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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN
DIVISION
| THE TAUBMAN COMPANY LIMITED |
| PARTNERSHIP, |
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| Plaintiff, | |
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| v. |
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CASE NO. 01-72987 |
| | HON. LAWRENCE P. ZATKOFF |
| WEBFEATS and HENRY MISHKOFF, |
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| Defendants. | |
BRIEF IN SUPPORT OF
DEFENDANTS' RESPONSE TO ORDER TO SHOW CAUSE
Defendants Are Not "Proven" Infringers
In Sunbeam Prods, Inc. v. West Bend Co., 123 F.3d 246 (5th Cir. 1997), the court mentioned
the "safe distance" rule in two paragraphs.
Quoting from Eskay Drugs, Inc. v. Smith, Kline & French Labs., 188 F.2d 430, 432 (5th Cir.
1951), the court in Sunbeam said:
"In such a case as this, where the appellants have been found guilty of infringing the trade-mark
rights of others, they should thereafter be required to keep a safe distance away from the dividing
line between violation of, and compliance with, the injunction." Sunbeam 123 F.3d at
260.
Note that, in this citation, the court specifically characterized the "safe distance" rule as
applying to those who "have been found guilty of infringing the trade-mark rights of others." This
does not describe Defendants, who have never "been found guilty of infringing the trade-mark rights
of others."
The court in Sunbeam continued:
The "safe distance" rule vests broad discretion in the district court, to ensure that the Lanham
Act is not frustrated by manufacturers who seek to circumvent injunctions with subsequent
modifications. Accordingly, the "safe distance" rule permits the court to issue injunctions that
sweep even more broadly than the Lanham Act would permit against a manufacturer who has not already
been found liable for trademark infringement. "[A] competitive business, once convicted of unfair
competition in a given particular, should thereafter be required to keep a safe distance away from
the margin line - even if that requirement involves a handicap as compared with those who have not
disqualified themselves." Chevron, 659 F.2d at 705 (quoting Broderick & Bascom
Rope Co. v. Manoff, 41 F.2d 353, 354 (6th Cir. 1930)). Sunbeam 123 F.3d at
260.
Note that, in this citation, the court specifically characterized the "safe distance" rule as
applying to parties who:
Neither of these characterizations describes Defendants, who have never been found liable or
guilty of anything (trademark-related or otherwise). In fact, as the Court's injunction was not
based on a finding that Plaintiff's case was likely to succeed on its merits, Defendants are not
even probable (much less "proven") infringers. At this time, Defendants, although they have been
accused of infringement, are in no separate legal class from the rest of those parties in the
general population who have not been found liable for trademark infringement, and are therefore not
subject to the requirements of the "safe distance" rule.
Plaintiff relied heavily on Sunbeam (and on Broderick & Bascom Rope Co., which is
referenced in Sunbeam) in its "Expedited Motion to Amend Preliminary Injunction." However, it
is clear that the "safe distance" references in Sunbeam do not apply to Defendants - and that, in
fact, those references exclude Defendants from the class of parties against whom the "safe distance"
rule can be applied.
Defendants Have Not "Slightly" Changed Plaintiff's Mark
Plaintiff's brief states:
As the Sixth Circuit has held, permitting a proven infringer to continue business with a slight
change in its mark, "is to make the decree futile and to disparage the power of the court to give
relief against trade larceny." Broderick & Bascom Rope Co. v. Manoff, 41 F.2d 353, 354, 6
U.S.P.Q. 8 (6th Cir. 1930), cited in 5 McCarthy at §30:21.
Assuming that this is intended as a reference to Defendants (even though they are not "proven
infringer[s]"), this appears to an attempt by Plaintiff to demonstrate that the "safe distance" rule
applies to Defendants. However, the addition of "sucks.com" to a domain name is hardly a "slight
change."
In Bally Total Fitness Holding Corporation v. Andrew S. Faber, 29 F. Supp. 2d 1161
(C.D.Cal., Nov. 23, 1998), the court held:
Bally argues that the marks are identical. Bally argues that the only difference between the
marks is that Faber attached the word "sucks" to Bally's marks. Bally argues that this is a minor
difference.
"Sucks" has entered the vernacular as a word loaded with criticism. Faber has superimposed this
word over Bally's mark. It is impossible to see Bally's mark without seeing the word "sucks."
Therefore, the attachment cannot be considered a minor change. Bally 29 F. Supp. 2d at
1164.
In other words: Adding "sucks.com" to a mark creates a domain name that is more than a "safe
distance" from the mark. Therefore, Defendants are not in violation of the "safe distance"
rule.
Elsewhere in its decision, the court in Bally reinforced the fact that the addition of
"sucks.com" creates a space that is considerably more than a "safe distance" from the mark. For
example:
Faber's site states that it is "unauthorized" and contains the words "Bally sucks." No reasonable
consumer comparing Bally's official web site with Faber's site would assume Faber's site "to come
from the same source, or thought to be affiliated with, connected with, or sponsored by, the
trademark owner." Bally 29 F. Supp. 2d at 1163.
The Court finds that the reasonably prudent user would not mistake Faber's site for Bally's
official site. Bally 29 F. Supp. 2d at 1164.
According to the court in Bally (which Defendants believe to be the only "sucks.com" case
ever decided under the Lanham Act), adding "sucks.com" to a mark "cannot be considered a minor
change." Plaintiff's assertion that the "safe distance" rule should apply in this case because the
change to Plaintiff's mark is "slight" is, therefore, incorrect.
Conclusion
The "safe distance" rule is specifically intended to prevent proven infringers from making slight
changes to marks in an attempt to circumvent injunctions and other orders.
However, Defendants are not proven infringers, and Defendants have not made only a slight change
to the mark.
Therefore, Defendants respectfully request that the Court reject Plaintiff's "Expedited Motion to
Amend Preliminary Injunction."
Respectfully submitted,
Henry Mishkoff
WebFeats
2661 Midway Road, #224-225
Carrollton, TX 75006
972.931.5421
Defendants
Dated: November 1, 2001
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