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