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Sixth Circuit Supports Sucks Sites
Martin H. Samson, Esq., Partner, Phillips Nizer LLP, Internet Library Case Upda, February 20, 2003
Abstract: The Sixth Circuit (which covers Tennessee, Kentucky, Ohio and Michigan) held that a domain name holder's use of another's trademark in a 'fan' site did not run afoul of Section 1114 of the Lanham Act because of the presence of both a prominent disclaimer on the site disavowing any affiliation with mark owner, and a link to plaintiff's official web site. The domain holder's use of the trademarks in conjunction with the word "sucks" in the domain names of non-commercial complaint sites did not violate Section 1114 of the Lanham Act because there was no likelihood of consumer confusion arising from that type of use, and because such speech is protected by the First Amendment of the US Constitution. The Taubman Company v. Webfeats, et al., Nos. 01-2648/2725 (6th Cir., February 7, 2003).
Reversing the court below, the Sixth Circuit dissolved an injunction which enjoined defendants from using plaintiff's trademarks in conjunction with the word "sucks" in the domain name of several "complaint" sites, as well as in the domain name of a non-commercial "fan" site. (....) Plaintiff The Taubman Company ("Taubman Co.") built a shopping mall (the "Mall") it named "The Shops At Willow Bend". Taubman Co. holds trademarks in the marks "Taubman" and "The Shops At Willow Bend."
Defendant Henry Mishkoff ("Mishkoff"), a web developer, registered the domain name "shopsatwillowbend.com," at which domain he operated what he described as a "fan" website, featuring a description of the Mall and links to the websites of its tenants. Mishkoff's site also contained links to the website of a shirt business operated by his girlfriend, as well as the homepage of his website development business, Webfeats. Mishkoff's site contained a disclaimer indicating it was not the official web site of the Mall, as well as a link to that site."
Upon discovering Mishkoff's activities, Taubman Co. requested that Mishkoff cease using the "shopsatwillowmall.com" domain name, asserting that Mishkoff's use infringed plaintiff's mark. Taubman Co. also offered to purchase this domain name for $1,000, an offer Mishkoff initially accepted under threat of litigation. When Mishkoff later refused to sell the domain name, Taubman Co. commenced this lawsuit. Mishkoff responded by registering five additional domain names, which featured Taubman Co. trademarks in conjunction with the word sucks (i.e. Taubmansucks.com, theshopsatwillow-bendsucks.com). Each of these five domains were linked to the same website, which contained a history of the litigation Taubman Co. commenced against Mishkoff, along with Mishkoff's editorial comments on the proceedings.
The District Court then issued a preliminary injunction enjoining defendants from continuing to use either shopsatwillowmall.com or the various [trademark] sucks.com domain names, on the ground that Taubman Co. was likely to prevail on its Section 1114 Lanham Act claims. On appeal, the Sixth Circuit reversed, and dissolved the injunction issued below.
To be entitled to injunctive relief in the Sixth Circuit, a plaintiff must show "a likelihood of success on the merits" of its claims. Finding Taubman Co. was not likely to succeed on its §1114 Lanham Act claim, the Sixth Circuit found Taubman Co. was not entitled to injunctive relief.
Section 1114 of the Lanham Act imposes liability for infringement of trademarks on:
The hallmark of a claim under §1114 is likelihood of consumer confusion.
Said the Court:
Indeed, the court noted that Mishkoff's activities actually helped Taubman Co., by directing some users to its official site (at theshops-atwillowmall.com) who might otherwise have received nothing more than an error message upon arriving at Mishkoff's 'shopsatwillowmall.com' url.
To establish a violation of §1114, a plaintiff must also show that the defendant was using its mark "in connection with the sale ... or advertising of any goods or services." The Sixth Circuit held that the presence on Miskoff's site of links to both his girlfriend's shirt business and his own website development company satisfied this "in connection with" requirement. However, removal of these links would negate the "in connection" with requirement sufficiently to bar the issuance of injunctive relief.
Said the Sixth Circuit:
The Court also found that Taubman Co. was not likely to succeed on its claim that Mishkoff's use of Taubman Co.'s marks, in conjunction with the word 'sucks' in the domain name of complaint sites, violated §1114 of the Lanham Act. The Court again rested its holding on a finding that such use was not likely to confuse consumers.
Said the Court:
The Court further held that, in the context of an injunction application, speech critical of plaintiff's business was protected by the First Amendment, and could not be blocked by the Lanham Act.
"We find that Miskoff's use of Taubman's mark in the domain name 'taubmansucks.com' is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. Such use is not subject to scrutiny under the Lanham Act. In fact, 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. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it."
In its decision, the Court also rejected Mishkoff's claim that the injunction should be vacated because the District Court lacked personal jurisdiction over him. The Court found that Mishkoff had waived his right to make this objection because he had failed to assert it in his answer, filed pro se [for himself].