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D. Plaintiffs Expedited Motion to Amend Preliminary Injunction

Plaintiff alleges that Defendants are attempting to divert customers from Plaintiff's shopping mall. To support its position, Plaintiff points to the similarity between the name of Defendants' website and Plaintiff's mark, the contents of Defendants' website, and the website's statement: "You Don't Have to Go to the Mall... We'll Come to You!" Therefore, Plaintiff concludes in its complaint that Defendants conduct constitutes trademark infringement and unfair competition. Plaintiff currently argues that it is clear that Defendants have a stake in a financial gain from the use of Plaintiff's mark. Plaintiff argues that there is no other explanation for Defendants' registration of several domain names that incorporate Plaintiffs mark. Therefore, Plaintiff requests this Court to extend its injunction to include Defendants' five "sucks.com" websites.

In the motion itself, Plaintiff advances two arguments for amending the preliminary injunction: 1) Defendants, through their websites, are uttering defamatory and confidential information, and 2) Defendants, who have been preliminarily found to be infringing upon Plaintiff's mark, have failed to keep a "safe distance" away from Plaintiff's mark. As for the first argument, Plaintiff fails to provide the Court with any facts, let alone any law, to substantiate its claims. Further, after surveying Defendants websites, the Court does not find either any false statement about Plaintiff or its legal counsel, see In re Chmura, 626 N.W.2d 876, 885 (Mich. 2001) (holding that under Michigan law, the first element of defamation is a false statement), or any confidential information. Thus, Plaintiff's first argument is unconvincing.

[I am pleased that the judge found that Taubman's charges that my site was defamatory and that I revealed confidential information were totally without merit. In fact, the judge pointed out that Taubman leveled these serious charges without providing any evidence – and furthermore, he added that he had reviewed my site thoroughly and had determined that the charges were false.

I guess there's a lot I don't understand about our legal system. It amazes me that Taubman's attorneys are free to publish libelous statements about me in public documents, and that a judge can point this out without making any suggestion that he even mildly disapproves of these underhanded tactics.]

Plaintiff's second argument, however, merits much more attention.

In general, once it has been found that a defendant has violated trademark law, the district court has the power to ensure that the injunction is broad enough to keep the defendant "a safe distance away from the dividing line between violation of, and compliance with, the injunction." Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 364 (11th Cir. 1997) (quoting Howard Johnson Co. v. Khimani, 892 F.2d 1512, 1517 (11th Cir. 1990) (quoting Eskay Drugs v. Smith, Kline & French Laboratories, 188 F.2d 430, 432 (5th Cir. 1951)). Though the Court has yet to find that Defendants have violated trademark law, the Court can modify a preliminary injunction to ensure that the purposes of trademark law are not frustrated by Plaintiff's competitors who try to circumvent the preliminary injunction through only a slight modification in the infringing activity. See Sunbeam Products, Inc. v. West Bend Co., 123 F.3d 246, 260 (5th Cir. 1997).

When deciding the preliminary injunction, the Court was working with a limited knowledge of the facts.

Note: The Sixth Circuit uses a four factor test to determine whether a preliminary injunction should issue: 1) the likelihood of success on the merits; 2) the irreparable harm that could result if the injunction did not issue; 3) the impact on the public interest; and 4) the possibility of harm to others. See Forry, Inc. v. Neundorfer, Inc. 837 F.2d 259, 262 (6th Cir. 1988).

What the Court did know was that Defendants registered a website with a name nearly identical to Plaintiff's mark.

Note: Under § 1114 and § 1125 of the Lanham Act, the Sixth Circuit uses an eight factor test to determine the likelihood of confusion. Those factors are: 1) the strength of plaintiff's mark; 2) the relatedness of the goods; 3) the similarity of the marks; 4) the evidence of actual confusion; 5) the marketing channels used; 6) the degree of purchaser care; 7) the defendant's intent in selecting the mark; and 8) the likelihood of expansion in selecting the mark. See Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 280 (6th Cir. 1997). These factors are not to be applied mathematically, but are to be applied to all the facts and circumstances of a case. See id.

Upon examining all of the facts known to the Court in the case, it determined that the marks were very similar, and that Defendants were trying to attract the same set of customers Plaintiff was trying to attract through the same channels - namely, the Internet - that Plaintiff was using. Therefore, there was a high likelihood of confusion.

That Defendants' www.shopsatwillowbend.com website informed visitors that it was an "unofficial site" is not persuasive; due to the website's domain name, it would likely cause initial interest confusion. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1057 (9th Cir. 1999) ("[E]ven where people realize, immediately upon accessing 'moviebuffcom,' that they have reached a site operated by West Coast and wholly unrelated to Brookfield, West Coast will still have gained a customer by appropriating the goodwill that Brookfield has developed in its 'MovieBuff' mark.").

In addition, the website contained a map and pictures of the mall, a list of each store in the mall, as well as hyperlinks to each store's website. Defendants' website also had the phrase, "You Don't Have to Go to the Mall... We'll Come to You!" Further, the Court knew that Defendants had registered a number of "sucks.com" websites that incorporated Plaintiff's trademark. Taken as a whole, the Court reasoned that Defendants may be trying to inflict some type of economic harm unto Plaintiff.

Note: Mere reservation of a particular domain name, such as www.shopsatwillowbend.com, is not sufficient to infringe upon Plaintiff's trademark. There must be some commercial use in order for there to be an infringement upon Plaintiff's trademark. See HQM, Ltd. v. Hatfield, 71 F. Supp. 2d, 500, 507 (D. Md. 1999) ("[N]early every Court to have decided whether mere registration or activation of a domain name constitutes 'commercial use' has rejected such arguments, even when the domain name or names included the .com designation.").

It is true that the Court mentioned in its order granting a preliminary injunction that Defendants were not making a profit off of their website. The Court, however, was only articulating Defendants' position, and the Court did not find that to be an established fact. Furthermore, even if it is true that Defendants did not operate their website for a profit, that does not mean that there is not a commercial use. See, e.g., Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316, 1325 (9th Cir. 1998) (finding that registration of a domain name for the purpose of reselling it at a much higher price is a commercial use).

[In his first injunction, the judge clearly stated that "Defendants are not operating their website for profit." Now he claims that he didn't mean it. Not only is it disheartening to learn that the judge is disputing statements that he himself made in previous decisions, it's discouraging to be put into the position of appealing a decision that is changing even while I'm appealing it.

But it gets worse: The judge acknowledges that I couldn't be infringing Taubman's trademark unless my site had some commercial purpose. (At least, that what he says now; in his next order, I may learn that that's not what he really meant.) This must be why he feels obligated to point out that, even though he did say that my site was not being operated for profit, that's not what he actually meant. I'm really baffled by the judge's insistence that my site had some kind of commercial use, when neither he nor Taubman's lawyers have been able to submit any evidence for that allegation. (They have not been able to submit any evidence for that allegation, by the way, because the allegation is false.)]

See Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F. Supp. 2d 488 (E.D. Va. 1999) (holding that defendant's www.washingtonstpeakers.com domain name was a bad-faith effort to siphon potential customers away from plaintiff, and also holding that it was an infringement upon plaintiffs mark WASHMGTON SPEAKERS BUREAU for lecture agency services); see also McCarthy on Trademarks and Unfair Competition, § 25:76 (4th Ed. 1996 & Supp. 2001). Uncertain as to Defendants' true motives, however, the Court balanced the potential harm that would befall the parties: first, the Court considered the harm that would be suffered by Defendants if the Court enjoined their use of the website even though it may be revealed later that they were not infringing on Plaintiff's trademark; second, the Court considered the potential harm that Plaintiff would suffer if Defendants were not enjoined even though it may become clear later that Defendants were infringing upon Plaintiff's trademark. Because it appeared to the Court that Defendants are likely infringing, the Court reasoned that less harm would be done to Defendants, and therefore issued the injunction.

Assuming that Defendants' www.shopsatwillowbend.com website will be found to have infringed upon Plaintiff's trademark, the Court must now determine whether to amend the preliminary injunction to cover the "sucks.com" websites. At this point, the Court has relatively little information because discovery has yet to be completed. But, based upon the assumption that Defendants are trying to inflict economic harm upon Plaintiff, the Court cannot assume that there is any reason for the existence of the "sucks.com" websites other than to inflict further economic harm.

Note: Defendants claim that they were "fans" of the mall when it first opened, and that they created the www.shopsatwillowbend.com website as a community service. But, the Court is uncertain as to why "fans" of the mall would engage in an activity that would potentially detract customers from the mall. The website's domain name incorporated Plaintiff's mark, contained the "You don't have to go to the mall" phrase, and had hyperlinks to each store's website, thereby making all the stores in the mall accessible to people in their homes. Though Defendants eventually removed the "You don't have to go the mall" phrase, the website's domain name still incorporated Plaintiffs mark, contained a map and pictures of the mall, and had hyperlinks each store's website. Therefore, it would continue to detract customers.
Note: It is for this reason that the Court disagrees with the amicus curiae brief on the First Amendment issue. If Defendants created the "sucks.com" websites merely to protest Plaintiff, then their protest would be protected. See Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998). But because, without further discovery, it appears to the Court that Defendants' www.shopsatwillowbend.com website and its "sucks.com" websites have a commercial use, the operation of the Lanham Act, at least for purposes of expanding the preliminary injunction, is constitutional under the First Amendment. See Central Hudson Gas & Elec. Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980) ("The government may ban forms of [commercial] communication more likely to deceive the public than to inform it...."); see also Semco, Inc. v. Amcast, Inc., 52 F.3d 108, 111 (6th Cir. 1995) ("'Commercial speech' receives much narrower First Amendment protection than other speech, and the Constitution does not protect deceptive or misleading commercial speech.")

[To further justify his conclusion that my site was commercial, the judge dredges up the old "you don't have to go to the mall" phrase, and then adds a curious new argument: The fact that my site contained links to the sites of the stores in the mall is an indication that I was trying to "detract" customers from the mall. This is an argument that Taubman has never advanced, and with good reason: Taubman's own official mall site also contains links to the stores' websites. Following the judge's line of reasoning, Taubman is therefore trying to detract customers from their own mall!

This is an absolutely critical point because, by his own admission, the judge's entire argument falls apart if he cannot demonstrate that my site was commercial in nature. Without commercial content, there would be no trademark violation – and thus, as he points out here, my "sucks.com" websites would be protected by the First Amendment. This is why he says that "it appears to the Court that Defendants' www.shopsatwillowbend.com website and its 'sucks.com' websites have a commercial use." But it's troubling and frustrating to me that, to advance his position, he relies on Taubman's false and totally unsubstantiated claims for which they have submitted no evidence, and on incorrect arguments that Taubman has never advanced but which the judge has created on his own.]

The Court has the authority to ensure that Defendants do not defeat the purposes of trademark law, preventing deception and unfair competition, see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773 (1992), by forcing Defendants to keep a safe distance away from Plaintiff's mark. Using websites that incorporate Plaintiff's mark to disparage Plaintiff would likely be an unfair commercial use within the scope the Lanham Act's protection. See, e.g., Planned Parenthood Federation of America, Inc. v. Bucci, 1997 WL 133313 (S.D.N.Y. 1997) (finding that a website with an otherwise political message was in violation of trademark law because defendant used plaintiff's mark in connection with the advertisement and sale of a book, as well as to disparage plaintiff). Therefore, based upon its current assumption, the Court will expand the preliminary injunction to include Defendants' "sucks.com" websites. Thus, Plaintiff's Expedited Motion to Amend Preliminary Injunction is GRANTED. Accordingly, it is ORDERED:

1. Defendants are hereby RESTRAINED and ENJOINED from using websites on the Internet with the following domain names:

  • www.taubmansucks.com
  • www.willowbendsucks.com
  • www.willowbendmallsucks.com
  • www.shopsatwillowbendsucks.com
  • www.theshopsatwillowbendsucks.com

FURTHER, Defendants are ORDERED to remove the websites with the domain names:

  • www.taubmansucks.com
  • www.willowbendsucks.com
  • www.willowbendmallsucks.com
  • www.shopsatwillowbendsucks.com
  • www.theshopsatwillowbendsucks.com

from the Internet.

[I can't help but wish that the judge had been more precise in his order. Since I'm not sure of exactly what he means, I've had to err on the side of caution (in order to avoid a contempt citation), and I may be unnecessarily crippling my ability to defend myself.

For example, he has "restrained and enjoined" me from using a list of what he calls "domain names," but none of the items on his list are actually domain names, they're URL's (or hostnames). Can I use "TaubmanSucks.com" without the "www"? How about "iThinkThat.TaubmanSucks.com"? He doesn't specifically prohibit me from taking either of those approaches. However, I assume that he meant to prohibit me from doing something like that, so I won't do it.

More to the point: He ordered me "to remove the websites," and I don't know if he meant that I had to stop using those "domain names," or that I had to remove the content of those websites from the Web. Personally, my instincts tell me that he was simply ordering me to stop using those "domain names," and that I would be free to leave the content on the Web under a different domain name. However, that's just what my instincts tell me, I can't be certain – it's entirely possible that I could be cited for contempt if I moved the material to a different domain. I can't afford to take that chance – and so I've removed all of the material, so it is no longer available on the Web.

This is more than simply a minor inconvenience. I put an enormous amount of time and effort into the creation and maintenance of that site – which, by the time I was ordered to remove it, came to nearly 200 pages of material! The information contained in the website was absolutely critical to my ability to defend myself. Because of that site, I have received hundreds of letters of support; people have sent notes to Taubman and their lawyers, taking them to task for unleashing a vicious attack on me for no good reason; I've attracted the attention of law students and attorneys, who have offered me a great deal of valuable advice; I've secured the services of an attorney who is handling my appeal without charging me a fee; I've received inquiries from various media outlets that may publish stories about my situation, which might attract more sorely-needed assistance, and which might shame Taubman into calling off their dogs. (You'd think that they'd have more important things to which to devote their resources, what with their founder and chairman being convicted of price-fixing and having to resign...)

All of these good things have come about solely because I've been able to use the Web to publicize my situation.

And now the judge has forced me to take my site offline.

I'm hopeful that this new site will begin to attract some attention. And I also hope that, like my old site, this new site will help me to sustain a defense against Taubman's vastly superior resources.]

2. This Order shall remain in effect until this matter can be heard on the merits.

Next: Conclusion

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