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The Appeals Hearing:
Doug Sprinkle's Response
|[Note that my commentary - which you'll be able to distinguish by its formatting, and by the fact that it's enclosed in brackets, like this sentence - is interspersed with the transcript on this page.]|
[Doug Sprinkle] Good morning. May it please the Court, my name is Doug Sprinkle. I'm appearing here on behalf of the appellant, Taubman Corporation. I've read the briefs that were submitted by Mr. Mishkoff and WebFeats, our briefs - and this case is not a case about free speech. Both the defendant and the Amicus brief have indicated in their briefs that the plaintiff, the Taubman Group, would like to prevent Mr. Mishkoff from saying anything bad about The Shops at Willow Bend or Mr. Taubman anywhere on the Internet. That simply isn't true. He can take out MishkoffSpeaks.com and he can say anything about Taubman, The Shops at Willow Bend, me, this Court, anything he wants to. In fact, he does have a website - which is the name of my firm sucks.com - where he says all sorts of bad things about my firm, about Taubman, about The Shops at Willow Bend, and he's entitled to do that. That's what free speech is all about.
|[It's a minor point, but I should mention that I've never made any negative comments about The Shops at Willow Bend. I like The Shops at Willow Bend, I think it's a beautiful mall and a great addition to my community. That's why I created a website about it in the first place!]|
[Judge Boggs] So you're not - you're not seeking an injunction on that?
[Doug Sprinkle] No. No, it wouldn't be proper. He's entitled to do that.
|[Despite Mr. Sprinkle's spirited defense of my right of free speech, I should point out that his firm did indeed try to drag my GiffordKrassGrohSprinkleSucks.com domain into this lawsuit (albeit in a peripheral sense) by requesting documents relating to that domain in their discovery requests. My attorney pointed out that Taubman had no standing to involve that domain in this dispute, and it has not been mentioned since. It's gratifying to learn that Mr. Sprinkle now believes that I'm entitled to say "all sorts of bad things" about his firm - which is especially fortunate because there are so many bad things that need to be said!]|
[Judge Boggs] Because your firm name isn't a registered trademark?
[Doug Sprinkle] Not last time I looked, Your Honor.
[Judge Boggs] Okay. But if it were, you know, Good Lawyers, Inc. -
[Doug Sprinkle] Well, you know, I'm a trademark attorney, so I probably should consider that, and maybe I will.
[Judge Boggs] Well, but, I mean, that's, I mean, I think it's a legitimate question if you're just saying, well, it's fortuitous, or we didn't get around to it. I mean, is there any - I'm not a trademark attorney - is there anything that keeps a law firm from trademarking its name?
[Doug Sprinkle] Absolutely none. In fact, the modern trend is to trademark the logo that goes with the firm [inaudible]
[Judge Boggs] That was like for "Fresh Fields," or, you know, those sort of fancy names. Everybody's getting shorter.
[Doug Sprinkle] That's right. Right.
[Judge Boggs] But, so that, in a sense, undercuts that argument, in that you could use it to at least make it harder for people to find his particular criticism.
[Doug Sprinkle] Google still finds it, because Google searches the whole thing.
[Judge Boggs] Well, no, I mean, they can find it, but in effective - in just the same way, Counsel, that a book on the bookshelf, you know, that says "Nixon is a Crook" is easier to find than "Great Presidential Crimes," if what you're interested in is the crimes of Nixon, right?
[Doug Sprinkle] You could - you could have a website that says Henry Mishkoff's - well, maybe not [inaudible]
[Judge Boggs] No, but the question is: Can you say "Taubman sucks"? I mean, that's what the title of a book on this same subject might well be, and I take it that you wouldn't say that you could prevent that.
[Doug Sprinkle] The Shops at Willow Bend Sucks, because of the safe distance rule, we can prevent that. Taubman is certainly a mark associated with The Shops at Willow Bend, so I think it falls within that ambit. But what this case is really about, Your Honor, it's about a cybersquatter, it's about a trademark infringer, and a fellow who saw that a new mall was going up, he immediately registered our name as a domain name in order to extract $1,000 from us. That's what this case is all about. And if you read his brief -
|[This case is about my trying to extract $1,000 from them? Even though I never asked them for any amount of money at any time? And even though the $1,000 figure was first raised in their unsolicited settlement offer to me? It seems that Mr. Sprinkle realizes that he doesn't have much of a case unless he can somehow convince the Court that I asked for money, even though I did not - but I didn't realize to what extremes he was willing to carry this fiction, as you'll see below.]|
[Judge Boggs] No, but from the time he originally registered the name until you complained about it and then offered $1,000 down the road - that was the way I understood the time line -
[Doug Sprinkle] The time line -
[Judge Boggs] It may have turned out that money got into it, but that wasn't the way I understood the time line. Can you enlighten me?
[Doug Sprinkle] The time line was that they were building this mall, he heard about it, he immediately registered the name.
[Judge Boggs] Right. Yeah, but the - the thousand dollars, he didn't say, "I've got your name. Are you registered? You wouldn't want anything to happen to my name."
[Doug Sprinkle] We had that -
[Judge Boggs] He was sitting there fat and happy, you were sitting there fat and happy, and then you began threatening him and he began threatening you back.
[Doug Sprinkle] Well, we may be fat, but we weren't happy -
[Judge Boggs] Okay.
[Doug Sprinkle] Because it was our registered name, and he was using it. He was displaying a picture of our mall, incidentally that he took from our website. That's the copyright infringement claim that we have going in the same lawsuit.
[Judge Boggs] But that's not in the injunction.
[Doug Sprinkle] It's not in the injunction.
[Judge Boggs] I mean, could he stand out on the sidewalk and peddle brochures that said, "Hey, it's going to be tough when you get in there finding your way around. Here's a pamphlet I published that shows you how to find your way around The Shops at Willow Bend"?
[Doug Sprinkle] Of course he can, but what he can't do is have a pamphlet that says "The Shops at Willow Bend," which is our registered mark - here's a guide to The Shops at Willow Bend, and that's exactly what he did. When he does that, then people who get that think that it comes from The Shops at Willow Bend.
[Judge Boggs] Despite the disclaimer.
[Doug Sprinkle] The disclaimer is sort of a bait-and-switch. It's a bait-and-switch. It's like walking down a street and seeing a bar that says, "The Labatts Beer Bar." And so you're thirsty, you go into it, and then there's a disclaimer across the top of it that says, "We're not really sponsored by Labatts." Then you go up and you say, "I want a Labatts." They say, "Well, we don't really sell Labatts, but we have this other good beer." It's nothing more than a bait-and-switch.
[Judge Boggs] Well, how about the 1-800-HOLIDAY case then? That was exactly the argument that was made there.
[Doug Sprinkle] To be honest with you, I don't know that case, and so I can't argue it.
[Judge Boggs] Okay. It's a case where Holiday Inn had a phone number, 1-800-HOLIDAY, and these other people -
[Doug Sprinkle] The O and the zero switched around.
[Judge Boggs] Right. The 1-800-H-O-LIDAY.
[Doug Sprinkle] That's a little bit different. If he had misdialed The Shops at Willow Bend hoping to catch somebody who doesn't know how to type, maybe it would fall under those 800 number cases, where people intentionally took out the confusing numbers.
[Judge Boggs] I mean, if anything, they were much more mercenary directly in 1-800-HOLIDAY. They really did want people to call -
[Doug Sprinkle] I think Mr. Mishkoff -
[Judge Boggs] And we, in effect, we let them get away with it, partly because they had this terrific disclaimer that as soon as you got there they said, "You haven't reached."
[Doug Sprinkle] Well, we did cite a case that -
[Judge Boggs] And these folks do better. That was why I was getting to the question about the clickable link. I mean, for anybody who is using the Internet, he doesn't have to walk a hundred yards to the next bar, he's got to move his mouse about a quarter of an inch and he's back in your bar.
[Doug Sprinkle] But that's the problem. The people get to it and then they have the disclaimer only on the home page. The disclaimer is not on the other pages, it's only on the home page. We've cited another case in here - I forget the name of it - it says that if you have only one disclaimer, it doesn't count because they're not on the other pages. But if you get to that page and you see a picture of The Shops at Willow Bend, it looks like just what you're looking for, and so why search for it? You've got the bait-and-switch problem. You say, "Well, there's -"
[Judge Boggs] That's not the bait-and-switch, it's that they're telling you, you know, their brochure may be better than your brochure. I mean that's -
[Doug Sprinkle] It may be better, but -
[Judge Boggs] That's back to the guy on the sidewalk. You may have Mr. Taubman selling his brochure, and he says, "Hey, I've got a better brochure to The Shops at Willow Bend."
[Doug Sprinkle] He can say that. I have no question about his right to do that. But when he says it underneath our trademark, people assume that the brochure that he's handing out -
[Judge Boggs] So is it really - I mean, the key to this argument really is confusion.
[Doug Sprinkle] Absolutely. That's what trademark law's all about.
[Judge Boggs] Okay. Alright. And then what's the - what's the evidence that the judge would rely on here? We don't have consumer surveys, we don't have expert testimony, we just have this sort of b'guess and b'gosh that this would be confusing. Is that right?
[Doug Sprinkle] Well, I admit that there is a little bit about the assumption, as Mr. Levy said, that when people type in Yamaha.com they expect Yamaha, or Sony.com. And the judge did assume that, that when you type it in. I don't buy this argument about if you type in Apple, because it's the name of a computer company, but people really are seeking information about apples. Well, there's no fruit known called "Shops at Willow Bend" that we eat. There's only one Shops at Willow Bend, so I think that's an argument that really can't fly. But the - but you're right, it is about confusion, and [inaudible] our mark, which we had registered -
[Judge Clay] Counsel, let me ask you to clear up one thing. You seem to argue in your papers that you're concerned about confusion on the part of your investors, and it sounds like what you're saying here today is you're concerned about customer confusion, which is perhaps what the standard should be.
[Doug Sprinkle] We're concerned about all of it. Customer confusion is certainly part of it.
[Judge Clay] So you're concerned about both? It's not that you're concerned primarily about investor confusion, you're concerned about customer confusion as well? Well, how did you present this to the District Court? What did you tell him you were concerned about in that regard?
[Doug Sprinkle] Absolutely nothing, because there was no oral argument. Judge Zatkoff essentially said, "I've read the briefs, and there's not going to be oral argument, and here's the decision."
[Judge Clay] No, but in your briefs to the District Court, how did you describe what sort of confusion you were concerned about in terms of customers or investors?
[Doug Sprinkle] We had no surveys. We went through the eight-part Frisch test, the Big Boy test, and we went through the fact that we've got the identical name, the fact that he really has no legitimate reason to have this name. This "fan site" is, of course, a total red herring. Actors have fans, rock stars have fans, unbuilt malls don't have fans, so - that's called cybersquatting. That's why he took out the name. He certainly wasn't a fan of the site, and he was a fan who was certainly willing to get rid of that fan site for a thousand bucks.
But just the fact that he had no legitimate reason, the fact that we have harm, particularly if the information given on that website is inaccurate or false. There clearly was commercial use in the site, contrary to appellant's brief. He advertised his girlfriend's shirt business and, "You don't have to come to the mall, we'll come to you, Shirtbiz.com." That doesn't help the mall. That's not a very good fan when you tell everybody you don't have to go to the mall to do your shopping, they'll come to you.
[Judge Clay] In the first injunction that was granted, would you agree that the District Court did not set forth adequate findings of fact and conclusions of law? I think there's one sentence in there or something.
[Doug Sprinkle] Yeah. I think what Judge Zatkoff did was in effect he incorporated the briefs by reference. Would I have preferred it the other way if he kept [inaudible]? Of course I would have.
[Judge Clay] He didn't say - and where did he say in there he was incorporating the briefs by reference?
[Doug Sprinkle] He didn't say "incorporate by reference." He says, "I've read the briefs," and he -
[Judge Clay] He didn't make any findings of fact or conclusions of law there, is what we're saying.
[Doug Sprinkle] He did not make findings of fact or conclusions of law.
[Judge Clay] And then, in the second injunction, he tried to clean it up by attributing certain findings to the first injunction that weren't there.
[Doug Sprinkle] The second one was certainly a much more detailed decision. It was an amended -
[Judge Clay] Well, the second one had problems with it as well. I'm just saying he tried to amend - somehow refer to - clean up the first injunction in reference to some of the things he said in the second one.
[Doug Sprinkle] I would agree with that.
[Judge Clay] Don't you think we should send it back so he can do his job, which he hasn't done in the first place?
[Doug Sprinkle] Well, I would never tell Judge Zatkoff that, Your Honor.
[Judge Clay] What?
[Doug Sprinkle] I would never tell Judge Zatkoff that. Would I have preferred to find more detailed findings of fact? Sure, of course I would. But I did my work. But I think that everything he needed was, in fact, in front of him, that he looked at it. I think he looked at it the way that anyone would look at it. He said these guys have a registered trademark on a mall.
[Judge Clay] But there's case law in this circuit saying you have to - you're supposed to make findings of fact and conclusions of law properly before you issue something as drastic as equitable relief.
[Doug Sprinkle] Well, certainly, in the amended injunction that he granted there were more findings of fact. It was certainly more detailed, much lengthier. And it was really not a second injunction, it was really an amended injunction. So I think it could legitimately be argued that it certainly relates back.
[Judge Boggs] Was there any effort by either party - I don't know whether - who can invoke it - to use the arbitration procedures of ICANN?
[Doug Sprinkle] There wasn't by us, I know that, Your Honor.
[Judge Boggs] Okay. Is there any reason that you didn't? Wouldn't that have gotten it resolved much more quickly?
[Doug Sprinkle] Um -
[Judge Boggs] If you're claim -
[Doug Sprinkle] I didn't give it any thought, to be quite honest about it.
[Assuming that Mr. Sprinkle really is being quite honest here, he's confessing to representing his
client very poorly.
There are basically two ways in which you can try to recover a domain name that infringes on your trademark. One way is to file a lawsuit, which can wind up costing tens (or hundreds) of thousands of dollars (or more). The other way is to avail yourself of the Uniform Domain-Name Dispute-Resolution Policy (UDRP), the arbitration procedure administered by ICANN (The Internet Corporation for Assigned Names and Numbers) to which Judge Boggs refers, which will typically cost you less than $2,000.
If Mr. Sprinkle had said that he had evaluated the two procedures and had advised his client to sue, I'd question the wisdom of his advice, but far be it from me to tell The Taubman Company how to spend their money. But for Mr. Sprinkle to admit that, "to be quite honest," he never gave any thought to ICANN's arbitration procedure is horrifying. His failure to think about an incredibly common (and quite inexpensive) method of settling exactly this kind of dispute (which is so well known that even Judge Boggs is aware of it - even though, unlike Mr. Sprinkle, he doesn't have the benefit of being a trademark lawyer) may have cost his client untold thousands of dollars. His lack of thought has wasted not only enormous amounts of my time but the resources of the US Court system as well. In fact, a cynic might be tempted to point out that the only people who have benefited from Mr. Sprinkle's thoughtlessness appear to be Mr. Sprinkle and his partners...]
[Judge Boggs] I guess you're in the business of suing, not arbitrating.
[Doug Sprinkle] Well, had we [inaudible] arbitration, Your Honor, [inaudible]
[Judge Boggs] Yeah. Am I right - can we just go back - you've been throwing out this thousand dollars a lot.
[Doug Sprinkle] Yes.
[Judge Boggs] Correct me if I'm wrong. My understanding of the facts is that the website had been in operation for at least a year, maybe nearly two years. You began by making a sort of standard trademark demand letter and ratcheted it up to, you know: "We're going to sue you." It didn't quite say: "You know, you've got a nice business there, shame if you had to litigate against us forever." And then you offered the thousand dollars, right? I mean, so the thousand dollars only came up as your offer as -
[Doug Sprinkle] There were telephone discussions, Your Honor.
[Judge Boggs] Okay.
[Doug Sprinkle] There were telephone discussions between me and my partner, Julie Greenberg, and Mr. Mishkoff.
[This is a false statement. I did engage in a telephone discussion with Ms. Greenberg about the offer
to settle the lawsuit. I do recall speaking with Mr. Sprinkle once or twice, when I called Ms.
Greenberg to ask her to concur in a motion that I was about to file, and my call was routed to Mr.
Sprinkle instead; I told him what I wanted, he refused to concur, and that was the end of the call.
The telephone discussions that Mr. Sprinkle is describing to Judge Boggs simply did not happen.
By the way, although my telephone discussions with Mr. Sprinkle have been considerably more limited than he led the judge to believe, you may recall that he did leave me a surprisingly abrasive voicemail message early in the case, threatening to file a contempt motion against me for violating an order that I had not yet received. For your listening pleasure, that message is online at Act 15 of this website. If you listen to the message, I'm sure you'll agree that it's a shame that the telephone discussions that Mr. Sprinkle described to the judge were imaginary, as conversing with him must be an unforgettable and uniquely rewarding experience.]
[Judge Boggs] Prior to that letter?
[Doug Sprinkle] Yes.
[Despite Mr. Sprinkle's contention, the fact is that, prior to the letter in question, I never spoke
with him or with anyone else at his firm about anything. There were no telephone discussions
of any kind prior to that letter, no telephone discussions with Doug Sprinkle, no telephone
discussions with his partner Julie Greenberg, no telephone discussions with anyone - no
telephone discussions about money, no telephone discussions about any subject whatsoever. Mr.
Sprinkle's answer to Judge Boggs' question is absolutely false.
You may think that this is simply a matter of my word against his - but actually, if Mr. Sprinkle's assertion were accurate, it would be an easy matter for him to prove it. In fact, my attorney suggested to Mr. Sprinkle that he might want to examine his telephone and time records to identify the dates of the alleged telephone discussions - and that if he were unable to provide those records, he might want to consider retracting his statements instead. As of this writing, we have received no records from Mr. Sprinkle (the fact that they don't exist is probably making them difficult to find), so I'm sure that his retraction will be arriving soon...
I can't help but wonder whether Doug Sprinkle's partners - and his client, The Taubman Company - know about his prevarications. If they're aware of the situation and do nothing to correct it, then, as far as I'm concerned, they're every bit as responsible for Mr. Sprinkle's behavior as he is.]
[Judge Boggs] Okay, but that's not directly in the record.
[Doug Sprinkle] That's not directly in the record.
[Judge Boggs] Okay.
[Doug Sprinkle] As far as commercial use, it's been mentioned, there's at least four commercial uses. The Shirtbiz.com. He advertises his website page, that's the WebFeats link at the bottom. If you like this web page, click here and you'll get to his page. He can show you how to - what he can do for you. It says one of the purposes was to sell the website to us for a thousand dollars, for some sum of money, which he's threatened in correspondence to us, that's going to increase as this litigation increases. That's commercial use. It's the Panavision case.
[Judge Boggs] But that's not in the record. I mean, if we're going to make it sort of as an affirmative -
[Doug Sprinkle] Yeah, it is in the record. Sure it is.
[Judge Boggs] I'm sorry. You mean his correspondence making the proposal to you rather than vice-versa?
[Doug Sprinkle] In the judge's decision, Judge Zatkoff said there were negotiations to sell for a thousand dollars. Now whether there was a finding of fact it was his intent when taking out the site to do it, you're right, there is no finding of fact.
[Judge Boggs] Nor that it was at his initiation - that is, the thousand dollar figure.
[Doug Sprinkle] No, there's nothing in the record to show it.
[Judge Boggs] Okay.
[Doug Sprinkle] My time is about up, in case there's any other questions. Thank you, Your Honor.
[Judge Boggs] Okay. Thank you. Two minutes for rebuttal.
Next: Paul Levy's Rebuttal
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