UNITED STATES DISTRICT COURT
THE TAUBMAN COMPANY
WEBFEATS AND HENRY MISHKOFF,
Civil Action No. 01-72987
District Judge Zatkoff
MEMORANDUM OF PUBLIC CITIZEN
I. ISSUANCE OF THE REQUESTED PRELIMINARY INJUNCTION WOULD VIOLATE THE FIRST AMENDMENT.
II. TAUBMAN HAS NO LIKELIHOOD OF SUCCESS ON THE MERITS
This is an action under the trademark laws in which a developer of shopping malls has sued a Texas citizen who allegedly violated the plaintiff's trademarks when, as a civic gesture, he developed a web site about a shopping mall that plaintiff had built near his home in Plano, Texas. When plaintiff sued the defendant to force him to remove the web site, the defendant registered several additional domain names that incorporated the plaintiff's trademarks coupled with the word "sucks." These domain names have been used to post a web site in which the defendant has chronicled the course of the litigation between himself and the plaintiff. Although plaintiff sought (and obtained) a preliminary injunction against the maintenance of a web site whose domain name was the name of the shopping mall, the issue now before the Court is whether it should expand that preliminary injunction to prevent even a web site that criticizes the plaintiff by stating that each of its trademarks "sucks." We argue that the expanded injunction should be denied, both as a matter of trademark law and because of the First Amendment.
Public Citizen is a public interest organization based in Washington, D.C., which has about 150,000 members, about 12,000 thousand of them in the Sixth Circuit. Since its founding by Ralph Nader in 1971, Public Citizen has urged citizens to speak out about a variety of large institutions, including corporations, government agencies, and unions, and it has advocated a variety of protections for the rights of consumers, citizens and employees to encourage them to do so. Along with its efforts to encourage public participation, Public Citizen has brought and defended numerous cases involving the First Amendment rights of citizens who do participate in public debate.
Public Citizen believes that the Internet provides a tremendous opportunity for ordinary citizens to express their views, and to have them heard, and that, by the same token, it provides an opportunity for consumers to obtain information that they may need to protect their economic and political interests. It is vitally important that the legal rules governing use of the Internet be crafted to provide a maximum opportunity for the free exchange of information between willing speakers and willing listeners.
In recent years, Public Citizen has watched with dismay as an increasing number of companies have resorted to litigation to prevent ordinary citizens from using the Internet to express their views about the manner in which companies have conducted their affairs. In a number cases, companies have brought suit, hoping to silence their critics through the threat of ruinous litigation.
One theory that is frequently invoked in such cases is that the use of the name of a company or product that is discussed on a website violates the trademark rights of the company in question. Public Citizen has represented citizens who have been sued for using company names in their domain names, and otherwise on their web sites. E.g., Bosley v. Kremer, No. 01 CV 1792 (S.D. Cal.); Raintree Homes v. Silverstein, No. 3:CV 01-1277 (M.D. Pa.); Alitalia v. Porta, 00-Civ.-9731-RMB (S.D.N.Y.); Circuit City Stores v. Shane, No. C-1-00-0141 (S.D. Ohio); Ricart Automotive v. Dalton, Case No. C-2-00-0057 (S.D. Ohio); ServiceMaster v. Virga, No. 99-2866-TUV (W.D. Tenn.). In addition, Public Citizen has filed a brief as amicus curiae in an appeal now pending in the United States Court of Appeals for the Sixth Circuit, Paccar, Inc. v. TeleScan, No. 00-2183, in which the issue is whether a commercial reseller of the plaintiff's merchandise could use domain names incorporating the manufacturer's trademarks. Through its work in these and similar cases, Public Citizen has come to an understanding of the way that consumers use the Internet, and how domain names function to bring relevant sites to the attention of consumers who are interested in particular subjects, that is fundamentally at odds with the factual assumptions that undergird the plaintiff's arguments in this case. It is also, in our view, at odds with the assumptions underlying Congress' enactment of recent legislation against "cybersquatting," because, as explained in Public Citizen's brief, the statute assumes that different persons may have equally legitimate interests in using domain names that are identical or "confusingly similar" to a trademark.
This motion arises out of a dispute between plaintiff Taubman Company, a nationwide developer of shopping malls, and Henry Mishkoff, a resident of Dallas, Texas, who designs web sites and performs other computer consulting. After Taubman announced plans to develop a shopping mall named "The Shops at Willow Bend" in the Dallas suburb of Plano, Texas, Mishkoff created a web site about that shopping mall, at which he posted a diagram of the mall and a listing of all the shops in the mall, and also posted links both to the official mall web site and to the web sites of almost every store in the mall (apparently, he could not find such sites for every store). Because the site was about the Shops at Willow Bend, he chose a domain name that reflected his subject, namely, "www.shopsatwillowbend.com." According to Mishkoff, his sole purpose in creating the site was to provide a service to his community by using the Internet effectively to call attention to a nice new neighborhood amenity.
Approximately two years after Mishkoff registered this domain name and established the web site, Taubman demanded that he take down the web site and surrender the domain name for the site, threatening to sue him for violating its trademark if he refused to do so. After negotiations proved fruitless, Taubman sued Mishkoff, and in response to being sued Mishkoff registered five additional domain names, incorporating both the name of the Taubman company, and the name of its Texas shopping mall, but coupling each name with the word "sucks" taubmansucks.com, willowbendsucks.com, willowbendmallsucks.com, shopsatwillowbendsucks.com and theshopsatwillowbendsucks.com. After these five names were created, Taubman sought a preliminary injunction against the maintenance of Mishkoff's web site about its mall, and against his use of the domain name shopsatwillowbend.com. In these motion papers, Taubman took notice of Mishkoff's new domain names, Mem. in Support of Preliminary Injunction at 2, argued that these domain names were also infringing, id. at 7, and used the existence of the names to prove what it claimed was defendant's bad faith, id. at 12, what it claimed as irreparable harm, id. at 14; it also asked the Court to order defendants to "turn over their numerous domain names," id. at 15, 16, to avoid "escalating harm to the plaintiff." Motion for Preliminary Injunction, at 2. In his response to the motion, Mishkoff stated that he had not yet placed any material on the Internet using those domain names, but that, by the time the Court received his brief, such posting would likely have occurred.
Meanwhile, Mishkoff created a new web site, using the "sucks" domain names, for the purpose of reporting on Taubman's threats against him and the ensuing litigation. Mishkoff has posted all of the written correspondence about his original web site, as well as all papers filed in this litigation, on the new site. Mishkoff has used the site to express his disgust at the waste of resources that this litigation represents, as well as to comment on what he considers to be abusive tactics employed by plaintiff's counsel and the making of unnecessary threats against him which, he suggests, have had the opposite of the intended effect because they have caused him to stiffen his resistance and decline to accept demands from the plaintiff to which he might otherwise have acceded. The new site is entirely non-commercial, in that there is and never had been any attempt to market any goods or services on that site.(1)
At the same time that he was creating the "sucks" site, the Court was deciding the motion for a preliminary injunction. Although the Court ruled in plaintiff's favor on that motion, its ruling was much more narrow than what the plaintiff had been seeking. Thus, although the plaintiff sought a general injunction against the posting of defendant's web site and the use of any of plaintiff's domain names, the Court carefully confined the relief it was awarding to an order that the defendant
refrain "from using the Internet domain name www.shopsatwillowbend.com," and that defendant "remove the domain name www.shopsatwillowbend.com from the Internet." Moreover, instead of entering detailed findings on the plaintiff's claim of infringement, the Court contented itself with an apparent finding that the balance of irreparable injury tilted in favor of the plaintiff, reasoning that, because the defendant was not trying to profit from his promotion of the plaintiff's mall, he would not be irreparably injured by an order requiring him to refrain from using, for the duration of the litigation, the one domain name covered by the preliminary injunction.
After this order had been signed, but before any of the parties had received it, defendant placed his new site on the Internet, using the five "sucks" domain names. Plaintiff then filed a motion to expand the injunction to include all five names. Rather than acknowledge that this motion represented an effort to have the Court reconsider its earlier denial of broad injunctive relief, which would have required the plaintiff to meet the strict test applied by this Court for motions to reconsider, plaintiff characterized its motion as one that sought to enforce the findings underlying the existing injunction. Thus, plaintiff argued that the defendant was a "proven infringer," that defendant had posted "sucks" sites in a contemptuous response to the Court's authority, and that standard trademark law warranted an order requiring the defendant to maintain a "safe distance" from the plaintiff's marks. In effect, turning on its head the normal rule that an injunction must be construed narrowly to avoid infringing the defendant's right to clear notice of the conduct that is forbidden, see Grace v. Center for Auto Safety, 72 F.3d 1236, 1241 (6th Cir. 1996), plaintiff attempted to transform its narrow victory on the issue of a preliminary injunction into a broad bar on any use of the plaintiff's trademarks to identify the subject of defendant's criticisms of its conduct in this case.(2)
The Court responded to this motion by issuing an order that defendant show cause whether the "safe distance rule" applied to this case, citing a comparison between a case applying the safe distance rule and a case in which a court had upheld the right of a consumer to create a web site critical of the Bally Total Fitness health club chain by creating a web site entitled "ballysucks.com." Bally Total Fitness v. Faber, 29 F. Supp.2d 1161 (C.D. Cal. 1998). The Court has set a hearing for November 13, 2001, to consider this question. Public Citizen now files this amicus brief to urge the Court to consider, in addition to the "safe distance" issue that is identified in the order to show cause, the First Amendment ramifications of the expanded preliminary injunction for which the plaintiff has prayed, as well as several fundamental principles of trademark law as it applies to the Internet which, we contend, counsel against the issuance of such an injunction.
The motion for an expanded injunction should be denied for several related reasons. First, plaintiff has failed to acknowledge that, because it is asking the Court to issue a preliminary injunction preventing defendant from advertising his negative opinions about the way in which plaintiff has conducted this litigation, the order that it seeks would constitute a prior restraint that would offend core First Amendment principles. The fact that trademark laws form the supposed cause of action that allegedly supports the requested injunction does not aid the plaintiff because the trademark laws must be narrowly construed to avoid conflict with the First Amendment, especially where, as here, the claims are brought against wholly non-commercial speech.
Second, plaintiff is seeking to expand a very narrow preliminary injuction to reach a very different kind of web site and domain name than that which was at issue on the original motion for a preliminary injunction. In fact, as we argue in this brief, there is no way that the plaintiff could obtain relief against the "sucks" web sites under the trademark laws. This is true because the claim ignores fundamental facts about the way in which internet users use domain names to find content in which they are interested. We review both these facts about Internet usage, and the way in which they apply to trademark cases litigated in the Internet context, which were not put before the Court on the original motion because the defendant was proceeding pro se, and the only lawyers in the case were representing the plaintiff and thus had no incentive to explain these matters.
Enforcement of Taubman's claims would violate the First Amendment. In trademark cases, unlike copyright cases where fair use is largely co-extensive with the First Amendment, e.g., Harper & Row v. Nation Enterprises, 471 U.S. 539, 560 (1985), First Amendment considerations routinely receive separate discussion, although they also inform statutory interpretation. Where, as is true here, the defendant is engaged in non-commercial speech, the mere application of trademark law may violate the First Amendment, L.L. Bean v. Drake Publishers, 811 F.2d 26, 32-33 (1st Cir. 1987). Even if a trademark has been used in a commercial context, courts are required to construe the trademark laws narrowly to avoid impingement on First Amendment rights, e.g., Cliffs Notes v. Bantam Doubleday, 886 F.2d 490, 494 (2d Cir. 1989).
Moreover, First Amendment interests are weighed as a factor in deciding whether a trademark violation should be found, e.g., Anheuser-Busch v. Balducci Publications, 28 F.3d 769, 776 (8th Cir. 1994); and injunctions must be narrowly crafted to comply with the general and virtually absolute rule against prior restraints of speech. Id. at 778; Better Business Bureau v. Medical Directors, 681 F.2d 397, 404-405 (5th Cir. 1982). Indeed, the new cybersquatting law has a savings clause that expressly preserves all defenses under the First Amendment. Public Law 106-113, Section 3008, 113 STAT. 1501A-551. Thus, despite the general rule that court should consider statutory issues first, thus avoiding the need to decide constitutional issues, in this case we begin with the First Amendment.
Plaintiff's action to enforce its trademark implicates the First Amendment even though plaintiff is not a government actor. An injunction sought by private parties is still government action by a court, which is therefore subject to scrutiny under the First Amendment.(3)
Nor can it be disputed that Mishkoff's web site is protected by the First Amendment. Numerous cases hold that consumer commentary is core speech protected by the First Amendment. In Bose Corp. v. Consumers Union, 466 U.S. 485 (1984), the Supreme Court applied the New York Times standard to a libel action brought by a manufacturer claiming that a consumer group had maligned its product. Many other cases have similarly treated criticisms of a company's products or business practices as speech protected by the First Amendment.(4)
Mishkoff's use of domain names such as "taubmansucks" is just the sort of commentary that courts fastidiously protect. Mishkoff's criticisms would be wholly mysterious -- indeed, they would be pointless -- if he had to omit the name of the company he is criticizing. This is core speech that is fully protected by the First Amendment.
Furthermore, it is not just the web site generally, but Mishkoff's use of plaintiff's trademark in his domain name, that constitute protected speech. The courts have repeatedly held that the use of trademarks constitutes speech within the protection of the First Amendment.(5) Use of a trademark in the domain name is analogous to the use of a trademark in the title of a creative work, to which the courts give First Amendment protection because it is part of the author's expression, calling attention to the fact that the work in question contains content that may interest them.(6) By the same token, Mishkoff's use of Taubman's trademarks in his domain names, when coupled with the word "sucks," serves to communicate to web users that his site that contains negative information about that company.(7)
Even if the only purpose of a domain name was to show the sponsor, and not the topic, of a web page, the proposition that the use of particular words is not speech if their only purpose is to denote the source of the speech is fallacious. There are numerous cases in which courts have held, for example, that signs or billboards indicating the presence of a particular vendor are speech protected by the First Amendment.(8) Similarly, there are many cases where the desire of a professional or other business person to use a particular name for its operation has been treated as a First Amendment issue, although in some such cases the First Amendment rights have been overcome by other government interests. E.g., Friedman v. Rogers, 440 U.S. 1 (1979).
In many cases, the courts have struggled with the question of whether a particular use of trademarks constituted commercial or non-commercial speech. This question is significant not only because Congress limited the application of section 43 of the Lanham Act to cases of commercial speech, see sections 43(a)(1)(B) and 43(c)(4)(B), 15 U.S.C. §§ 1125(a)(1)(B), 1125(c)(4)(B), but also because commercial speech, although protected by the First Amendment, has a lesser status than non-commercial speech, and thus does not benefit from all of the doctrines developed to protect non-commercial speech. Dun & Bradstreet v. Greenmoss Bldrs., 472 U.S. 749, 762-763 (1985). Indeed, recognition that the First Amendment would bar claims for false statements in non-commercial speech underlay Congress' establishment of the "commercial" requirement in section 43. Semco v. Amcast, 52 F.3d 108, 111-112 (6th Cir. 1995) (quoting extensively from the legislative history).
Thus, when one company has, in the course of an advertising campaign, made statements about another company's products, the courts in cases like Semco have hammered out a multi-factor test to determine when the statements are non-commercial, and thus entitled to full First Amendment protection, or commercial, and thus entitled only to have their First Amendment interests weighed as part of a fair use or fair commentary defense. Similarly, when a seller of T-shirts or some other commercial product spoofs a trademark or uses a trademark to denounce a political position, the courts have had to decide whether the alleged infringer or diluter is predominantly engaged in commentary, thus obtaining greater protection under the First Amendment, or mainly making use of a trademark to sell its own product.(9) However, when an action is brought against a plainly non-commercial use of a trademark for either political or consumer commentary, the courts have not hesitated to afford full First Amendment protection against the trademark holder's claim, either by holding that First Amendment principles bar application of the federal statute, or by holding that the state law in question is unconstitutional on its face or as applied to the particular case.(10)
A review of Mishkoff's web site, and of the record in this case, plainly shows his site's non-commercial character. The web site is dedicated to the expression of opinions about Taubman and its lawsuit against Mishkoff's original web site. The web site contains no advertisements (which is the way many web sites produce revenues for their operators), and is not directed to selling or promoting any goods or services. In short, because it is plainly non-commercial, the speech on the web site is entitled to full constitutional protection.
In addition, Miskoff derives no financial benefit from the web site, and he has no financial connection either to Taubman or to any competitor of that company. Accordingly, whatever rule might apply in another case to a commercial entity (such as a competitor of plaintiff) that published a web site criticizing Taubman and using its name in the domain name for that web site, this is plainly a case of non-commercial speech, and defendant is entitled to the full measure of protection under the First Amendment.
Given the non-commercial character of Mishkoff's web site, the motion for a preliminary injunction must be denied because it seeks a prior restraint. The Supreme Court has repeatedly held that injunctions which bar defendants from speaking, printing, or broadcasting statements about topics of public concern are prior restraints that require the most extraordinary justifications before they may be approved. New York Times v. United States, 403 U.S. 713(1971); Near v. Minnesota, 283 U.S. 697 (1931). When an injunction is entered based on a mere finding of likelihood of success in establishing illegal speech, instead of a final adjudication, it is a prior restraint subject to strict First Amendment scrutiny. Auburn Police Union v. Carpenter, 8 F.3d 886, 903 (1st Cir. 1993); Dataphase Systems v. CL Systems, 1980 U.S. App. LEXIS 14978, 6 Media L. Rep. 2163 (8th Cir. 1980). See also Carroll v. Commissioners of Princess Anne, 393 U.S. 175 (1968). The law is clear and unequivocal prior restraints are not permitted except in the most exceptional of circumstances, involving "such a grave threat to a critical government interest or to a constitutional right." Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219, 225 (6th Cir. 1996). No such circumstance is present here, and thus the motion for an expanded preliminary injunction should be denied.
Wholly apart from First Amendment limitations, Taubman's request for an expanded preliminary injunction against the "sucks" domain names should also be denied because there is no likelihood that Taubman could succeed in showing that the "sucks" sites violate either the Lanham Act or the 1999 amendment to the trademark law, which provides a cause of action against "cybersquatting. " The cybersquatting law was directed at a specific problem that has no application here, and plaintiff has failed to meet the basic requirements of that statute. Moreover, the general Lanham Act rule should yield to the more specific provisions of the cybersquatting law that was addressed to the specific issue of how trademark law should apply in the cyberlaw context of comain names. In order to see why this is so, it is first necessary to review the way in which Internet users use domain names to locate content in which they may be interested; we then review the reasons why the amendment was enacted, to describe the evil at which the law was addressed, and to identify both the very specific elements of which a cybersquatting claim consists, and the trademark defenses that Congress expressly preserved under the amendment.
The World Wide Web provides enormous possibilities for persons who have information and opinions that they wish to publish for others to consider. There is no limit to the sort of content that may be communicated on the Web; it ranges from the original purpose providing a way for the producers of scientific, technical or other intellectual work product to make their results freely available to others who might want it for further intellectual effort to archives of historical or literary material, political opinions, and comments on government bodies, public officials, or corporations, unions and other influential institutions. Most relevant to the issues before the Court, web content includes commercial information about goods or services that a website owner may have made, or that the owner may want to sell or promote; it also includes contrary information about those same goods and services that a different website owner may desire to criticize. All of this information co-exists in a single, huge public forum.
The size of this forum is staggering. A study in Nature, Vol. 400, 8 July 1999, at 107-109, estimated that there were 800 million discrete pages on the publicly indexable Web; a February 2001 commercial estimate put the number at 2.1 billion publicly available web pages, with seven million pages added every day. dc.internet.com/views/article/0%2C1934%2C2111_411381%2C00.html.
In these circumstances, it can be quite a challenge for the individual publisher of information to bring his information to the attention of those who may be interested in it; it is a similarly staggering task for the Internet user to search the vast sea of information for the small group of sites that have information relevant to his interests. Nor is there any official index that a user can consult to find particular content. It is as if the entire contents of the Library of Congress (or hundreds of times those contents) were stored in one huge building, with neither a card catalogue, nor a Dewey Decimal System, nor any other orderly means to enable patrons to find what they are trying to locate.
Domain names provide one way for publishers to bring their content to the attention of Internet users. But before the Court can decide whether the inclusion of a trademarked word or phrase in a domain name infringes on the rights of the trademark's owner, it should first consider what sort of information a given user may be trying to find, and how he will use domain names to facilitate his search.
Taubman assumes that anybody who uses its trademarks as an Internet search term must necessarily be looking for Taubman, as the owner of the trademark. Certainly, it is possible that Internet users want to search the Internet for the developer who owns the trademark "Shops at Willow Bend." But the mere fact that the user is looking for information that has some bearing on a trademarked word or phrase, such as "Taubman" or "Shops at Willow Bend," does not necessarily mean that the user wants only the answers to the questions, who owns this trademark and what does the owner want to tell me? The user may be looking for information about the trademark, or about the trademark holder. He may be looking for historical information. The user might have a grievance about the trademarked item, and want information about other similar grievances (for example, the person might have been harassed by Taubman or one of its lawyers, and be trying to learn if others have faced similar attacks and what they have done about it). Or the user might be a shopper at Willow Bend, be unhappy with the way it is operated,, and be trying to find out whether others have had similar problems, whether there are lawsuits pending on such issues, or whether there is any private organization of owners who are trying to find non-litigation solutions to the same problem (such as lobbying for passage of a law, arguing for issuance of an administrative order, or conducting a boycott). Or, the user might want to find archives of information about disputes in which the trademark holder has been engaged.
In crafting rules for the use of trademarks in various ways on the Internet, it is important to bear in mind all these potential objectives of Internet users, so that in trying to prevent customer confusion about the source, the courts do not impair the ability of Internet users in general to find the information that they are seeking about the trademarked item. In this regard, it is useful to draw an analogy with ways of finding information in a library. If, for example, somebody wrote an unauthorized history of the Shops at Willow Bend shopping mall, he could put the word "Shops at Willow Bend" in the title without violating Taubman's trademark. See Rogers v. Grimaldi, 875 F.2d 994, 1000 (2d Cir. 1989). And if the author were allowed to prepare the relevant entries for the card catalog, he could surely include the word "Shops at Willow Bend" in the title and subject cards. The author card would be different only Taubman, as the owner of the Shops at Willow Bend trademark, could hold itself out as the author or sponsor of a book. Similarly, the rules governing the use of trademarks on the Internet must allow for these multiple uses of a single word as a target of searches for author, title and subject of each website.
There are several different ways for members of the public to locate relevant pages on the Internet that is, to find the specific address on the Internet where information they want is located. First, a viewer may know the domain name for a website, or may guess what that name is, and decide to visit that site by entering that web address ("uniform resource locator" or "URL") in the "location" window of the web browser. Second, a viewer who is already visiting a different location on the web may be attracted to a hypertext link that appears on that page; by clicking his mouse on the link, the viewer directs his browser to the linked page (i.e., the user "surfs" from one page to another). Or third, the viewer may take advantage of one of many search engines which viewers use to search the web for pages that contain references to a specific subject in which they are interested. Because the only trademark issue on this motion pertains to the domain names, we discuss only the use of domain names in detail, but it is important to bear in mind the eixstence of other search mechanisms.
Originally, each site on the Internet was identified only by a series of four numbers, such as 18.104.22.168. An alphanumeric domain name, however, allows website owners to use an address that expresses something about the site. PG Media v. Network Solutions, 51 F. Supp.2d 389, 391-392 (S.D.N.Y. 1999), aff'd, 202 F.3d 573 (2d Cir. 2000). Given this expressive character, the Second Circuit has recognized that limitations on domain names may implicate the First Amendment. Name.Space v. NSI, 202 F.3d 573, 586 (2d Cir. 2000).
A domain name consists of a top-level domain or "TLD" (such as .com, .org, or .net), and a second-level domain. In many cases, the second-level domain name may be the name of the website's owner, but that is not the only type of domain name. Many domain names reflect the topic or content of the site. So, for example, a user who wants information about apples might go to www.apples.com and find a motherlode of information about apples, even though Apple is also a well-known trade name. (Addendum A of this brief is a representative listing of such domain names). In addition, many domain names consist of a word denoting a particular entity and one or more other words that indicate something about the trademarked word. The most well-known examples of such names are gripe sites, which combine a trademarked name with a word that denotes criticism (for example, taubmansucks.com), or otherwise expresses a point of view (Addendum B is a representative list). It is also quite common for domain names to show that a person sells the trademarked item in a certain geographical area, or sells only a certain class of the trademarked item. See, e.g., Addendum C, developed for our amicus brief in the Paccar case. Because some search engines look at each site's URL, it is also useful to include the most basic keywords about the site in the domain name. How Do Search Engines Work, coverage.cnet.com/Content/Features/Dlife/ Search/ss03.html.
The system for assigning domain names allows the first person to register a name to keep it, to the exclusion of anybody else. This fact has engendered tremendous legal conflict among the various persons who have wanted to own each particular domain.(11) We discuss these cases in the final section of this brief. But the point we wish to make at this juncture is that, because of the various ways that domain names may characterize the websites posted under them, it is not possible to infer that the only reason why someone would register a name containing a trademark is to communicate that the site is owned by the trademark holder. Consequently, the fact that a site is located at an Internet address containing a trademark would not be understood by an Internet user to imply that the site is operated by the owner of that trademark.
The cybersquatting law was passed to meet problems that grew out of the sudden emergence of alphanumeric domain names as a means of locating content on the Internet. Some people had the foresight to reserve domain names that they, themselves, did not intend to use, recognizing that, in coming years, others might find those names particularly valuable and worth considerable sums of money. As noted above, the system for assigning domain names is that the first person to register a name can keep it, to the exclusion of anybody else, so long as he pays annual renewal fees for each such name. there was a veritable land rush as individuals and companies snapped up as many domain names as they could, intending to market names to those who might want them. As a result, by the time that it occurred to many companies that it would be in their interest to advertise their goods and services on the Internet, they found that others had beaten them to the domain name registrar's door. Such companies found themselves having to pay others who had "squatted" on their cybernames. See House Report 106-412, 106th Cong. 1st Sess (1999), at 5-6.
The Committee Reports identify a series of ways in which cybersquatters unfairly used the trademarks of others. See Senate Report 106-140, 106th Cong. 1st Sess. (1999), at 5-7. Some actually registered the trademark itself as the domain name (for example, www.porsche.com); others would register the trademark name with minor spelling errors, intending to catch a careless consumer who mistyped the trademark as part of the domain name (to continue with the same example, www.porcshe.com or www.prosche.com). Still others would register a domain name combining the domain name with some other word that made it appear to be part of the company (an example given in the committee reports is "911porsche.com"). But there is not the slightest hint in the reports, or anywhere else in the legislative history, that Congress intended to prevent the registration of domain names that plainly implied hostility to the trademark holder, such as the "taubmansucks" and similar names that are at issue on this motion. To the contrary, both the Senate and the House Committees repeatedly insisted that companies would not be able to bring lawsuits against people who established web sites using trade names for the purpose of commenting upon or criticizing companies to which those trademarks belonged. House Report at 10, 11; Senate Report at 14.
Even before the amendment, companies brought lawsuits based on their trademark rights. But some courts refused to grant relief against cybersquatters who did no more than register domain names, reasoning that mere registration of a domain name is not "commercial use" as required for trademark liability. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 879-880 (9th Cir. 1999); Senate Report 106-140, at 7. The cybersquatting law made it possible to sue based solely on the registration of a cybersquatting name, so long as it was done with intent to profit from another's good will.
Such a plaintiff must make two showings. First, the plaintiff must also show that the domain name violates the trademark of another in that the name is "identical or confusingly similar" to the mark of the senior user. Section 1125(d)(1)(A)(ii).(12) Second, the plaintiff must show that the defendant registered the name for the bad faith purpose of profiting from the good will that another had built up in its trademark. Section 1125(d)(1)(A)(i).
As we explain below, neither element of a cybersquatting claim has been shown in this case. First, the domain name "taubmansucks" is not in the least bit "identical or confusingly similar" to the trademark Taubman. Moreover, there is no evidence of "bad faith intent to profit from the goodwill associated with the mark" as required by the cybersquatting act. Finally, two defenses that are expressly preserved by the Act are present in this case Mishkoff's speech is noncommercial, and he has made a fair use of the mark. For each of these reasons, any one of which would be sufficient to defeat plaintiff's claim, there is no likelihood of success on the merits.
C. There Is No Trademark Infringement or Cybersquatting Because "taubmansucks" Is Neither Identical nor Confusingly Similar to "Taubman," and There Is No Likelihood of Confusion About Who Sponsors Mishkoff's Web Site.
Plaintiff's cybersquatting claim cannot succeed because "taubmansucks" is neither "identical nor confusingly similar" to "Taubman." Because "taubmansucks" is plainly not "identical" to Taubman, plaintiff must show that it is "confusingly similar" to its mark. To the extent there are differences between the infringement rule that the plaintiff must show "likelihood of confusion" and the cybersquatting rule that the plaintiff must show "confusing similar[ity]," the legislative history cited above shows that Congress did not intend to expand the rights of trademark holders vis-a-vis persons registering domain names, but only wanted to provide a remedy where the name had not been "used" in the manner required by existing trademark law. It follows that the cybersquatting law cannot give more rights to the trademark plaintiff than the rule against infringement. In this regard, it is quite apparent that the word "confusing" is not modified by the term "likely" or "likelihood," as it is in the statutory cause of action for infringement under section 32 of the Lanham Act, 15 U.S.C. § 1114. Consequently, it is not sufficient that the plaintiff show only that confusion is "likely" rather, there must be real confusion that follows from the similarity between the domain name and the trademark.
For example, if a domain name consists of a trademark with a few transposed or changed letters, in the case of a single word trademark, or transposed words in the case of a multi-word trademark, the domain name would be "confusingly similar" to the trademark. In this regard, it is notable that almost every cybersquatting case decided favorable to the trademark owner involves either a domain name that was identical to the plaintiff's trademark, or was confusingly similar in the sense that the letters or words of the trademark were rearranged.(13)
There are exceptions to this rule, where the domain names at issue couple the exact trademark with a word identifying a related product or indication of source which imply that the trademark holder is the sponsor of the web sites posted under those domain names.(14) In this regard, there is some support for the proposition that Congress intended such domain names to be within the scope of the Act the Senate Judiciary Committee gave this as an example of the cybersquatting abuses that the statute was needed to address. Senate Report 106-140, 106th Cong. 1st Sess. (1999), at 5-7.
But even cases of this sort are a far cry from what is before the Court here. It is not believable that a person who saw the domain name "taubmansucks.com" would believe that it was sponsored or approved by Taubman. Nor, for that matter, is there any possibility that someone who was looking for Taubman's official website would mistakenly type "taubmansucks" into their browser. Indeed, as Exhibit B attached to this brief clearly shows, there are numerous sites on the Internet that use domain names in the "companynamesucks" or "trademarksucks" format; only people who are looking for critical sites will feed such an address into their browser in looking for sites relevant to their needs. And, any consumers who found their way to Mishkoff's web site would immediately recognize that it is a critical site, not a sponsored site. Consequently, plaintiff cannot establish the "confusingly similar" prong of the two-part test for cybersquatting liability.
Not only is there no case finding cybersquatting by the owner of a "sucks" site, but every case of which we are aware that has considered domain names including the word "sucks" has ruled that there was no confusion. The leading case, decided under a "likelihood of confusion" standard even before the cybersquatting act was passed, is Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998). The defendant operated a web site that prominently displayed the plaintiff's name and logo for the purpose of criticizing Bally for alleged abuse of consumers. The court found no likelihood of confusion because of the plain statement that the page was "unauthorized" and the superimposition of the word "sucks" over Bally's mark. As a result, "The Court finds that the reasonably prudent user would not mistake Faber's site for Bally's official site," id. at 1164, and "no reasonably prudent Internet user would believe that 'Ballysucks.com' is the official Bally site or is sponsored by Bally." Id. at 1165 n.2.
Similarly, in Lucent Technologies v. Lucentsucks.com, 95 F. Supp.2d 528 (E.D. Va 2000), the principal issue was whether the court had in rem jurisdiction under the Cybersquatting Act. After ruling against the plaintiff on that ground, the court addressed whether the domain name was confusingly similar to the plaintiff's mark. The court embraced the reasoning in Bally and found no chance of confusion, because the word "sucks" plainly signaled that the site was critical of the trademark holder, and not complimentary: "[S]ucks has entered the vernacular as a word loaded with criticism . . .. A successful showing that lucentsucks.com is an effective parody and/or a site for critical commentary would seriously undermine the requisite elements for the causes of action at issue in this case." Id. at 535-536 (citation to Bally omitted).
The only cases involving critical sites where courts have found any chance of confusion were cases where the critical site used the trademark itself as the domain name. E.g., People for the Ethical Treatment of Animals v. Doughney, 113 F. Supp.2d 915 (E.D. Va. 2000), aff'd, 263 F.3d 359 (4th Cir. 2001) (group calling itself People Eating Tasty Animals cybersquatted on "peta.org"). Even in such cases, however, the plaintiff has not always prevailed on its "likelihood of confusion" claim. See Northland Ins. Cos. v. Blaylock, 115 F. Supp.2d 1108, 1117-1122 (D. Minn. 2000) (defendant used "northlandinsurance.com" to publicize grievances against Northland Insurance Company).
Moreover, even if a mere "likelihood of confusion" were sufficient under the cybersquatting statute, the plaintiff still has no chance of success. The following eight factors are to be examined and weighed in determining whether a likelihood of confusion exists: (1) strength of the plaintiff's mark; (2) relatedness of the services [or goods]; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. Morningside Group v. Morningside Capital Group, 182 F.3d 133, 138 (2d Cir. 1999); Polaroid Corp. v. Polarad Elecs. Corp., 287 F. 2d 492, 495 (2d Cir. 1961).
These factors are simply a guide to help determine whether confusion would be likely to result from simultaneous use of the two contested marks. They imply no mathematical precision, and a plaintiff need not show that all, or even most, of the factors listed are present in any particular case to be successful. As we said in Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 834 (6th Cir. 1983), "[T]he general concept underlying likelihood of confusion is that the public believe that 'the mark's owner sponsored or otherwise approved of the use of the trademark."
Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988).
Accord, Nabisco v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000).
Assessing the eight likelihood of confusion factors, it is clear that, in the context of this case, there is no likelihood of confusion whatsoever. This case does not involve the traditional trademark infringement claim that defendant is passing off his goods and services as those of the plaintiff. Rather, plaintiff claims that potential customers might be confused when they use the Internet to find information about plaintiff. Such a claim is absurd in light of the content of Mishkoff's web site.
First, as noted above, the cases in which plaintiffs have prevailed on domain name claims have all been brought businesses against either commercial operations or domain name wholesalers who registered names that were either identical to the trademark, rearrangements or misspellings of the trademarks, or plainly linked the trademark with a word indicating one of the trademark holder's products or otherwise strongly suggesting that the trademark holder sponsored the site. And every case considering the issue of whether a "sucks" site was confusing has ruled for the defendant.
As for the other likelihood of confusion factors, even assuming that plaintiff's mark is strong, this does not end the inquiry. Regarding the relatedness of the parties' products or services, even if Mishkoff's web site is deemed a form of "services" under trademark law (the service of providing information), such services are not related to plaintiff's service, which is providing a mall for shopping. On the issue of evidence of actual confusion, plaintiff has submitted none. With respect to marketing channels used, by contrast to plaintiff's professed extensive marketing and advertising campaigns, Mishkoff does no marketing for his site. And the factor of the likely degree of purchaser care favors Mishkoff as well, inasmuch as he offers nothing for purchasers to acquire, and anyone who conducts a search engine query will see immediately from the search engine list, even before visiting his site, that his site is not affiliated with plaintiff in any way. Even careless Internet surfers would see immediately that Mishkoff's site is not affiliated with plaintiff.(15)
Turning next to Mishkoff's intent in selecting plaintiff's mark for inclusion in his domain name, his aim was simply to provide a fair description of the topic of his site and to enable persons looking for information regarding plaintiff to be able to find his site, not to divert traffic from the plaintiffs' sites. The final likelihood of confusion factor, the likelihood of expansion of the product lines, does not apply, because Mishkoff has no product lines.
The discussion above illustrates the extremely poor fit between trademark law and plaintiff's grievances, which have everything to do with the content of Mishkoff's web site speech and nothing to do with trademark law. Indeed, Mishkoff has not used plaintiff's marks in a trademark sense at all; they are simply used as the title for his web page, much like the title of a book, to describe a particular site that is devoted to information regarding plaintiff.
There can be no trademark liability where the use is non-commercial. Section 43(c)(4) of the Lanham Act, 15 U.S.C. § 1125(c)(4), provides that "The following shall not be actionable under this section . . . (B) Noncommercial use of a mark. (C) All forms of news reporting and news commentary." (emphasis added). The House Judiciary Committee explained the purpose of this exclusion, which was originally adopted in order to ensure that the dilution cause of action in section 43, that was federalized in 1989, would not apply to non-commercial speech:
[T]he proposed change in Section 43(a) should not be read in any way to limit political speech, consumer or editorial comment, parodies, satires, or other constitutionally protected material. . . . The section is narrowly drafted to encompass only clearly false and misleading commercial speech.
135 Cong. Rec. H1207, H1217 (daily ed., April 13, 1989) (emphasis added).
The purpose of the statute's noncommercial use exception was to protect "'parody, satire, editorial and other forms of expression that are not part of a commercial transaction.'" Dr. Seuss Enterprises v. Penguin Books USA, 924 F. Supp. 1559, 1574 (S.D. Cal. 1996), aff'd, 109 F.3d 1394 (9th Cir. 1997), quoting statement of Senator Hatch from the Congressional Record. Because the new cybersquatting law was enacted as Lanham Act subsection 43(d), 15 U.S.C. § 1125(d), it is plainly covered by the exclusion of noncommercial and consumer commentary which applies to everything in "this section." Indeed, Congress included a savings clause that explicitly disclaimed any intent that the cybersquatting law override either the First Amendment or section 43(c)(4) of the Lanham Act. Public Law 106-113, Section 3008, 113 STAT. 1501A-551. The sponsors of the cybersquatting law specifically disclaimed any intention to provide a cause of action against persons who registered domain names for the purpose of delivering comment or criticisms of trademark owners by identifying the owners with their marks. See House Report 106-412, 106th Cong. 1st Sess. 1999), at 10.
Despite these rules, the motion for an expanded injunction does not allege that Mishkoff's speech is commercial. Inspection of the web site reveals the wholly non-commercial character of the website. It is apparent from the web site that there is no advertising, no sales of goods or services, and no solicitations of donations or other payments. In sum, this is a non-commercial expression of views about Taubman and its lawyers, and plaintiff's claim cannot succeed on the merits.
The Lanham Act codifies a "fair use" defense at Section 33(b)(4): "the use of the name, term or device charged to be an infringement is a use, otherwise than as a mark, of . . . a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party...." 15 U.S.C. § 1115(b)(4). Numerous courts have recognized the applicability of this defense in the Internet context,(16) and the cybersquatting statute expressly recognizes fair use as a possible defense. 16 U.S.C. § 1125(d)(1)(B)(i)(IV). Mishkoff does no more than this the subject matter of his site is the plaintiff, and he uses its name to identify Taubman as the subject of criticism. This in no way constitutes use of the mark in a trademark sense. Rather, Mishkoff has used plaintiff's mark in a "non-trademark sense," that is, simply to identify its goods, services or business, and not his own. See Restatement (Third) of Unfair Competition § 28, comment c (1995). Mishkoff's domain names use plaintiff's mark not to identify plaintiff as the source of Mishkoff's First Amendment-protected consumer speech, but only to categorize his site in accordance with its subject matter (that is, in its descriptive sense, and not its trademark sense). Although plaintiff would prefer to silence Mishkoff, his use of plaintiff's names on his web site and in his domain name clearly falls under the fair use doctrine, in addition to the other defenses discussed above.
The final reason why the record in this case does not support an expanded preliminary injunction is that plaintiff has made no effort to demonstrate that Mishkoff registered his domain names in a bad faith attempt to profit from the plaintiff's marks. Because "bad faith" is a requirement for a finding of a violation under the cybersquatting law, there is no possibility that plaintiff might succeed on the merits by showing a violation of this statute.
The motion to expand the preliminary injunction to include defendant's "sucks" domain names should be denied.
November 12, 2001
1. Apparently, when the original site was first posted, it included a notice concerning a shirt-selling business operated by a friend of Mishkoff's. When plaintiff objected to this notice, it was removed, and the original site was wholly non-commercial at the time of the preliminary injunction.
2. Plaintiff also noted that the site publishes the content of settlement discussions, and claims that the content "defames" both Taubman and its counsel. However, plaintiff does not suggest that the publication of settlement materials is itself actionable, and it does not state a cause of action for defamation.
3. Shelley v. Kraemer, 334 U.S. 1, 14-15 (1948); Organization for a Better Austin v. Keefe, 402 U.S. 415, 418 (1971); see also Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219, 224-225 (6th Cir. 1996).
4. E.g., Semco v. Amcast, 52 F.3d 108, 111-114 (6th Cir. 1995); Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1119-1121 (8th Cir. 1999); U.S. Healthcare v. Blue Cross of Greater Philadelphia, 898 F.2d 914, 927-939 (3d Cir. 1990); Mattel v. MCA Records, 28 F. Supp. 2d 1120, 1144-1145 (C.D. Cal. 1998).
5. E.g., Bad Frog Brewery v. New York State Liquor Authority, 134 F.3d 87, 94-97 (2d Cir. 1998); ACLU of Georgia v. Miller, 977 F. Supp. 1228, 1233 (N.D. Ga. 1997).
6. E.g., Twin Peaks Production v. Publications Int'l, 996 F.2d 1366, 1379 (2d Cir. 1993); Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).
7. Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1165 (C.D. Cal. 1998) (upholding use of Bally trademark in both web site and site's internet address); see also Playboy Enterprises v. Netscape Communications, 55 F. Supp. 2d 1070, 1083 (C.D. Cal. 1999) (citing "First Amendment interests at stake" where defendants used plaintiffs' trademarks in machine-readable code to decide which advertisements to show users of search engine who included word "playboy" in a search for sites), aff'd 202 F.3d 278 (9th Cir. 1999); Playboy Enterprises v. Welles, 7 F. Supp. 2d 1098, 1103 (S.D. Cal. 1998) (upholding right of former "Playmate" to use Playboy trademarks in meta tags for her self-promotional commercial web site, with no mention of First Amendment).
8. E.g., Metromedia v. San Diego, 453 U.S. 490 (1981); Wheeler v. Commissioner of Highways, 822 F.2d 586 (6th Cir. 1987). See also Asian American Business Group v. City of Pomona, 716 F.Supp. 1328 (C.D. Cal. 1989) (striking down ordinance regulating signs identifying businesses in foreign language).
9. E.g., Cardtoons v. Major League Baseball Players Ass'n, 95 F.3d 959, 968-970 (10th Cir. 1996); Rogers v. Grimaldi, 875 F.2d 994, 997-999 (2d Cir. 1989); Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-403 (8th Cir. 1987).
10. L.L. Bean v. Drake Publishers, 811 F.2d 26, 33 (1st Cir. 1987); ACLU of Georgia v. Miller, 977 F. Supp. 1228, 1233 (N.D. Ga. 1997); Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 1161, 1167 (C.D. Cal. 1998); Lighthawk v. Robertson, 812 F. Supp. 1095, 1097-1101 (W.D. Wash. 1993); Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112, 1124-1125 (S.D.N.Y. 1980); see also Lucasfilm v. High Frontier, 622 F. Supp. 931 (D.D.C. 1985) (ruling on nonconstitutional grounds).
11. Originally, each TLD was allocated to a certain type of user: .org for non-profit groups, .net for internet service providers, .edu for schools, and .com for commercial enterprises. This allows several different entities to share a second-level domain. Thus, for example, wbai.com is held by William Byrne & Associates Inc., wbai.org by nonprofit community radio station WBAI, and wbai.net by a network of unhappy WBAI listeners. Other entities, such as Women's Bar Association of Illinois and WB&A Imaging, registered later and had to accept longer domain names (wbaillinois and wbaimaging). Many name registrants, especially commercial entities, claim every TLD for any given second-level domain, if available at the time of registration. This increases competitive pressure for desirable second-level domains. The recent opening of new top-level domains, .info and .biz, provide the potential for relieving some of this pressure between rival claimants to the same second-level domains.
12. Another possible claim is that the person has registered a domain name that "dilutes" the old mark. However, plaintiff's papers on the motion for an expanded injunction consistently rest on a theory of infringement, and do not even reference a possible dilution claim, not to speak of making an attempt to justify a finding of dilution. Accordingly, we do not discuss that possible aspect of a cybersquatting claim in this memorandum.
13. Sporty's Farm LLC v. Sportsman's Market, 202 F.3d 489 (2th Cir. 2000) (sporty's and sportys); OBH v. Spotlight Magazine, 86 F. Supp.2d 176 (W.D.N.Y. 2000) (The Buffalo News and thebuffalonews); Morrison & Foerster v. Wick, 94 F. Supp.2d 1125 (D.Colo. 2000) (misspellings and rearrangements of law firm's names); Wella Corp. v. Wella Graphics, 874 F. Supp. 54, 56 (E.D.N.Y. 1994) (wella and wello); Spear, Leeds & Kellogg v. Rosado, 2000 U.S. Dist. LEXIS 3732 (S.D.N.Y), aff'd mem., No. 00-7670 (2d Cir. Dec. 7, 2000) (owner of marks REDI, REDIBOOK, and ECN sued defendant registering names redi, redibook, and redi-ecn). See also Shields v. Zuccarini, 89 F. Supp.2d 634, 639 (E.D. Pa. 2000) (apparently equating "confusingly similar" with "for all practical purposes identical").
14. Mattel v. Internet Dimensions, 2000 U.S. Dist. LEXIS 9747 (S.D.N.Y.) (owner of trademark "Barbie" sued owner of pornography site registered as "barbiesplaypen"); Porsche Cars North America v. Spencer, 2000 U.S. Dist. LEXIS 7060 (E.D. Cal.) (owner of "Porsche" sued domain name reseller who registered name "porschesource.com").
15. Claiming that it wants to avoid any unnecessary dissemination of the content of Mishkoff's web site, plaintiff has filed only the opening page of the web site with the Court. Expedited Motion, at 2. However, because the content of the site makes clear how non-confusing the site is, we are attaching the first ten pages from the new site as Addendum D.
16. Bally Total Fitness Holdings Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998); Playboy Enterprises v. Welles, 7 F. Supp. 2d 1098 (S.D. Cal. 1998), aff'd, 162 F.3d 1169 (9th Cir. 1999); Patmont Motor Werks v. Gateway Marine, 1997 US Dist. LEXIS 10877 (N.D. Cal. 1997). See also Brookfield Communications v. West Coast Video, 174 F.3d 1036, 1065-66 (9th Cir. 1999) (fair use doctrine allows for the nominative and good faith use of another's mark to attempt to index the content of a web site); McCarthy on Trademarks (4th ed. 1999) § 23.11 (discussing non-confusing "nominative use" where trademark is used to name a commercial entity that is under discussion).