UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
|THE TAUBMAN COMPANY
| LIMITED PARTNERSHIP,
||Nos. 01-2648 and 01-2725
|WEBFEATS and HENRY MISHKOFF
MEMORANDUM IN SUPPORT
OF STAY AND EXPEDITED APPEAL
This appeal arises from two preliminary injunctions against two separate web sites. The first site,
posted at www.shopsatwillowbend.com, was a "fan"site where defendant Mishkoff expressed his
appreciation for a shopping mall that plaintiff Taubman was developing near Mishkoff's home. The
second site, using a series of domain names coupling the Taubman and Shops at Willow Bend names with
the word "sucks," such as taubmansucks.com, recounted Mishkoff's experience in defending this lawsuit
and expressed his dismay at what he saw as Taubman's abusive litigation tactics and the difficulties
that he faced as a pro se defendant. The district court issued a preliminary injunction against the
original site on the theory that it would do Mishkoff no harm to be enjoined because he was not making
any profit from the site, and then enjoined the second site as well on the ground that, as a "proven
infringer" of the "Shops at Willow Bend" mark, Mishkoff had lost the right to use Taubman's name to
criticize Taubman on the Internet. Because the latter injunction constitutes a prior restraint in
clear violation of the First Amendment, the Court should stay its effectiveness while expediting
Note: Although Mishkoff is entitled to prevail on his appeal from both injunctions, he seeks a stay
only of the second preliminary injunction.
This motion arises out of a dispute between plaintiff Taubman Company, a Michigan-based developer
of shopping malls, and Henry Mishkoff, a resident of Dallas, Texas. After Taubman announced plans to
develop a mall named "The Shops at Willow Bend" in the Dallas suburb of Plano, Texas, Mishkoff created
a web site about that mall, at which he posted a diagram of the mall and a listing of all the shops in
the mall, and also posted links both to the official mall web site and to the web sites of almost
every store in the mall. Because the site was about the Shops at Willow Bend, he chose a domain name
that reflected his subject, namely, "Shopsatwillowbend.com." Mishkoff's purpose in creating the site
was to provide a service to his community by using the Internet to call attention to a new
neighborhood amenity. Mishkoff Affidavit, ¶¶ 5-6.
Approximately two years after Mishkoff established the web site, Taubman sued him to force him to
take down the site and surrender the site's domain name. In response, Mishkoff registered five
additional domain names, incorporating both Taubman's name and the name of its Texas mall, but
coupling each name with the word "sucks" - taubmansucks.com, willowbendsucks.com,
willowbendmallsucks.com, shopsatwillowbendsucks.com and theshopsatwillowbendsucks.com, but placed no
content on the Internet using those names. Id. ¶ 7. After these names were created,
Taubman sought a preliminary injunction against the maintenance of Mishkoff's original web site about
its mall, and against his use of the domain name shopsatwillowbend.com. Docket No. 3.
While the motion was pending, Mishkoff created a new web site, posted using all five "sucks" domain
names for the same web site, to report on Taubman's threats against him and the ensuing litigation
(for convenience, this new site is identified below as the Taubmansucks site). Mishkoff posted all of
the correspondence about his original web site, as well as all papers filed in this litigation, on the
new site. Mishkoff used the site to express his disgust at the waste of resources that this litigation
represents, as well as to comment on what he considered to be threats and abusive tactics employed by
plaintiff's counsel. The new site was entirely non-commercial, in that there was never any attempt to
market any goods or services on that site. Mishkoff Affidavit ¶ 7.
Note: After the ShopsatWillowBend site was first posted, Mishkoff added a notice of a shirt-selling
business operated by a friend of Mishkoff's. When plaintiff objected to this notice it was removed,
and the "Shops" site was wholly non-commercial at the time of the preliminary injunction. Mishkoff
Affidavit, ¶ 6.
On October 11, 2001, the court issued a preliminary injunction against the original site. Its
explanation for this ruling consisted of a single sentence: "Because defendants are not operating
their website for profit, they are less likely to be harmed by a preliminary injunction." Docket No.
Emboldened by this success, Taubman moved the court to expand its preliminary injunction to include
the "sucks" site as well, although that site focused solely on the issues raised in this litigation.
Taubman did not argue that there was any likelihood of confusion about whether Taubman sponsored this
site. Instead, it argued that, because Mishkoff was guilty of infringement in connection with his
original site, the principle followed in some courts, that a proven infringer must stay a "safe
distance" away from the infringed marks, required Mishkoff to refrain from further use of any of
Taubman's trademarks, even to criticize Taubman's litigation tactics. Taubman also claimed that the
sites contained defamatory statements about the litigation and that, because the site ridiculed its
lawyers' efforts to procure a settlement of the litigation, the site contained "confidential"
information that had to be removed. Accordingly, Taubman sought an expanded preliminary injunction
requiring that the "sucks" site itself be taken down, and not simply that Mishkoff refrain from using
domain names containing Taubman's trademarks. Docket No. 10.
In response, Mishkoff, now supported by Public Citizen as amicus curiae, argued that the First
Amendment protected his right to use Taubman's trademarks to identify the target of his criticisms,
and that in any event the trademark laws have no application to non-commercial uses of trademarks such
as the "sucks" web site. Indeed, as amicus noted, the court's acknowledgment that the original web
site had not been created for purposes of profit supported Mishkoff's defense against the application
of the trademark laws to the names of his web sites. Docket No. 28.
Note: Mishkoff also moved to dismiss for lack of personal jurisdiction. Although this defense, which
the trial court rejected, will be raised on appeal as an additional reason to overturn the preliminary
injunctions, space does not permit its invocation as a basis for a stay pending appeal.
The district court rejected these defenses and expanded the preliminary injunction to bar the new
web site. Although the pending motions did not seek to modify the preliminary injunction against the
original "fan" site, the court began its discussion with a lengthy discussion of reasons supporting
that injunction. Docket No. 40, at 10-13. The court acknowledged that the trademark laws do not apply
to wholly non-commercial web sites, but it denied that its earlier statement about Mishkoff's site not
being run for profit was intended as a finding of fact; rather, the court said, it was simply reciting
Mishkoff's position, not accepting it as a basis for its ruling. Id. 12 n.7. In fact, the court
indicated that the original web site's temporary notice of Mishkoff's friend's shirt business
reflected a potential commercial use, and it was also possible that Mishkoff was trying to inflict
some commercial harm on plaintiff, which was sufficient commercial nexus to warrant coverage by the
trademark laws. Id. 12-13. The inclusion in Mishkoff's web site of links to the web sites of
the stores at plaintiff's mall also had the potential for encouraging viewers to visit the stores' web
sites instead of the mall itself, thus harming the mall commercially. Id. 13 n.8.
Turning to the "sucks" site itself, the court rejected plaintiff's arguments that the web site
contained false or confidential information. However, it found the possibility of commercial use
through the following analysis, id. at 13:
[B]ased on 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" web sites other
than to inflict further economic harm.
... If Defendants created the "sucks.com" websites merely to protest Plaintiff, then their
protest would be protected [by the First Amendment]. But because, without further discovery, it
appears to the Court that Defendants' www.shopsatwillowbend.com web site and its "sucks.com"
websites have a commercial use, the operation of the Lanham Act, at least for purposes of extending
the preliminary injunction, is constitutional under the First Amendment.... (citations
Moreover, the court agreed that the "safe distance" rule justified an expanded preliminary
injunction in precisely the terms that plaintiff had submitted in its proposed order, not only barring
the domain names coupling plaintiff's marks with the word "sucks," but also requiring Mishkoff to
remove the web site itself from the Internet. Id. 14-15.
Note: Because Mishkoff complied with this injunction, this Court cannot, as the trial judge did,
review the web sites online in deciding this appeal. To preserve this evidence for appeal, Mishkoff
copied both of the web sites to a CD and sent it to his counsel, who have duplicated it to give the
Court the opportunity to conduct the de novo review required by the Bose standard. Infra
Mishkoff promptly moved for a stay pending appeal. He pointed out that, under Organization for a
Better Austin v. Keefe, 402 U.S. 415 (1971), the fact that a consumer critic intends to cause
commercial injury to the target of his criticism hardly deprives the criticism of First Amendment
protection or justifies a prior restraint against such criticism. He also noted that his inclusion of
links to stores in his web site could not have shown an effort to injure Taubman commercially by
discouraging viewers from coming to the mall, because Taubman's own web site for the mall also
included links to individual stores' web sites. E.g.
http://shopwillowbend.com/storeDetails.asp?lBusinessID=3331 (copy attached).
The district court denied the stay pending appeal. It stated that viewers might be confused about
whether Taubman itself sponsored the Taubmansucks site "because humor is a common form of
advertising." Stay Order at 3. As for the commercial use issue, "The Court is uncertain as to the
exact nature of the commercial use of Defendant's websites." Id. The court speculated that
"one possible commercial use" would be "if defendants hoped to resell their [original] website," then
the "sucks" web site may have been created to increase the price offered. Id. 3-4. The court
did not find any such purpose, however, and did not acknowledge that even plaintiff had not argued
that defendant was trying to get money for taking down his web sites.
Note: After filing a complaint, Taubman offered to dismiss the case and pay defendant $1000 if he
would surrender his domain names and take down his web site. Mishkoff agreed to give up the names and
the original site, but when plaintiff added the condition that he keep the settlement entirely
confidential, Mishkoff refused, and the talks ended. Docket No. 6, Exhibits L to P.
In effect, the district court was resting its prior restraint against the "sucks" site on a mere
suspicion of commercial purpose, although it did not specify any commercial purpose.