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UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN
DIVISION
| THE TAUBMAN COMPANY |
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| LIMITED PARTNERSHIP, |
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Civil Action No. 01-72987 |
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District Judge Zatkoff |
| WEBFEATS AND |
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Magistrate Judge Komives |
| HENRY MISHKOFF, |
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MEMORANDUM IN SUPPORT OF
MOTION FOR STAY PENDING APPEAL
On December 7, 2001, the Court issued a preliminary injunction that barred defendants "from
using the websites on the Internet with the following domain names: www.taubmansucks.com,
www.willowbendsucks.com, www.willowbendmallsucks.com, www.shopsatwillowbendsucks.com
and www.theshopsatwillowbendsucks.com" and ordered them "to remove the websites with the
[same] domain names." Defendant has appealed from that decision, on the ground that the injunction
constitutes a prior restraint, issued without personal jurisdiction, and therefore violates the First
Amendment as well as being contrary to the Lanham Act.
PROCEEDINGS TO DATE
This case arises from a complaint filed against the pro se defendant Henry Mishkoff and
his unincorporated business name, Webfeats, seeking injunctive relief and damages based on a web
site, "shopsatwillowbend.com" (here described as the "original" site), that Mishkoff had established
to describe a mall that had been erected in his neighborhood.
At the time this case was filed, there was a notice on the site advising viewers that they
could buy shirts from Mishkoff's girlfriend. Because plaintiffs argued in their preliminary injunction
papers that this notice constituted a commercial use that showed bad intent on defendants' part,
Mishkoff immediately removed this notice from the web site and promptly advised the Court of that
fact. Thus, at the time the preliminary injunction came on for decision before the Court, the site was
entirely non-commercial. The Court apparently recognized that fact because, although it granted the
preliminary injunction, its explanation was that, because the defendants were not trying to profit from
their web site, it could do them no harm to enjoin them from maintaining it.
At the time the Court ruled on the motion for a preliminary injunction, defendant had
already created a web site recounting his experiences in this litigation, using several different domain
names that incorporated the plaintiff's "Taubman" and "Shops at Willow Bend" trademarks and
added the word "sucks" to show his displeasure with them (here described as the "sucks.com" sites).
Heartened by its victory on the original preliminary injunction, plaintiff moved the court to expand
that injunction. Plaintiff did not argue that there was any danger that any consumer could be
confused about whether these sites were sponsored by Taubman or by the owner of The Shops at
Willow Bend. However, it argued that because defendants had been condemned as infringers,
plaintiff was entitled under what it called the "safe distance" rule to obtain extra protection from use
of its trademarks, beyond that which the Lanham Act might otherwise afford them. However,
plaintiff did not take issue with the Court's original finding that, as modified, Mishkoff's site was not
maintained for the purpose of profit.
In response to this motion, Mishkoff argued that the safe distance rule did not apply to his
circumstances. At the same time, he moved to dismiss the complaint for lack of jurisdiction, citing
the unanimous view of federal courts around the country that the creating of a non-interactive web
site, whether or not commercial in nature, is not a proper basis for exercising personal jurisdiction
at any location in the country where an Internet site can be viewed. In addition, Mishkoff's position
was supported by Public Citizen as amicus curiae, which argued that the "sucks.com" sites did not
violate the Lanham Act, and that a preliminary injunction against the use of these domain names
would violate the First Amendment.
GROUNDS FOR A STAY
Balancing the Equities
The Court's preliminary injunction is a prior restraint on speech protected by the First
Amendment, and therefore is causing immediate and severe irreparable injury to the defendants, that
cannot be justified by the merely commercial interests of the plaintiff.
The Court ofAppeals has been clear and unequivocal in its condemnation of the issuance
of prior restraints absent the most compelling circumstances. Procter & Gamble Co. v. Bankers
Trust Co., 78 F.3d 219, 225 (6th Cir. 1996). The concern that the subject of Mishkoff's web site
might suffer some commercial injury scarcely qualifies - in fact, "private litigants'... commercial
self-interest" was rejected as a basis for a prior restraint in Bankers Trust. Id. The fact that the
possible injury would come from having its conduct of this litigation described on the Internet, in
terms that the Court has acknowledged are truthful, scarcely increases the compelling nature of the
interest supporting the Court's preliminary injunction.
Similarly, in Organization for a Better Austin v. Keefe, 402 U.S. 415 (1971), the Supreme
Court held that an injunction forbidding a community group from distributing leaflets criticizing a
local real estate company was an impermissible prior restraint. "No prior decisions support the claim
that the interest of an individual in being free from public criticism of his business practices in
pamphlets or leaflets warrants the use of the injunctive power of a court." Id at 419. Similarly, the
use of the Court's injunctive powers to prevent defendants from discussing on the Internet his views
concerning the plaintiff's abuse of the judicial process flies in the face of settled law and should be
stayed immediately.
Also relating to the extent of the injuries on both sides in this case is the Court's newly
explained reasons for having enjoined the maintenance of the original site. The Court explained that,
even though the notice concerning Mishkoff's girlfriend's shirt-selling business had been removed
even before the first injunction was granted, the required commercial nexus continued because the
original site carried links to the web sites of the various stores at the mall; the Court expressed
concern that these links might detract from the business attracted to the mall itself. This argument
had never been advanced by plaintiff, presumably because plaintiff's own web site contains links to
the web sites of many of the stores at its mall; the same is true for the web sites of other malls owned
and operated by the plaintiff. E.g., http://www.shoptwelveoaks.com/. And, in any event, the links
on the original site do not appear anywhere on the "sucks.com" web site; accordingly, the restraint
is not justified against sucks.com even on the Court's theory. In addition, consistent with its new
focus on the site's supposed commercial focus, the Court disclaimed its original finding with respect
to the site's non-profit status, on the theory that the Court was just reciting defendant's position and
not explaining its reasons for issuing the preliminary injunction. However, as explained above,
commercial injury does not supply a ground for issuing a preliminary injunction against consumer
criticism.
Likelihood of Success on the Merits
In addition, the Court's rulings pertaining to the likelihood of success on the merits are
open to serious question, and in light of the fact that the balance of irreparable injuries tips so
decidedly in favor of the defendants, that is sufficient to warrant issuance of the stay. Defendants
recognize that the Court has ruled against them on the merits of these issues, and do not desire to
belabor a merits point that the Court has already rejected. However, in the interest of being fair to
the Court before taking the issue of the preliminary restraint to the Sixth Circuit, we offer this
summary of our arguments:
The Court rejected the motion to dismiss for lack of jurisdiction both on the merits and
on the ground that this defense was waived when a motion to dismiss for lack of venue was filed
without joining the ground of lack of jurisdiction. However, the Court failed to give any
consideration to the sliding scale between purely passive and highly interactive commercial web sites
that every federal court in the country has treated as determinative on the issue of personal
jurisdiction over the operators of web sites. The Court's waiver ruling ignored both defendant's
request to amend his motion to change venue to include the defense of personal jurisdiction, and the
fact that, before filing a motion to dismiss, defendant answered the complaint and denied the
jurisdictional allegations in the complaint, thus preserving from waiver the defense of lack of
jurisdiction. In this regard, although the denial of a motion to dismiss is not appealable, lack of
personal jurisdiction, like lack of venue, is a proper ground for appeal from a preliminary injunction.
Land-o-Nod Co. v. Bassett Furn. Indus., 708 F.2d 1338 (8th Cir. 1983).
The Court granted the expanded preliminary injunction on the ground that its suspicions
about Mishkoff's "trying to inflict economic harm upon Plaintiff" supplies both the necessary
commercial nexus to invoke the Lanham Act, and transforms his criticism into "commercial speech"
and thus lessens Mishkoff's First Amendment protection. Neither portion of this decision can
withstand scrutiny.
The use of a trademark to denominate the target of criticism is not a violation of
the Lanham Act, even if the impetus is to harm the trademark owner commercially. If the
mere fact that consumer criticism could harm the target commercially were sufficient to make
the trademark use commercial, then Congress' express decision to exempt non-commercial
uses from coverage of the Lanham Act, for the precise reason that the First Amendment
protects such use, would be rendered nugatory.
Nor does the fact that criticism of a commercial entity can hurt that entity render
the speech "commercial" under the First Amendment. This can easily be seen from the Sixth
Circuit decision cited by the Court, Semco v. Amcast, 52 F.3d 108 (6th Cir. 1995). If the mere
fact that Amcast was an economic rival of Semco were sufficient to deprive its discussion of
the technical details of Amcast's product of the full protection of the First Amendment, there
would have been no need for a lengthy discussion of the facts of that case to decide that its
scientific articles constituted "commercial speech" that could be actionable under the Lanham
Act. In Semco the literature actually contained commercial promotion, and the question was
whether, on balance considering all the facts, the materials were commercial or
non-commercial speech. Here, there is no contention that the sucks.com site has any commercial
content.
The Court further erred because it enjoined use of the "sucks.com" sites without making
any finding that these sites had any potential to confuse anybody about who sponsors them. There
is no infringement without a likelihood of confusion. Nor do the new domain names represent "a
slight modification in the infringing activity," or an effort "to circumvent the preliminary injunction."
The Court's reasoning appears to suggest that there is nothing about the contents of the
sucks.com web sites that was itself actionable, but that the expanded preliminary injunction is justified
only because plaintiff's trademarks were part of the domain names.
[Note: The Court's opinion, at page 10, reflects that it surveyed the web sites in making its
determination. Because the Court has ordered that the sites be removed, the site is no longer
available on the Internet for the Sixth Circuit to be able to review as well. Accordingly, we are
attaching to this memorandum a complete set of the "sucks.com" web site as it was printed on
November 8. Subsequent parts of the site posted to the site through early December were
downloaded to Public Citizen's computers, and are also included in this set. Once defendant returns
to Texas from his vacation, the entire site will be filed in electronic format to permit easy viewing in
a format resembling that which the Court has enjoined.]
However, its preliminary
injunction was not worded so narrowly. Instead of simply enjoining defendants from using specified
domain names, the injunction by its terms enjoins defendants from "using websites on the Internet
with the following domain names," and ordered defendants "to remove the websites with the domain
names [listed]" from the Internet. Because it was so broadly written, ordering elimination of
"websites" and not simply non-use of domain names, defendants were prevented from transferring
the sites to a new domain name, but had to remove the entire contents from the Internet. In the event
the Court did, in fact, intend the narrower ruling, it is suggested that its order be rewritten to require
only that defendants refrain from using specified domain names without imposing any limit on what
may be placed on the Internet using other domain names.
CONCLUSION
The motion for a stay pending appeal should be granted.
Respectfully submitted,
Henry Mishkoff
WebFeats
2661 Midway Road, #224-225
Carrollton, Texas 75006
(972)931-5421
Pro se
December 12, 2001
[Note: Mishkoff acknowledges the substantial assistance in preparing and submitting these papers
received from Paul Alan Levy, Esquire, who will be representing him in the Court of Appeals.
Because Mishkoff is on vacation, he is unable to submit the papers himself.]
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