`FOR THE FIFTH CIRCUIT
`_____________________
`No. 98-11003
`_____________________
`
`LYONS PARTNERSHIP,
`
`versus
`TED GIANNOULAS, doing business
`as Famous Chicken; TFC, INC.,
`
`Plaintiff-Appellant,
`
`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
`
`1We 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.
`2These 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
`
`3One 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
`
`4With 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
`
`5It 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
`
`6Lyons 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