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B. The Appeal Is Likely to Succeed on the Merits Because the Trademark Laws and the First Amendment Allow Mishkoff to Use Trademarks to Identify the Target of His Criticism.

The appeal from the preliminary injunction against the Taubmansucks.com web site is likely to succeed on the merits because the ruling below is based on a fundamental misconception about the scope of the trademark laws. A trademark's purpose is to identify the source of goods or services used in commerce. A junior user infringes the trademark when he uses it in a way that creates a likelihood of confusing consumers about the source of goods or services: "[T]he general concept underlying likelihood of confusion is that the public believe that 'the mark's owner sponsored or otherwise approved of the use of the trademark.'" Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988), quoting Carson v. Here's Johnny Portable Toilets, 698 F.2d 831, 834 (6th Cir. 1983). On the other hand, the Lanham Act does not bar "the tarnishment impact that can flow from an unfavorable communicative statement about a product or its maker, using the trademark as an identifier of the product or company." 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31:148 (4th ed. 1999) (citing Restatement of the Law: Unfair Competition).

The Taubmansucks website uses Taubman's marks to identify the subject of criticism, but presents no likelihood of confusion about source. When a trademark is coupled with a term of derision like "sucks," the person viewing the domain name (and the underlying web site) is being told, not that the sponsor of the site is the trademark owner, but rather that it is a person who criticizes the mark's owner. If Mishkoff had erected a highway sign in Plano, Texas, bearing the words "Taubman Sucks" in ten foot tall letters, trademark law would not prevent that; similarly, trademark law does not prohibit a web site or a domain name using the same phrase.

Indeed, until the decision below, every decision to consider trademark claims about domain names that coupled a trademark with a word of hostility such as "sucks" had held there to be no infringement or other trademark violation. For example, in Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp.2d 1161 (C.D. Cal. 1998), Faber operated a "ballysucks.com" web site that prominently displayed plaintiff's name and logo for the purpose of criticizing Bally for alleged abuse of consumers. The court found no likelihood of confusion because of the plain statement that the page was "unauthorized" and the superimposition of the word "sucks" over Bally's mark. As a result, "The Court finds that the reasonably prudent user would not mistake Faber's site for Bally's official site," id. at 1164, and "no reasonably prudent Internet user would believe that 'Ballysucks.com' is the official Bally site or is sponsored by Bally." Id. at 1165 n.2. Similarly, in Lucent Technologies v. Lucentsucks.com, 95 F. Supp.2d 528 (E.D. Va. 2000), the court found that the defendant domain name was not confusingly similar to the plaintiff's mark. The court embraced the reasoning in Bally and found no chance of confusion because the word "sucks" plainly signaled that the site was critical of the trademark holder, and not complimentary: "[S]ucks has entered the vernacular as a word loaded with criticism . . .. A successful showing that lucentsucks.com is an effective parody and/or a site for critical commentary would seriously undermine the requisite elements for the causes of action at issue in this case." Id. at 535-536 (citation omitted).

In support of its preliminary injunction, the district court cited Planned Parenthood v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997), aff'd mem., 152 F.3d 920 (2d Cir. 1998), for the proposition that "[u]sing websites that incorporate Plaintiff's mark to disparage Plaintiff would likely be an unfair commercial use within the scope of the Lanham Act's protection." Docket No. 40, at 14. The Bucci case provides no support for the preliminary injunction in this case. Bucci was an anti-abortion activist who registered the name plannedparenthood.com, used the name for a web site whose opening page read, "Welcome to the PLANNED PARENTHOOD HOME PAGE!", and then showed the image of a book, "The Cost of Abortion," which viewers were urged to purchase throughout the web site. Id. 1432-1433. The web site also promoted speaking engagements featuring the author of the book. Only by following several more links did the reader learn that the book was against abortion and that the site was hostile to Planned Parenthood. Id. 1432. Bucci acknowledged that he was using the domain name to try to lure viewers who thought they would be getting information from Planned Parenthood, id. 1433, and that he hoped to aid sales of the book. Id. 1435. The court emphasized the highly misleading nature of both the domain name and the web page in finding a likelihood of confusion. Consequently, the case provides no support for the preliminary injunction here. As the Court can see by reviewing the Taubmansucks web site on the CD attached to this motion, there is not a whit of such deception in this case.

Nor, for that matter, was the district court correct in basing the preliminary injunction against the Taubmansucks site on the "safe distance" rule, which some circuits have used to construe anti-infringement injunctions broadly to prevent a condemned infringer from evading the injunction through minor changes in its infringing activity. Docket No. 40, at 10-11, 14. Each of the cases cited below involved a commercial competitor who, after being held liable for infringement in a final judgment, attempted to make minor changes in its otherwise infringing goods to evade the purpose of the court's judgment. None of the cases involved defendants who, in reaction to being sued, announced that the trademark owners "suck" and coupled those plaintiffs' trademarks with derogatory words to express their hostile opinions. For the purpose of this motion only, appellant does not challenge the preliminary injunction against the original "shopsatwillowbend" web site. However, the "Taubmansucks" web site did not represent a merely minor modification of the old site; it was a completely new site that contained overt criticism of plaintiff, and no rational viewer could be confused about whether Taubman was the sponsor of that site. Indeed, there was never any finding, even on a preliminary basis, of infringement of the "Taubman" mark, yet the Taubmansucks domain name was included in the preliminary injunction, purportedly under the safe distance rule.

Moreover, in invoking the "safe distance" cases, the district court ignored another fundamental rule of trademark law, namely that, even in the commercial context, an injunction should be no broader than necessary to counteract the infringement that has been found under the Lanham Act. As explained above, the court was wrong to say that the Taubmansucks web site contains commercial speech; it was also wrong in its assumption that, once commercial speech is found, the First Amendment no longer has relevance. To the contrary, First Amendment interests are weighed as a factor in deciding whether a trademark violation should be found, e.g., Anheuser-Busch v. Balducci Publications, 28 F.3d 769, 776 (8th Cir. 1994); and injunctions must be narrowly crafted to avoid needless infringement of free speech. Id. at 778; Better Business Bureau v. Medical Directors, 681 F.2d 397, 404-405 (5th Cir. 1982). "Restrictions imposed on deceptive commercial speech can be no broader than reasonably necessary to prevent the deception." FTC v. Brown & Williamson Tobacco Corp., 778 F.2d 35, 43-44 (D.C. Cir. 1985), citing In re RMJ, 455 U.S. 191, 203 (1982); see also Castrol v. Pennzoil, 987 F.2d 939, 949 (3d Cir. 1993).

Even if the court below correctly found that the original "Shopsatwillowbend" web site infringed plaintiff's trademark, a ban on Mishkoff's critical "Taubmansucks" web site, or on his appending critical words to the trademark in order to express his criticism, was by no means necessary to prevent deception. In denying the motion for a stay in the court below, the district court speculated about the possibility that some people might be confused about whether the Taubmansucks domain names were sponsored by Taubman, on the theory that some companies use humor in their advertising. Docket No. 48, at 3. However, the court did not make any finding of likely confusion, and not only would such a finding not be supported by the record, but Taubman did not even request that finding. To the contrary, Taubman rested its motion for an expanded injunction solely on the "safe distance" doctrine. Docket No. 10, at 1-2; Docket No. 22, at 2. Without a finding of likelihood of confusion, the preliminary injunction cannot be sustained.

Moreover, Congress expressly shielded non-commercial and consumer criticism from the coverage of the Lanham Act because it recognized that the purposes of the trademark laws were not served by preventing the use of trademarks to identify the subjects of criticism. Section 43(c)(4) of the Lanham Act, 15 U.S.C. § 1125(c), provides, "The following shall not be actionable under this section: . . . (B) Noncommercial use of the mark (C) All forms of news reporting and news commentary." (emphasis added). The House Judiciary Committee explained that its purpose was to ensure that non-commercial speech would not be affected:

    [T]he proposed change in Section 43(a) should not be read in any way to limit political speech, consumer or editorial comment, parodies, satires, or other constitutionally protected material. . . . The section is narrowly drafted to encompass only clearly false and misleading commercial speech.

    135 Cong. Rec. H1207, H1217 (daily ed., April 13, 1989) (emphasis added).

The purpose of the statute's noncommercial use exception was to protect "'parody, satire, editorial and other forms of expression that are not part of a commercial transaction.'" Dr. Seuss Enterprises v. Penguin Books USA, 924 F. Supp. 1559, 1574 (S.D. Cal. 1996), aff'd, 109 F.3d 1394 (9th Cir. 1997), quoting Congressional Record statement of Senator Hatch.

Similarly, when Congress enacted a cybersquatting law to address the problem of domain names that abuse the rights of trademark holders, it incorporated that law into the Lanham Act as subsection 43(d), 15 U.S.C. § 1125(d), where it is covered by the exclusion of noncommercial and consumer commentary, which applies to everything in "this section." Indeed, Congress included a savings clause explicitly providing that the cybersquatting law would not override either the First Amendment or section 43(c)(4) of the Lanham Act. Public Law 106-113, Section 3008, 113 Stat. 1501A-551. The sponsors of the cybersquatting law specifically disclaimed any intention to provide a cause of action against persons who registered domain names for the purpose of delivering comment or criticisms of trademark owners by identifying the owners with their marks. See House Report 106-412, 106th Cong. 1st Sess. (1999), at 10. The district court's reasoning thus defies Congress' careful efforts to preserve the rights of consumer critics to register domain names for the purpose of criticism.

Particularly egregious is the district court's adoption of the entire proposed order presented by plaintiff, which forbade not only the "sucks" domain names but also enjoined the entire web site, despite the court's recognition that the site's contents were not actionable as containing either false or confidential information. Nevertheless, when, in the motion to stay the injunction pending appeal, Mishkoff pointed out that his injunction required the removal from the Internet of the web site itself, the trial judge expressed some concern about whether one phrase on the first page of the Taubmansucks web site might be confusing to viewers. Even if that were so (and that page, attached to this motion, shows how unlikely that is) the Court should review the entire web site under the Bose Corp. standard of independent review, which is fully applicable even if the Court deems this a case of commercial speech. Peel v. Attorney Reg. and Disciplinary Com'n, 496 U.S. 91, 108 (1990). The web site, which is viewable on the CD that is filed with this motion, makes it indisputable that this is a web site created by an adversary of Taubman and not by Taubman itself. The district court's order requiring that the entire web site be removed from the Internet is a patent example of judicial overreaching that should be stayed by the Court. In fairness to plaintiff, while it is deprived of the benefits of its preliminary injunction, the appeal itself is expedited.


The motion for a stay should be granted, and the appeal should be expedited.

Respectfully submitted,

Paul Alan Levy
Allison M. Zieve

Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000

Attorneys for Appellants

January 15, 2002

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