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LYONS PARTNERSHIP,
Plaintiff-Appellant,
TED GIANNOULAS, doing business
as Famous Chicken; TFC, INC.,
Defendants-Appellees.
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Before REAVLEY, JOLLY, and EMILIO M. GARZA, Circuit Judges.
E. GRADY JOLLY, Circuit Judge:
Lyons Partnership LP ("Lyons"), the owners of the rights tothe children's caricature Barney, sued Ted Giannoulas, the creator of a sports mascot--The Famous Chicken ("the Chicken")--because theChicken had incorporated a Barney look-alike in its act. Thedistrict court granted summary judgment to Giannoulas and awardedattorneys' fees.
On appeal, Lyons raises six issues, the most important ofwhich is whether the district court erred when it determined thatthere was insufficient evidence that Giannoulas's use of the Barneytrademark caused consumer confusion under the Lanham Act. (1) Becausewe agree with the approach taken by the district court, we affirm.
This case involves a dispute over the use of the likeness of"Barney," a children's character who appears in a number ofproducts marketed to children. (2) Barney, a six-foot tall purple"tyrannosaurus rex," entertains and educates young children. Hisawkward and lovable behavior, good-natured disposition, andrenditions of songs like "I love you, you love me," have warmed thehearts and captured the imaginations of children across the UnitedStates. According to Lyons, the owner of the intellectual propertyrights for Barney and the plaintiff in the suit below, thedefendants--Giannoulas d/b/a The Famous Chicken and TFC, Inc.("TFC"), the owner of the intellectual property rights to theChicken--sought to manipulate Barney's wholesome image toaccomplish their own nefarious ends.
The Chicken, a sports mascot conceived of and played byGiannoulas, targets a more grown-up audience. While the Chickendoes sell marketing merchandise, it is always sold either by directorder or in conjunction with one of the Chicken's appearances. Thus, the Chicken's principal means of income could, perhapsloosely, be referred to as "performance art." Catering to thetastes of adults attending sporting events, most notably baseballgames, the Chicken is renowned for his hard hitting satire. Fictional characters, celebrities, ball players, and, yes, evenumpires, are all targets for the Chicken's levity. Hardly anythingis sacred.
And so, perhaps inevitably, the Chicken's beady glare came torest on that lovable and carefree icon of childhood, Barney. Lyonsargues that the Chicken's motivation was purely mercenary. Seeingthe opportunity to hitch his wagon to a star, the Chickenincorporated a Barney look-alike into his acts. The character, aperson dressed in a costume (sold with the title "Duffy theDragon") that had a remarkable likeness to Barney's appearance,would appear next to the Chicken in an extended performance duringwhich the Chicken would flip, slap, tackle, trample, and generallyassault the Barney look-alike.
The results, according to Lyons, were profound. Lyons regalesus with tales of children observing the performance who honestlybelieved that the real Barney was being assaulted. In one poignantaccount related by Lyons, a parent describes how the spectaclebrought his two-year-old child to tears. In fact, we are told,only after several days of solace was the child able to relate thehorror of what she had observed in her own words--"Chicken step onBarney"--without crying. After receiving such complaints fromirate parents who attended the Chicken's performances with theirchildren, Lyons sought to defend this assault on their bastion ofchild-like goodness and naiveté.
Giannoulas offers a slightly different perspective on whathappened. True, he argues, Barney, depicted with his large,rounded body, never changing grin, giddy chuckles, and exclamationslike "Super-dee-Dooper!," may represent a simplistic ideal ofgoodness. Giannoulas, however, also considers Barney to be asymbol of what is wrong with our society--an homage, if you will,to all the inane, banal platitudes that we readily accept andthrust unthinkingly upon our children. Apparently, he is not alonein criticizing society's acceptance of a children's icon with suchinsipid and corny qualities. Quoting from an article in The NewYorker , he argues that at least some perceive Barney as a "pot-bellied," "sloppily fat" dinosaur who "giggle[s] compulsively in atone of unequaled feeblemindedness" and "jiggles his lumpish bodylike an overripe eggplant." The Talk Of The Town: Pacifier , TheNew Yorker, May 3, 1993 at 37. The Internet also contains numerousweb sites devoted to delivering an anti-Barney message. (3) Giannoulas further notes that he is not the only satirist to takeshots at Barney. Saturday Night Live, Jay Leno, and a moviestarring Tom Arnold have all engaged in parodies at the ungainlydinosaur's expense.
Perhaps the most insightful criticism regarding Barney is thathis shows do not assist children in learning to deal with negativefeelings and emotions. As one commentator puts it, the real dangerfrom Barney is "denial: the refusal to recognize the existence ofunpleasant realities. For along with his steady diet of gigglesand unconditional love, Barney offers our children a one-dimensional world where everyone must be happy and everything mustbe resolved right away." Chala Willig Levy, The Bad News AboutBarney , Parents, Feb. 1994, at 191-92 (136-39).
Giannoulas claims that, through careful use of parody, hesought to highlight the differences between Barney and the Chicken. Giannoulas was not merely profiting from the spectacle of a Barneylook-alike making an appearance in his show. Instead, he wasengaged in a sophisticated critique of society's acceptance of thisubiquitous and insipid creature. Furthermore, Giannoulas arguesthat he performed the sketch only at evening sporting events.
The sketch would begin with the Chicken disco dancing. TheBarney character would join the Chicken on the field and dance too,but in an ungainly manner that mimicked the real Barney's dance. The Chicken would then indicate that Barney should try to followthe Chicken's dance steps (albeit, by slapping the bewildereddinosaur across the face). At this point, Barney would breakcharacter and out-dance the Chicken, to the crowd's surprise. TheChicken would then resort to violence, tackling Barney andgenerally assaulting Barney. Barney would ultimately submit to theChicken and they would walk off the field apparently friends, onlyfor the Chicken to play one last gag on the back-in-character naiveand trusting Barney. The Chicken would flip Barney over a nearbyobstacle, such as a railing.
Lyons ultimately filed a suit against Giannoulas and TFC,alleging trademark infringement, false association, unfaircompetition, and trademark dilution under the Lanham Act, copyright infringement, and other claims. The district court granted thedefendants' motion for summary judgment. In addition, the districtcourt awarded attorneys' fees to the defendants based on provisionsin the Copyright Act. Lyons has filed a timely appeal with respectto the Lanham Act claims, the Copyright Act claims, and the awardof attorneys' fees.
Because this case comes to us on appeal from a summaryjudgment motion, we review the district court's decision de novo applying the same standards applied by the district court. See Boyd v. State Farm Ins. Cos. , 158 F.3d 326, 328 (5th Cir. 1998). The moving party is entitled to summary judgment if the recordestablishes that "there is no genuine issue as to any material factand that the moving party is entitled to a judgment as a matter oflaw." Fed.R.Civ.P. 56(c).
A trademark is a word, name, symbol or device adopted and usedby a manufacturer to identify the source of goods. To establish atrademark violation, Lyons must establish that Giannoulas has usedin commerce a mark confusingly similar to Lyons's. 15 U.S.C.§ 1127. (4) The district court held that there was no likelihood ofconsumer confusion. In reaching this decision, the district courtrelied on its finding that the Chicken's performance was clearlymeant to be a parody.
Lyons makes two arguments with respect to its trademarkconfusion claim. First, Lyons argues that Giannoulas's use ofBarney was not intended as a parody. Because Lyons continues tocontest this issue on appeal, we first address whether there areany genuine issues of material fact regarding whether Giannoulaswas engaged in parodying Barney. Lyons's second argument is thatthe district court accorded too much weight to its finding thatGiannoulas's use was a parody.
In general, a parody is defined as an "artistic work thatimitates the characteristic style of an author or a work for comiceffect or ridicule." Campbell v. Acuff-Rose Music , 510 U.S. 569(1994)(quotation omitted). In general, a reference to acopyrighted work or trademark may be permissible if the use ispurely for parodic purposes. To the extent the original work mustbe referenced in order to accomplish the parody, that reference isacceptable. Giannoulas claims that his use of a Barney look-alikeclearly qualifies as a parody. He used the minimum necessary toevoke Barney--while he used a character dressed like Barney thatdanced like Barney, he did not make any other references to themythical world in which Barney resides. He did not, for instance,incorporate any of Barney's other "friends" into his act, have thecharacter imitate Barney's voice, or perform any of Barney's songs. According to Giannoulas, Barney was clearly the butt of a joke andhe referenced the Barney character only to the extent necessary toconjure up the character's image in his audience's mind.
Lyons argues that the conduct was not a parody but simply theuse of Barney. To support this claim, Lyons points to two kinds ofproffered evidence. First, Lyons notes that Giannoulas himselfadmits that he did not have a definite plan when he incorporatedBarney into the act. Lyons argues that this creates an issue offact regarding whether Giannoulas really intended to parody Barneyor simply intended to profit from incorporating the Barneycharacter into his act.
This argument is meritless. Clearly, in the context in whichGiannoulas intended to insert a reference to the Barney character,the humor came from the incongruous nature of such an appearance,not from an attempt to benefit from Barney's goodwill. This pointis clearly established by the fact that the Chicken's actionstoward Barney seem to have always been antagonistic. Although theperformance may have evolved into a far more sophisticated form ofcommentary, even at its inception, it was clearly meant as aparody.
The second argument made by Lyons is that the audience couldnot have understood the performance to be a parody. Lyons assumesthat the target audience here is children and that children wouldclearly believe that the caricature actually was Barney. AlthoughLyons is correct that the intended audience is an important factorin determining whether a performance qualifies as a parody, Lyonspresented no credible evidence that a significant portion of theaudience at evening sporting events are children. Even if youngchildren--like the two-year-old who had such a traumatic reactionto the down-trodden Barney--are in attendance, we would expect themto be supervised by parents who could explain the nature of theparody.
We therefore agree with the district court that Giannoulas'suse of the caricature clearly qualifies as a parody. We note thatLyons's insistence that the Chicken's act is not a parody is, inour view, a completely meritless argument. (5)
In order to understand Giannoulas's second argument, we mustfirst review our own precedent with respect to consumer confusionunder the Lanham Act. Our case law has set out a long list of non-exclusive, non-dispositive factors to consider when determiningwhether a use can result in confusion. These factors are referredto as the "digits of confusion." "In determining whether alikelihood of confusion exists, this court considers the followingnon-exhaustive list of factors: (1) the type of trademarkallegedly infringed, (2) the similarity between the two marks, (3)the similarity of the products or services, (4) the identity of theretail outlets and purchasers, (5) the identity of the advertisingmedia used, (6) the defendant's intent, and (7) any evidence ofactual confusion." Elvis Presley Enters. v. Copeck , 141 F.3d 188,194 (5th Cir. 1998); Conan Properties, Inc. v. Conan's Pizza, Inc. ,752 F.2d 145, 149 (5th Cir. 1985); Armco, Inc. v. Armco BurglarAlarms Co. , 693 F.2d 1155, 1159 (5th Cir. 1983). The Fifth Circuithas held that confusion resulting from a parody is not anaffirmative defense to a trademark infringement claim but isinstead an additional factor that should be considered. Elvis , 141F.3d at 149.
The district court relied on its finding that the conduct wasa parody when considering each of the remaining factors or digitsdescribed in Elvis . Giannoulas's argument is that, based on ourreasoning in Elvis , the relevance of the conduct being a parody isonly one "digit" to be considered among the "digits of confusion." Lyons argues the district court erred by relying on the conductbeing a parody to conclude that the other factors did not indicatea risk of confusion. The crux of Lyons's argument is that, whenconsidering whether conduct is likely to cause consumer confusion,even if there is overwhelming evidence that the conduct is aparody, the other digits of confusion must still be consideredseparately, without reference to whether the conduct is a parody. If, after conducting this analysis, there are factors that supportthe plaintiff's claim, he argues that the plaintiff should bepermitted to proceed to trial.
Although such a hypertechnical reading of Elvis and itsprogeny may, on some abstract level, appear logical, we find thisanalysis absolutely absurd. Such an approach would all but requirea trial for any trademark suit where the conduct was a parody. Abrief consideration of only one of the digits of confusion makesthis point clear.
The first digit, that is, the type of trademark allegedlyinfringed, questions whether the trademark is so distinctive thata consumer encountering the defendant's mark would be likely toassume that the source of a product or service is the owner of thetrademark. Thus, under the traditional analysis, the stronger thetrademark, the more likely that this factor would weigh in favor ofthe plaintiff. However, as the district court correctly noted inthis case, when a consumer encounters the use of a trademark in asetting that is clearly a parody, the strength of the mark mayactually make it easier for the consumer to realize that the use isa parody. Therefore, a strong mark is not as relevant a factorwhen the use is that of parody. (6)
It seems reasonable to us to expect that most comedians willseek to satirize images or figures who will be widely recognized bytheir audiences. It therefore seems unlikely that comedians willtarget trademarks that do not have significant strength. If thedistrict court were not able to consider the relevance that parodyplays in this analysis, the district court would almost always haveto conclude that this digit of confusion weighed in favor of theplaintiff. Such a result would effectively tie the districtcourt's hands unnecessarily and prevent the district court fromapplying common sense to determine whether a particular factor isactually likely to lead to confusion.
Simply put, although the fact that conduct is a parody is notan affirmative defense to trademark infringement, a parody shouldbe treated differently from other uses that infringe on atrademark. While it is only one factor to consider, it is a factorthat must be considered in conjunction with all of the other digitsof confusion. When, as here, a parody makes a specific, ubiquitoustrademark the brunt of its joke, the use of the trademark forsatirical purposes affects our analysis of the factors to considerwhen determining whether the use is likely to result in consumerconfusion.
We therefore conclude that the district court did not err inconsidering the other digits of confusion in the light of itsfinding that the Chicken's performance is a parody. In doing so,we hold that, when we stated in Elvis that use as parody was arelevant factor, we did not intend for the nature of the use to beconsidered separately from the other digits of confusion. Thedistrict court ably considered the other digits of confusion inthis respect, and we find no error in its conclusion that there isinsufficient evidence to support a violation under the Lanham Act.
In this case, Lyons argued that Giannoulas's use of a Barney caricature violated the Copyright Act and the Lanham Act. Thedistrict court disagreed and a review of the record indicates thatthe district court did not err in doing so. On appeal, we addressonly the argument related to the relevance that parodic conduct hason determining the likelihood of confusion in a trademarkinfringement case. We note that in this case the conduct was,without doubt, a parody. Having made that finding, the districtcourt did not err in concluding that the nature of Giannoulas's useis relevant when analyzing the other digits of confusion todetermine likelihood of confusion. For the foregoing reasons, theruling of the district court is
A F F I R M E D.
1. We have reviewed the other issues raised by Lyons and, aftera consideration of the arguments made on appeal and a review of thebriefs and the record, find no reversible error.
2. These items include television shows, videotapes, books,magazines, music albums, and plush dolls. In addition, a persondressed in a Barney costume has made public appearances at numerousevents, including inaugural balls at both of President Clinton'sinaugurations, a Red Sox game (where Barney threw the first pitch),and a public appearance with Nelson Mandela.
3. One Internet search service provides a list of links to anti-Barney web sites, many of which contain warnings like thefollowing: "If you're offended by material that suggests thekilling of Barney, or like him in any way, please don't come here."
4. With respect to services, a mark is used in commerce "when itis used in the sale or advertising of services." Id. In thiscase, Lyons has a trademark in the image of Barney. Giannoulascontends that he has not used the image of Barney in the stream ofcommerce--i.e., that he only used the appearance of Barney tosignal a parody of Barney, not to use Barney's image to promote theChicken's service. Lyons contends that there is a factual issueregarding whether Giannoulas used images of the Barney characterthat appeared in mass media to promote his service. A review ofthe record reveals a genuine issue of material fact with respect towhether Giannoulas was promoting his show through mediarepresentations of the Barney caricature.
5. It was, in fact, the plaintiff's tenacity in making thisargument that led the district court to conclude that an award ofattorneys' fees to Giannoulas was appropriate. Given the argumentmade by the plaintiffs, we agree completely with the district courton this point.
6. Lyons cites to Elvis to argue that a strong mark can berelevant even in the context of a parody. In Elvis , however, theissue was whether the Elvis trademark had been infringed by anightclub titled "the Velvet Elvis." In that case the parody wasnot of Elvis but of cheesy sixties bars. Therefore, because Elviswas not the brunt of the joke, the fact that Elvis is a strongtrademark could be regarded as an endorsement of the nightclub.