Use of Brand Names in Domain Names and Metatags

Jenzabar v. Long Bow Group

Jenzabar, a company that was founded by a student leader at Tiananmen Square and that makes software for institutions of higher education, brought defamation and trademark action against documentary filmmakers whose portrayal of the leader was unfavorable. After the defamation claims were dismissed, the company pursued trademark claims based on the theory that the use of the company’s name in the meta tags of pages of a film-related web site that discussed the company infringed and diluted the company’s mark. Public Citizen argues that the meta tags are noncommercial speech that truthfully describes a subject of the web page and hence is protected by the First Amendment, and in any event that there is no confusion about the source of the web pages, that the trademarks are not diluted, and that the use of the trademarks is fair use.

• Second Supplemental Affidavit of Frank Farance (1/19/2010)
• Reply Memo in Support of Motion to Strike Farance Affidavit (1/08/10)
• Surreply in Opposition to Motion to Amend (1/08/10)
• Supplemental Affidavit of Frank Farance (12/16/2009)
• Opposition to Motion to Amend (12/04/2009)
• Memo in Support of Motion to Strike Expert Affidavit of Frank Farance (12/01/2009)
• Opposition to Disqualification (11/20/2009)
• Opposition to Motion to Strike Affidavit of Nora Chang (11/20/2009)
• Motion to Disqualify Counsel (11/05/2009)
• Defendant Long Bow Group's Memorandum in Support of its Motion for Summary Judgment (10/13/2009)
• Other documents from the litigation via the TSquare web site (10/13/2009)

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.

• Letter from Public Citizen to Pacifica Counsel

Paccar v. Telescan 

 Trademark suit by manufacturer against retailer who sells manufacturer's goods on its web site.

• Amicus Curiae Brief - argues that because the brand names properly describe the subject of the retailer's web pages, they may fairly be used in domain names and meta tags for those web pages.

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.

• Brief for Appellant - November 17, 2004
• Reply on Summary Judgment - June 4, 2004
• Memorandum in Opposition - June 4, 2004
• Summary Judgment Memorandum - May 24, 2004
• Reply Brief fof Appellant - March 17, 2005
• Opposition to Petition for Rehearing - September 29, 2005