Use of Trademarks for Commentary or Criticism
Alitalia v. Porta
Trademark suit in federal court in New York by airline seeking to suppress a web site posted at www.alitaliasucks.com by an unhappy customer whose luggage was lost. Company has moved to for a preliminary injunction claiming that the domain name violates the new anti-cybersquatting law; defendant argues that this law was not violated and that, in any event, the First Amendment protects his speech.
Alvis Coating v. Townsend
Public Citizen is defending Alan and Linda Townsend from Alvis, Inc.'s attempt to shut down a website that the Townsends created to criticize the company. After several months of attempting to work with Alvis and one of its dealers to resolve problems with the application of Alvis Spray on Siding to their home, the Townsends began publishing a website to voice their frustration and provide a forum for others to do so. Alvis responding by bringing numerous frivolous claims against the Townsends in what amounts to a classic Strategic Lawsuit Against Public Participation or "SLAPP suit."
Bosley v. Kremer
California company brought suit in Illinois against a California man who runs web sites devoted to the alleged misconduct of the company, as reported in various media sources and detailed in law enforcement investigations. Public Citizen moved to dismiss, arguing that there was no basis for suing in Illinois, that in any event the California anti-SLAPP statute comes to Illinois with the case, and that the defendant is entitled to use the company's name in the domain names for his web sites.
CafePress.com v. Republican National Committee
The Republican National Committee, having obtained federal trademark registrations for the acronym “GOP” and for a stylized logo of an elephant, told CafePress that unless it prevented its users from creating and selling items imprinted with designs that incorporate those trademarks into designs that comment on Republican policies and candidates, it would bring suit for trademark infringement and dilution and seek treble damages. After the RNC refused to engage in CafePress’s request to discuss its concerns about infringing on political speech, CafePress alerted the public to the controversy and warned the RNC that it faced an action for a declaratory judgment. As soon as the press started calling the RNC, it agreed to renounce its trademark claims.
Central Committee of Hamilton County Republic Party v. Dalton
In this case, we represented Michael Dalton who created a website critical of the Hamilton County Republican Party in Ohio. The party requested that the site be shut down because its domain name, www.hamiltoncountyrepublicanparty.com, is nearly identical to the domain name of the party’s Web site, www.hamiltoncountyrepublicanparty.org. The party alleged that Dalton, a Cincinnati resident, committed trademark infringement and is guilty of unfair competition.
Judge Ralph E. Winkler denied the party’s motion to immediately order Dalton to refrain from using his Web site. In a memorandum of law filed to coincide with the hearing, Public Citizen argued that because the Web site is strongly critical of Republicans and several Republican judicial candidates, no reasonable viewer would confuse it with the Hamilton County Republican Party’s true Web site, and therefore there is no trademark infringement.
In his brief, Dalton also argued that the party’s motion for a temporary restraining order should be denied because such an order would constitute a prior restraint on political speech that would violate core First Amendment principles, and because trademark law pertains only to commercial speech made to promote a business. Moreover, legal precedent has established that trademark law is not implicated when a Web site is devoted to criticizing the holder of a trademark and is unlikely to confuse viewers.
Circuit City Stores, Inc. v. Steven C. Shane
Citadel Security Software v John Does 1-5
Citadel Security Software's management dumped nearly 800,000 shares of company stock before the price collapsed. When anonymous posters on Yahoo! message boards complained about these events, the company sued five posters for defamation and business disparagement and subpoenaed Yahoo! to identify them. We have moved to quash the subpoena because the First Amendment protects the right to engage in lawful, anonymous speech, and there is no allegation or evidence that defendants' speech was unlawful. We also argue that our client, a Minnesotan, was improperly sued in Texas.
Coca Cola Company et al v. Purdy
Anti-abortion activist registered domain names using several different companies' trademarks as a way of drawing public attention to websites denouncing abortion through graphic photographs of dismembered fetuses. After he was sued, he added a small amount of content related to the companies. Public Citizen argued that, because his websites were not "about" the companies whose trademarks he was using, his use of the trademarks in the domain names could not be justified. We argued, however, that if Purdy developed content that was specific to the companies and proposed to use domain names that fairly described the contents of such websites, an injunction forbidding any domain name that did not use a critical word within the domain name could become overbroad.
Crown Pontiac v. Ballock
In this cyberspeech case, Public Citizen defended Thomas Ballock's right to criticize the Crown Pontiac car dealership. Mr. Ballock purchased a defective car from Crown and was very unhappy with Crown's response to his complaints, so he posted a gripe site on the Internet in which he used Crown's name in the domain name and text. Mr. Ballock's site clearly stated that it was not Crown's official website, but rather a site critical of Crown. Crown sued Mr. Ballock under trademark and cybersquatting laws, but was eventually forced to drop its lawsuit and pay Mr. Ballock more than $6000 for the damages he incurred from Crown's attempt to enjoin his website.
Dynetech Corporation and GlobalTec Solutions, LLP v. Leonard Fitness, Inc. and Justin Leonard
Public Citizen filed a motion to dismiss a lawsuit in Florida by two affiliated infomercial companies that are attempting to shut down negative reviews of their day trading software on the websites InfomercialRatings.com and InfomercialScams.com. The companies claimed that running a website where consumers can post reviews of their products constitutes trademark infringement and a variety of other wrongs, and sought triple damages and attorneys' fees against the site's owner. In its motion to dismiss, Public Citizen argues that the Arizona-based website operator is not subject to jurisdiction in Florida, that the websites are protected by the First Amendment, that posting reviews is not trademark infringement, and that the Communications Decency Act protects a website owner from liability for what users post on the site.
Falwell v. Cohn
Hamilton County Republican Party v. Dalton
The Hamilton County Republican Party sued Michael Dalton, who maintained a website critical of the party at http://www.hamiltoncountyrepublicanparty.com. The party moved for a temporary restraining order, claiming that Dalton's protest website infringed the party's trademark in the phrase "Hamilton County Republican Party." Public Citizen Litigation Group filed a memorandum in opposition to the party's motion. After the motion was denied, the party agreed to drop its case.
Jones Day v. BlockShopper LLC
Jones Day, a national law firm, found it objectionable when BlockShopper.com, a web site that reports on real estate transactions in tony neighborhoods in several cities, published artilces on condo purchases by two associates in its Chicago office. It sued BlockShopper claiming that by mentioning the firm name in headlines in the articles, and by linking to the associates’ bio pages on the Jones Day web site, BlockShopper infringed and diluted its trademark. In a brief co-authored with the Electronic Frontier Foundation, Public Citizen argued that the trademark claims were preposterous and, in any event, were barred by the First Amendment which protects the right to publish truthful information even if the information is about a trademark holder and hence uses the trademark to convey the truth.
Lamparello v. Falwell
Christopher Lamparello created a web site to criticize Jerry Falwell's views on homosexuality, using the domain name fallwell.com. Falwell brought a proceeding to transfer the domain name in the UDRP, and after a UDRP panel ruled in Falwell's favor Lamparello sued in federal court in Virginia to keep his domain name, arguing that his site was noncommercial and that he was entitled to use Falwell's name — or, in this case, a play on Falwell's name — for a web site about Falwell. Noting that, for a period of time, Lamparello's web site had praised a book about how biblical verses said to condemn homosexuality should be interpreted, and that the site had linked to Amazon.com where the book could be bought, the trial judge decided that the site was sufficiently commercial to be subject to the trademark laws, and also that an adverse impact on Falwell's business would be enough in any event. The United States Court of Appeals for the Fourth Circuit reversed, specifically declining to address issues of noncommercial use but holding that the domain name was not likely to cause confusion and that the controversial new doctrine of "initial interest confusion" could not be used to find liability. The briefs also discuss the statute of limitations for trademark claims, as well as the standards for damages and attorney fees, which the district court declined to impose.
Lifestyle Lift Holding, Inc. v. Leonard Fitness, Inc. and Justin Leonard
Lifestyle Lift Holding, a Michigan company that licenses the use of its name to cosmetic facial surgeons in 38 offices across the country, sued Justin Leonard, an Arizona resident whose web site www.infomercialscams.com allows Internet users to post, and read, comments on the utility of products sold through television infomercials, include the so-called "Lifestyle Lift." Lifestyle claims that by including its name in the post-domain path of the pages of its web site that contain reviews of its product, and by including its name in headlines on those pages, Leonard violates its trademark rights and is engaged in false advertising. Public Citizen has moved to dismiss the complaint because Leonard cannot be sued in Michigan, and because in any event the First Amendment protects his truthful use of the Lifestyle Lift name on pages where that product is discussed, and the trademark laws do not forbid such use.
Mohl v. Dymo Corp.
This lawsuit, which was filed in the U.S. District Court for the Middle District of Florida, sought to guarantee Rene F. Mohl of Ponce Inlet, Fla., the right to tell eBay users that he is selling printer labels compatible with printers made by Dymo, a Stamford, Conn., company. Because Mohl's printer label listings on eBay are a form of speech, they are protected by the First Amendment. However, Dymo complained to eBay, erroneously claiming that Mohl's use of Dymo's name and part numbers for compatibility purposes infringed Dymo's trademarks and that use of the labels would void consumers' printer warranties. Mohl was forced to stop using the "Dymo" name in his listings and, as a result, consumers had a more difficult time locating his lower-priced compatible labels. After Public Citizen Litigation Group filed suit on Mohl's behalf, Dymo agreed to settle the case, acknowledging that its actions were improper and compensating Mohl for lost sales. Dymo also took steps to ensure that this kind of problem does not recur.
Nissan Motor Co. v. Nissan Computer Corp.
A federal district judge decided that Uzi Nissan did not infringe the trademark of the Nissan auto companies by creating a web site for the Nissan Computer Company at the addresses nissan.com and nissan.net, but that the use of the domain name for ads for automobile products was infringement, and also that use of the domain name for advertising and for criticism of Nissan Motor Co. diluted Nissan's trademark. As a remedy, the judge allowed Uzi Nissan to keep his domain names, but forbade him from including any advertising AND from including anything critical of Nissan Motor. Public Citizen argued, in a brief filed with the Court of Appeals for the Ninth Circuit, that once advertising was forbidden on the website it became noncommercial and hence beyond the reach of the federal trademark laws, that, in any event, neither the First Amendment nor the trademark laws would tolerate an injunction barring use of the Nissan name in a domain name for a website that criticizes Nissan Motor.
Paccar v. Telescan
Trademark suit by manufacturer against retailer who sells manufacturer's goods on its web site.
Pacifica Web Sites
Pacifica Foundation threatened trademark litigation against several groups that used its name in domain names for web sites that criticized actions of foundation leadership in suppressing dissent on its radio stations, but withdrew the threat in the face of Public Citizen's explanations of why such law suits could not succeed.
Ronald Riley v. John Dozier
After a lawyer working for John Dozier, who specializes in Internet-related litigation, sent demand letters to Ronald J. Riley over statements about a Dozier client on a web site operated by Riley, Riley established a “sucks” web site, www.cybertriallawyer-sucks.com, devoted to criticizing Dozier and his law firm. Dozier claimed that, by hyper-linking from the words “Dozier Internet Law” to a web site other than the Dozier firm’s own web site, Riley was violating Dozier’s trademark. Dozier also filed suit against Riley in state court; however, he did not serve that complaint on Dozier, but only used it to threaten the hosts of Riley’s web site with litigation over Riley’s alleged infringement if they did not take Riley’s site down. Represented by Public Citizen, Riley has sued Dozier to seek an order forbidding Dozier from seeking to have Riley’s web site removed from the Internet based on spurious claims of trademark infringement.
Servicemaster, et al. v. Virga
Smith v. Wal-Mart Stores, Inc.
Web site and artistic designs created by Georgia resident Charles Smith to express his objections to Wal-Mart's business practices are not only permissible under trademark law but are speech that should be protected by the First Amendment, Public Citizen said in a lawsuit filed in a Georgia federal District Ccourt in Atlanta.
Smith, a Conyers resident, created designs critical of Wal-Mart that merged Wal-Mart's name with the word "holocaust" and a star, and arranged for CafePress.com, a California company, to put the design on T-shirts, hats, bumper stickers and other items for salethat he sold on the Internet. Smith reserved the domain name and arranged for his items to be sold on CafePress.com.
In December 2005, Wal-Mart sent a letter and e-mail to Smith asserting ownership of trademarks in the name Wal-Mart, the star and the "smiley face" the company uses. The company threatened to sue Smith for infringing and diluting its trademarks and demanded he stop selling his items. Wal-Mart also demanded that Smith stop using the domain name "walocaust.com" and transfer it to Wal-Mart. Wal-Mart made a similar threat to CafePress.com, which immediately stopped making and selling Smith's items.
In the lawsuit, Public Citizen asserts although Smith sold his anti-Wal-Mart merchandise, the designs themselves are non-commercial speech — a type of speech currently protected from trademark infringement and dilution lawsuits. The lawsuit also states that there is no likelihood of confusion about whether Smith's designs or Web site are sponsored or affiliated by the retail giant, a common trademark violation claim. The lawsuit requests the court to rule that Smith is not infringing, diluting or cybersquatting on Wal-Mart's trademarks because his speech is protected by the First Amendment.
Taubman v. Mishkoff
A Dallas resident created a web site praising a local shopping mall, the Shops at Willow Bend, using the domain name shopsatwillowbend.com, and was sued for his trouble by the mall developer, the Taubman Company, who claimed that the web site and domain name violated its trademark in the mall's name. When the web operator created a new web site called using names like taubmansucks.com and shopsatwillowbendsucks.com to protest the wasteful litigation against him, the developer sought a preliminary injunction asking that the new sites be stricken as well.
TMI, Inc. v. Maxwell