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Appeals Court Upholds Right of Online Critic to Use Shopping Mall’s Name in Domain Name

Feb. 7, 2003

Appeals Court Upholds Right of Online Critic to Use Shopping Mall’s Name in Domain Name

Dallas Web Designer Did Not Confuse Internet Users, Infringe on Trademark in Fan Site, Gripe Sites

WASHINGTON, D.C. – In a ringing affirmation of free speech rights on the Internet, a federal appeals court has upheld the right of a Dallas man to use the name of a local shopping mall as the domain name for a Web site singing the praises of that mall, as well as a second Web site denouncing the mall’s owner for suing him under the federal trademark laws.

Computer consultant Henry Mishkoff has been involved in a dispute with the nationwide shopping mall developer Taubman Company, which was building a mall called The Shops at Willow Bend, in Plano, Texas, near his Dallas home. Mishkoff originally built a “fan site” praising the mall, but after Taubman claimed his site violated its trademark and demanded it be taken down, he developed a site criticizing the company.

In the fall of 2001, the Michigan district court ordered Mishkoff to remove both of his sites from the Web, taking a dangerous step toward restricting non-commercial speech on the Internet. The appeals court suspended the order against the gripe site in March while it considered the First Amendment implications of the case.

Today’s opinion overturns the district court’s injunctions that prevented Mishkoff from using the domain name “shopsatwillowbend.com” in his fan site and variations on “taubmansucks.com” and “shopsatwillowbendsucks.com” in his subsequent gripe sites. In a unanimous opinion authored by Circuit Judge Richard Surhheinrich, the court wrote that Mishkoff clearly had no commercial intent in either of his sites, that there was no likelihood that any visitors to his sites would be confused as to their purpose and that allowing the injunctions to remain would harm the public by curtailing free speech rights.

The Court stated, “Taubman concedes that Mishkoff is ‘free to shout “Taubman Sucks!” from the rooftops’… Essentially, this is what he has done in his domain name. The rooftops of our past have evolved into the internet domain names of our present.”

“This is the first time an appellate court has addressed the trademark and free speech rights for an Internet fan site not meant to mislead and gripe site, and it was particularly important that the court get things right. This decision will set an important precedent protecting the rights of citizens to criticize and to praise. It is quite a victory,” said Paul Alan Levy, an attorney with the Public Citizen Litigation Group who represented Mishkoff.

“I’m very gratified to learn that the Court of Appeals has agreed with most of the points I’ve been making all along,” Mishkoff said. “Hopefully, the ruling will help to ensure that other people will be able to exercise their right of free speech without having to worry about being harassed by big companies with deep pockets.”

Barbara Harvey has served as Mishkoff’s local counsel in Detroit. Professor Milton Mueller, director of the Syracuse University’s Graduate Program in Telecommunications and Network Management Research and co-director of The Convergence Center, has served as Mishkoff’s pro bono expert witness who wrote a report on the case (click here to view online).

Click here for a copy of the court’s opinion on the Web. Public Citizen became involved in the case because it has a history of defending free speech on the Internet. For more information on this and other online free speech cases, click here.