Ted Giannoulas is "The Famous San Diego Chicken." The Chicken character was hatched in 1974 when a local radio station hired Giannoulas to don a chicken suit and pass out Easter candy to kids at the San Diego Zoo. Shortly after this debut, the Chicken's wacky antics at San Diego Padre games garnered national attention. Nowadays, the Chicken tours the country performing at major and minor league ballparks, basketball stadiums, and hockey arenas. The Chicken has performed comedy routines lampooning Gumby, the Energizer Bunny, Pete Rose, Michael Jackson, Elvis, and others. When the Chicken incorporated a purple dinosaur character into the act, however, the owners of the Barney character cried "fowl."
The performance in question is a two-minute slapstick routine in which the Barney-like character dances, hops, waves, hugs, blows kisses, and is flipped, slapped, stood upon, tackled, wrestled, and otherwise subjected to aggressive physical conduct by the Chicken. The routine begins with a rap-style piece of dance music played during an intermission. The Chicken takes the field with some disco steps. About 30 seconds into the dance, a Barney-like character emerges onto the field from the opposite direction, prancing gingerly toward the Chicken, who is oblivious to the approach of the porky purple prancer and to the booing and derision with which many fans greet him.
The Chicken abruptly stops his movements when he notices the Barney-like character dancing beside him. The Chicken gestures to the jigging Jurassic jumbo to stop dancing, which he does, and the Chicken slaps the Barney-like character across the snout and begins to dance, as if to demonstrate how such dancing is properly done. The Chicken signals to the putative prehistoric predator to dance the same way. Instead, the Barney-like character again reverts to what the judge called his "characteristic fairylike dancing." In an exaggerated fashion, the Chicken slaps the Barney-like character once again, gesturing to him to focus on the proper dance moves, which the Chicken again demonstrates for him. This time the porcine purple hoofer outperforms the Chicken's dance moves with a series of highly athletic, disco-dance moves, complete with hand springs, flying splits, and hip gyrations. The Chicken is stunned and falls to his knees, bowing several times and kissing the feet of the Barney-like character in submission while the Barney-like character gloats, taunts his rival, and gestures to the crowd for more applause. When the Chicken rises and offers to hug his companion, the Barney-like character pushes the Chicken to the ground and skips away. Chasing after the dorkish dinosaur, the Chicken jumps through the air and sacks him like a quarterback. He then pins the Barney-like character as a wrestler would and stands over him flexing his wings in a body builder pose. The Chicken then assists the Barney-like character to his feet, helps brush the dirt off of him, and the two begin to walk off the field arm in arm as friends. When they reach an obstacle, such as a dug-out railing, however, the Chicken sends the unsuspecting Barney-like character for a flip over the obstacle.
Given the facts of this case, the court found neither trademark nor copyright infringement. In its trademark analysis the court considered a number of factors to determine whether the Chicken's use of the Barney-like character in his routine was likely to cause confusion among the consuming public. With regard to the copyright claim, the court also looked at several factors to determine if the Chicken's routine was a fair use of the Barney-like character.
A trademark is not a property right, like a copyright or patent, but merely an identifier of source. Thus, the court considered the following factors in assessing the likelihood of confusion: (1) the type of trademark allegedly infringed, (2) the similarity between the two marks, (3) the similarity of the services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the alleged infringer's intent, and (7) any evidence of actual confusion. The court found that confusion was unlikely because both the Chicken and Barney are strong, well-recognized marks, and each is associated in consumer's minds with a particular kind of performance. The Chicken is well-known for his slapstick physical comedy and satiric ridicule. The court noted that a good-faith attempt to parody is not an attempt to confuse, and the fact that small childrenincapable of reasoningmay have been confused by the Chicken's act, does not amount to actual confusion. Additionally, the court found that Barney's trademark had not been diluted by the Chicken's comedy routine because the mark was neither blurred nor tarnished. Thus, the court concluded that Barney's trademark-related claims could not succeed.
Copyright infringement is established by showing ownership of a valid copyright and showing that there has been copying of elements of the work that are original. The Chicken admitted that the owners of the Barney character hold valid copyrights for material in which Barney appears, and that the Chicken used a purple costume bearing a substantial likeness to Barney. The Chicken contended, however, that his use of the costume was a non-infringing fair use because the purpose was to parody Barney. Under copyright law, a parody is entitled to conjure up the work that it is targeting.
In assessing fair use, the court considered four factors: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use upon the potential market for the copyrighted work. The court found that the Chicken's use of the purple costume was a fair use. The Chicken's use of the Barney-like character in his act qualified as transformative because it added something new. The Chicken simply conjured up enough of the original Barney to allow the audience to recognize the character. Moreover, even the owners of the Barney character conceded that it was impossible to identify with any degree of specificity any lost revenue or lost profits in this case.
Based on its trademark and copyright analyses, the court pronounced Barney's claims extinct and granted summary judgment for the Chicken. All of the claims were dismissed and the owners of the Barney character were ordered to repay the Chicken's court costs.
Nels Jacobson is an attorney practicing copyright and entertainment law with the law firm of King & Ballow in Nashville, Tennessee. Prior to moving to Tennessee, Nels gave the best 18 years of his life to Texasmost of it in Austin. The preceding article is intended to provide useful information, but it neither provides nor is intended to provide legal advice.