IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
_____________________
No. 98-11003
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LYONS PARTNERSHIP,
Plaintiff-Appellant,
versus
TED GIANNOULAS, doing business
as Famous Chicken; TFC, INC.,
Defendants-Appellees.
_________________________________________________________________
Appeals from the United States District Court for the
Northern District of Texas
_________________________________________________________________
July 7, 1999
Before REAVLEY, JOLLY, and EMILIO M. GARZA, Circuit Judges.
E. GRADY JOLLY, Circuit Judge:
Lyons Partnership LP (“Lyons”), the owners of the rights to
the children’s caricature Barney, sued Ted Giannoulas, the creator
of a sports mascot--The Famous Chicken (“the Chicken”)--because the
Chicken had incorporated a Barney look-alike in its act. The
district court granted summary judgment to Giannoulas and awarded
attorneys’ fees.
On appeal, Lyons raises six issues, the most important of
which is whether the district court erred when it determined that
there was insufficient evidence that Giannoulas’s use of the Barney
trademark caused consumer confusion under the Lanham Act.1 Because
we agree with the approach taken by the district court, we affirm.
I
This case involves a dispute over the use of the likeness of
“Barney,” a children’s character who appears in a number of
products marketed to children.2 Barney, a six-foot tall purple
“tyrannosaurus rex,” entertains and educates young children. His
awkward and lovable behavior, good-natured disposition, and
renditions of songs like “I love you, you love me,” have warmed the
hearts and captured the imaginations of children across the United
States. According to Lyons, the owner of the intellectual property
rights for Barney and the plaintiff in the suit below, the
defendants--Giannoulas d/b/a The Famous Chicken and TFC, Inc.
(“TFC”), the owner of the intellectual property rights to the
Chicken--sought to manipulate Barney’s wholesome image to
accomplish their own nefarious ends.
The Chicken, a sports mascot conceived of and played by
Giannoulas, targets a more grown-up audience. While the Chicken
1
We have reviewed the other issues raised by Lyons and, after
a consideration of the arguments made on appeal and a review of the
briefs and the record, find no reversible error.
2
These items include television shows, videotapes, books,
magazines, music albums, and plush dolls. In addition, a person
dressed in a Barney costume has made public appearances at numerous
events, including inaugural balls at both of President Clinton’s
inaugurations, a Red Sox game (where Barney threw the first pitch),
and a public appearance with Nelson Mandela.
2
does sell marketing merchandise, it is always sold either by direct
order or in conjunction with one of the Chicken’s appearances.
Thus, the Chicken’s principal means of income could, perhaps
loosely, be referred to as “performance art.” Catering to the
tastes of adults attending sporting events, most notably baseball
games, the Chicken is renowned for his hard hitting satire.
Fictional characters, celebrities, ball players, and, yes, even
umpires, are all targets for the Chicken’s levity. Hardly anything
is sacred.
And so, perhaps inevitably, the Chicken’s beady glare came to
rest on that lovable and carefree icon of childhood, Barney. Lyons
argues that the Chicken’s motivation was purely mercenary. Seeing
the opportunity to hitch his wagon to a star, the Chicken
incorporated a Barney look-alike into his acts. The character, a
person dressed in a costume (sold with the title “Duffy the
Dragon”) that had a remarkable likeness to Barney’s appearance,
would appear next to the Chicken in an extended performance during
which the Chicken would flip, slap, tackle, trample, and generally
assault the Barney look-alike.
The results, according to Lyons, were profound. Lyons regales
us with tales of children observing the performance who honestly
believed that the real Barney was being assaulted. In one poignant
account related by Lyons, a parent describes how the spectacle
brought his two-year-old child to tears. In fact, we are told,
3
only after several days of solace was the child able to relate the
horror of what she had observed in her own words--“Chicken step on
Barney”--without crying. After receiving such complaints from
irate parents who attended the Chicken’s performances with their
children, Lyons sought to defend this assault on their bastion of
child-like goodness and naiveté.
Giannoulas offers a slightly different perspective on what
happened. True, he argues, Barney, depicted with his large,
rounded body, never changing grin, giddy chuckles, and exclamations
like “Super-dee-Dooper!,” may represent a simplistic ideal of
goodness. Giannoulas, however, also considers Barney to be a
symbol of what is wrong with our society--an homage, if you will,
to all the inane, banal platitudes that we readily accept and
thrust unthinkingly upon our children. Apparently, he is not alone
in criticizing society’s acceptance of a children’s icon with such
insipid and corny qualities. Quoting from an article in The New
Yorker, he argues that at least some perceive Barney as a “pot-
bellied,” “sloppily fat” dinosaur who “giggle[s] compulsively in a
tone of unequaled feeblemindedness” and “jiggles his lumpish body
like an overripe eggplant.” The Talk Of The Town: Pacifier, The
New Yorker, May 3, 1993 at 37. The Internet also contains numerous
web sites devoted to delivering an anti-Barney message.3
3
One Internet search service provides a list of links to anti-
Barney web sites, many of which contain warnings like the
4
Giannoulas further notes that he is not the only satirist to take
shots at Barney. Saturday Night Live, Jay Leno, and a movie
starring Tom Arnold have all engaged in parodies at the ungainly
dinosaur’s expense.
Perhaps the most insightful criticism regarding Barney is that
his shows do not assist children in learning to deal with negative
feelings and emotions. As one commentator puts it, the real danger
from Barney is “denial: the refusal to recognize the existence of
unpleasant realities. For along with his steady diet of giggles
and unconditional love, Barney offers our children a one-
dimensional world where everyone must be happy and everything must
be resolved right away.” Chala Willig Levy, The Bad News About
Barney, Parents, Feb. 1994, at 191-92 (136-39).
Giannoulas claims that, through careful use of parody, he
sought to highlight the differences between Barney and the Chicken.
Giannoulas was not merely profiting from the spectacle of a Barney
look-alike making an appearance in his show. Instead, he was
engaged in a sophisticated critique of society’s acceptance of this
ubiquitous and insipid creature. Furthermore, Giannoulas argues
that he performed the sketch only at evening sporting events.
The sketch would begin with the Chicken disco dancing. The
Barney character would join the Chicken on the field and dance too,
following: “If you’re offended by material that suggests the
killing of Barney, or like him in any way, please don’t come here.”
5
but in an ungainly manner that mimicked the real Barney’s dance.
The Chicken would then indicate that Barney should try to follow
the Chicken’s dance steps (albeit, by slapping the bewildered
dinosaur across the face). At this point, Barney would break
character and out-dance the Chicken, to the crowd’s surprise. The
Chicken would then resort to violence, tackling Barney and
generally assaulting Barney. Barney would ultimately submit to the
Chicken and they would walk off the field apparently friends, only
for the Chicken to play one last gag on the back-in-character naive
and trusting Barney. The Chicken would flip Barney over a nearby
obstacle, such as a railing.
Lyons ultimately filed a suit against Giannoulas and TFC,
alleging trademark infringement, false association, unfair
competition, and trademark dilution under the Lanham Act, copyright
infringement, and other claims. The district court granted the
defendants’ motion for summary judgment. In addition, the district
court awarded attorneys’ fees to the defendants based on provisions
in the Copyright Act. Lyons has filed a timely appeal with respect
to the Lanham Act claims, the Copyright Act claims, and the award
of attorneys’ fees.
II
Because this case comes to us on appeal from a summary
judgment motion, we review the district court’s decision de novo
applying the same standards applied by the district court. See
6
Boyd v. State Farm Ins. Cos., 158 F.3d 326, 328 (5th Cir. 1998).
The moving party is entitled to summary judgment if the record
establishes that “there is no genuine issue as to any material fact
and that the moving party is entitled to a judgment as a matter of
law.” Fed.R.Civ.P. 56(c).
A trademark is a word, name, symbol or device adopted and used
by a manufacturer to identify the source of goods. To establish a
trademark violation, Lyons must establish that Giannoulas has used
in commerce a mark confusingly similar to Lyons’s. 15 U.S.C.
§ 1127.4 The district court held that there was no likelihood of
consumer confusion. In reaching this decision, the district court
relied on its finding that the Chicken’s performance was clearly
meant to be a parody.
Lyons makes two arguments with respect to its trademark
confusion claim. First, Lyons argues that Giannoulas’s use of
Barney was not intended as a parody. Because Lyons continues to
contest this issue on appeal, we first address whether there are
4
With respect to services, a mark is used in commerce “when it
is used in the sale or advertising of services.” Id. In this
case, Lyons has a trademark in the image of Barney. Giannoulas
contends that he has not used the image of Barney in the stream of
commerce--i.e., that he only used the appearance of Barney to
signal a parody of Barney, not to use Barney’s image to promote the
Chicken’s service. Lyons contends that there is a factual issue
regarding whether Giannoulas used images of the Barney character
that appeared in mass media to promote his service. A review of
the record reveals a genuine issue of material fact with respect to
whether Giannoulas was promoting his show through media
representations of the Barney caricature.
7
any genuine issues of material fact regarding whether Giannoulas
was engaged in parodying Barney. Lyons’s second argument is that
the district court accorded too much weight to its finding that
Giannoulas’s use was a parody.
A
In general, a parody is defined as an “artistic work that
imitates the characteristic style of an author or a work for comic
effect or ridicule.” Campbell v. Acuff-Rose Music, 510 U.S. 569
(1994)(quotation omitted). In general, a reference to a
copyrighted work or trademark may be permissible if the use is
purely for parodic purposes. To the extent the original work must
be referenced in order to accomplish the parody, that reference is
acceptable. Giannoulas claims that his use of a Barney look-alike
clearly qualifies as a parody. He used the minimum necessary to
evoke Barney--while he used a character dressed like Barney that
danced like Barney, he did not make any other references to the
mythical world in which Barney resides. He did not, for instance,
incorporate any of Barney’s other “friends” into his act, have the
character imitate Barney’s voice, or perform any of Barney’s songs.
According to Giannoulas, Barney was clearly the butt of a joke and
he referenced the Barney character only to the extent necessary to
conjure up the character’s image in his audience’s mind.
Lyons argues that the conduct was not a parody but simply the
use of Barney. To support this claim, Lyons points to two kinds of
8
proffered evidence. First, Lyons notes that Giannoulas himself
admits that he did not have a definite plan when he incorporated
Barney into the act. Lyons argues that this creates an issue of
fact regarding whether Giannoulas really intended to parody Barney
or simply intended to profit from incorporating the Barney
character into his act.
This argument is meritless. Clearly, in the context in which
Giannoulas 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 point
is clearly established by the fact that the Chicken’s actions
toward Barney seem to have always been antagonistic. Although the
performance may have evolved into a far more sophisticated form of
commentary, even at its inception, it was clearly meant as a
parody.
The second argument made by Lyons is that the audience could
not have understood the performance to be a parody. Lyons assumes
that the target audience here is children and that children would
clearly believe that the caricature actually was Barney. Although
Lyons is correct that the intended audience is an important factor
in determining whether a performance qualifies as a parody, Lyons
presented no credible evidence that a significant portion of the
audience at evening sporting events are children. Even if young
children--like the two-year-old who had such a traumatic reaction
9
to the down-trodden Barney--are in attendance, we would expect them
to be supervised by parents who could explain the nature of the
parody.
We therefore agree with the district court that Giannoulas’s
use of the caricature clearly qualifies as a parody. We note that
Lyons’s insistence that the Chicken’s act is not a parody is, in
our view, a completely meritless argument.5
B
In order to understand Giannoulas’s second argument, we must
first review our own precedent with respect to consumer confusion
under the Lanham Act. Our case law has set out a long list of non-
exclusive, non-dispositive factors to consider when determining
whether a use can result in confusion. These factors are referred
to as the “digits of confusion.” “In determining whether a
likelihood of confusion exists, this court considers the following
non-exhaustive list of factors: (1) the type of trademark
allegedly infringed, (2) the similarity between the two marks, (3)
the similarity of the products or services, (4) the identity of the
retail outlets and purchasers, (5) the identity of the advertising
media used, (6) the defendant's intent, and (7) any evidence of
5
It was, in fact, the plaintiff’s tenacity in making this
argument that led the district court to conclude that an award of
attorneys’ fees to Giannoulas was appropriate. Given the argument
made by the plaintiffs, we agree completely with the district court
on this point.
10
actual 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 Burglar
Alarms Co., 693 F.2d 1155, 1159 (5th Cir. 1983). The Fifth Circuit
has held that confusion resulting from a parody is not an
affirmative defense to a trademark infringement claim but is
instead an additional factor that should be considered. Elvis, 141
F.3d at 149.
The district court relied on its finding that the conduct was
a parody when considering each of the remaining factors or digits
described in Elvis. Giannoulas’s argument is that, based on our
reasoning in Elvis, the relevance of the conduct being a parody is
only one “digit” to be considered among the “digits of confusion.”
Lyons argues the district court erred by relying on the conduct
being a parody to conclude that the other factors did not indicate
a risk of confusion. The crux of Lyons’s argument is that, when
considering whether conduct is likely to cause consumer confusion,
even if there is overwhelming evidence that the conduct is a
parody, the other digits of confusion must still be considered
separately, without reference to whether the conduct is a parody.
If, after conducting this analysis, there are factors that support
the plaintiff’s claim, he argues that the plaintiff should be
permitted to proceed to trial.
11
Although such a hypertechnical reading of Elvis and its
progeny may, on some abstract level, appear logical, we find this
analysis absolutely absurd. Such an approach would all but require
a trial for any trademark suit where the conduct was a parody. A
brief consideration of only one of the digits of confusion makes
this point clear.
The first digit, that is, the type of trademark allegedly
infringed, questions whether the trademark is so distinctive that
a consumer encountering the defendant’s mark would be likely to
assume that the source of a product or service is the owner of the
trademark. Thus, under the traditional analysis, the stronger the
trademark, the more likely that this factor would weigh in favor of
the plaintiff. However, as the district court correctly noted in
this case, when a consumer encounters the use of a trademark in a
setting that is clearly a parody, the strength of the mark may
actually make it easier for the consumer to realize that the use is
a parody. Therefore, a strong mark is not as relevant a factor
when the use is that of parody.6
6
Lyons cites to Elvis to argue that a strong mark can be
relevant even in the context of a parody. In Elvis, however, the
issue was whether the Elvis trademark had been infringed by a
nightclub titled “the Velvet Elvis.” In that case the parody was
not of Elvis but of cheesy sixties bars. Therefore, because Elvis
was not the brunt of the joke, the fact that Elvis is a strong
trademark could be regarded as an endorsement of the nightclub.
12
It seems reasonable to us to expect that most comedians will
seek to satirize images or figures who will be widely recognized by
their audiences. It therefore seems unlikely that comedians will
target trademarks that do not have significant strength. If the
district court were not able to consider the relevance that parody
plays in this analysis, the district court would almost always have
to conclude that this digit of confusion weighed in favor of the
plaintiff. Such a result would effectively tie the district
court’s hands unnecessarily and prevent the district court from
applying common sense to determine whether a particular factor is
actually likely to lead to confusion.
Simply put, although the fact that conduct is a parody is not
an affirmative defense to trademark infringement, a parody should
be treated differently from other uses that infringe on a
trademark. While it is only one factor to consider, it is a factor
that must be considered in conjunction with all of the other digits
of confusion. When, as here, a parody makes a specific, ubiquitous
trademark the brunt of its joke, the use of the trademark for
satirical purposes affects our analysis of the factors to consider
when determining whether the use is likely to result in consumer
confusion.
We therefore conclude that the district court did not err in
considering the other digits of confusion in the light of its
finding that the Chicken’s performance is a parody. In doing so,
13
we hold that, when we stated in Elvis that use as parody was a
relevant factor, we did not intend for the nature of the use to be
considered separately from the other digits of confusion. The
district court ably considered the other digits of confusion in
this respect, and we find no error in its conclusion that there is
insufficient evidence to support a violation under the Lanham Act.
III
In this case, Lyons argued that Giannoulas’s use of a Barney
caricature violated the Copyright Act and the Lanham Act. The
district court disagreed and a review of the record indicates that
the district court did not err in doing so. On appeal, we address
only the argument related to the relevance that parodic conduct has
on determining the likelihood of confusion in a trademark
infringement case. We note that in this case the conduct was,
without doubt, a parody. Having made that finding, the district
court did not err in concluding that the nature of Giannoulas’s use
is relevant when analyzing the other digits of confusion to
determine likelihood of confusion. For the foregoing reasons, the
ruling of the district court is
A F F I R M E D.
14