Properties, Inc., had filed a complaint in September with the World Intellectual Property Organization (“WIPO”) against the owners of the website ChickfilaFoundation.com, claiming that the website’s domain name was confusingly similar to the Chick-fil-A trademark, and was registered and used in bad faith. Selvig and Stiefler contested these charges, retaining the New York Internet law firm Lewis & Lin, LLC to defend against Chick-fil-A’s allegations.
ChickfilaFoundation.com is a website featuring satirical videos, parodies and written content intended to critique the controversy surrounding Chick-fil-A president Dan Cathy’s stated opposition to gay marriage. The website contained a “coupon” for a free chicken sandwich to customers renouncing their homosexuality: “Trade your Homosexuality for a FREE Original Chicken Sandwich!” The site also included “messages” from former Arkansas governor Mike Huckabee and Chick-fil-A’s President and CEO, Dan T. Cathy.
According to David Lin, lead attorney for the website owners, the domain name is perfectly legitimate parody. “The whole point of parody websites is to lead readers to briefly think that the website is perhaps coming from the company, and then realize that the message is a larger criticism and social commentary,” says Lin. “Chick-fil-A’s trademark doesn’t mean they have a right to silence legitimate commentary about their brand.”
“While trademark law protects corporations from infringement, corporations can’t use trademark law to squelch free speech made through parody and satire, which is what is occurred in this case,” says Lin. The World Intellectual Property Organization agreed: “The Panel is not persuaded here that Respondent’s registration and use of the disputed domain name has been shown to be for purposes of capitalizing on Complainant’s trademark.”
Lin continues, “This case is a prime example of a huge corporation trying to bully those who speak out against its business practices. The website owners engaged in legitimate, protected free speech about Chick-fil-A’s stance on gay marriage. Large corporations cannot be allowed to use trademark law as a sword to silence criticism of their company.”
The full text of the decision is available at http://www.ilawco.com/wp-content/uploads/2012/12/Decision-D2012-1618.pdf.
About Lewis & Lin, LLC:
Lewis & Lin, LLC is an Internet and Intellectual Property law firm based in Brooklyn, New York. The firm’s highly experienced legal team has helped clients worldwide secure their IP rights, as well as anticipate and resolve a diverse range of IP issues. Lewis & Lin’s particular expertise lies in Internet transactions and disputes, including domain name licensing and sale agreements, domain name hijacking claims, Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation. The team also expertly handles licensing agreements, website user agreements, service agreements and privacy policies, as well as Internet-related trademark and copyright litigation. For further information, visit www.ilawco.com.
About Jason Selvig and Davram Stiefler:
Jason Selvig and Davram Stiefler are two Brooklyn-based actors, comedians and social commentators whose projects have appeared in the Washington Post, CNBC, and ABC News. They can be contacted through their attorney, David Lin at david@iLawco.com.
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Last week, a unanimous three-member panel of the World Intellectual Property Organization (WIPO) held in a domain name dispute that the owner of Shocking.com had legitimate rights to the domain name <Shocking.com>, based on its long-term use in connection with an ISP. See Interbasic Holding, S.A. v. Shocking, No. D2012-0654 (June 7, 2012). The dispute involved the acquisition of the domain name as a part of a going concern business. The Respondent operates a network of ISPs, whereas the Complainant owns trademarks for fragrances. In denying the Complaint, the Panel held that: ”[t]he Panel is not convinced that the Respondent acquired the Disputed Domain name with the intent to profit from the Complainant’s trade mark. The Respondent’s business is so distinct from the business of the Complainant that Internet users or customers are unlikely to be confused as to whether the Respondent may be associated, affiliated or sponsored by the Complainant, which precludes the presumption that the Respondent acquired the Disputed Domain Name, expecting to profit from this confusion.”
In a unanimous decision of the World Intellectual Property Organization, a three member Panel denied the complaint of Johnson and Johnson in a domain name dispute filed against Webquest, Inc., the owner of the descriptive word domain name, Tucks.com. The decision came as a vindication of the rights of professional domain name investors, who register dictionary word domain names for their value as generic terms, and not for their association with known brands. Notwithstanding the proliferation of new gTLDs and the anticipated launch of new TLDs by ICANN, .com domain names remain the hottest commodity on the market. In a world where companies choose dictionary words and last names as product names, and there exists a dispute resolution process that can be subjective, domain investors often find themselves on the receiving end of administrative proceedings. Panelists are paid very little to sift through piles of evidence and conflicting arguments. Perhaps as a result, decisions can often be formulaic and interpretation of the Policy overly rigid. In this case, however, the Panel gave thoughtful consideration to the evidence, or lack thereof, in finding that the Complainant had failed to demonstrate bad faith on the part of the Respondent.
In Danshar (1963) Ltd. v. Joey Gilbert/ Daisy Li, Case No. D2011-2304 (WIPO March 11, 2012), and Floor and Decor Outlets of America, Inc. v. Anna Marie Fanelli, No: FA1430576 (NAF April 4, 2012), Lewis & Lin LLC helped successfully defend complaints brought against a former distributor of skin care products and a retail design studio, respectively. Both cases affirm the principle that a party that registers a domain name in good faith for a legitimate business use is the rightful holder of the domain name. In Danshar, the Respondent registered and used the domain name at issue for fifteen years with the blessing of the complainant’s predecessors. In Floor and Decor, the Respondent owned and operated a retail design studio under the name Floor & Decor for 22 years, 11 of those predating any use by the Complainant.