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C. Because the Websites Are Noncommercial, They Are Not Covered by the Lanham Act and Are Fully Protected by the First Amendment.

Mishkoff's opening brief argued that both of his websites were non-commercial, and that, in light of the statutory requirement that a trademark be "used in commerce" to be considered infringing, the Lanham Act does not apply to either site. He also argued that, regardless of whether the Lanham Act applies, both of his websites are non-commercial speech fully protected by the First Amendment.

In taking issue with these arguments, Taubman invokes two cases: Planned Parenthood v. Bucci, 42 USPQ2d 1430 (SDNY 1997), aff'd mem., 152 F3d 920 (CA2 1998), and United We Stand America v. United We Stand America New York, 128 F3d 86 (CA2 1997). Neither case discusses the language of the statute or its legislative history, and both involved the use of trademarks to raise money and sell goods. See MishBrf. 28-30. Taubman never addresses either the language of the statute or the legislative history cited in Mishkoff's opening brief, and it makes no effort to avoid the distinctions between the two cases and the facts here. Rather, Taubman implies that Mishkoff's argument is wrong because the statutory definition of "commerce," as reaching to the full extent of the commerce clause, has not changed since 1946, and because the Supreme Court took a broad view of the meaning of that term in 1952. TaubBrf 27. This argument is inapposite because Mishkoff's argument is not based on the definition of "commerce" but on the definition of "use in commerce." Not only was that language added to the statute only in 1962, but in 1988 it was defined for the specific purpose of limiting the reach of the Lanham Act to "the ordinary course of trade." See MishBrf. 27-28, citing legislative history.

Additionally, there is a stark contrast between Taubman's assertion that the Lanham Act covers domain names for purely non-commercial websites and its argument about why the First Amendment allegedly does not protect Mishkoff's domain names and websites. In making the latter argument, Taubman quotes LL Bean v. Drake Publishers, 811 F2d 26, 32 (CA1 1987): "The Constitution tolerates an incidental impact on the rights of expression of commercial actors in order to prevent a defendant from unauthorizedly merchandizing his products with another's trademark." TaubBrf. 43 (emphasis added). Taubman cannot have it both ways. It cannot avoid First Amendment scrutiny by limiting trademark to the commercial sphere, and then insist that trademark law applies even to wholly non-commercial websites.

Nor does Taubman's effort to portray the "shops" site as commercial succeed. (Taubman never attempts to show that the "sucks" site is commercial.) The district court gave one reason and one reason only for finding the requisite use in commerce - the possibility that Mishkoff's site could have an adverse effect on Taubman's business because its links to the mall's own tenants might discourage tenants from coming to the mall. But as Mishkoff showed below in his motion for a stay pending appeal, REN42, at 4, JA 190, Taubman's own site also links to tenants, see, e.g., http://shopwillowbend.com/storeDetails.asp?lBusinessID=3331, and, in any event, an adverse effect on the trademark holder does not make criticism commercial. Otherwise, the leaflets attacking the realtor in Organization for a Better Austin v. Keefe, 402 U.S. 415 (1971) would have been commercial, and the doctrine of prior restraints would not have been applicable.

Taubman does not defend the district court's conclusions by rebutting these points; instead, it relies on four separate grounds for finding the site commercial, none of which were argued to or found by the district court, and none of which are valid.

First, Taubman relies on the fact that, at one time, the shops website contained a notice for a custom shirt business run by Mishkoff's girlfriend. As shown by the date in the lower right hand corner of the web page printout attached to the motion for a preliminary injunction, JA 38, compare JA 12, the notice was removed from the site before the motion for a preliminary injunction was filed; hence, it could not form the basis for the preliminary injunction. Second, Taubman falsely but repeatedly asserts that Mishkoff had an advertisement for his own internet business on the "shops" website, which increased the traffic to his home page. There is no advertisement for Mishkoff's business on his site and there is no evidence (or record citation) showing any increase in traffic to Mishkoff's home page. What Taubman is referring to is a small notice at the bottom of the "shops" site stating that the site is provided by defendants as a community service and provides links through which viewers can contact them (see addendum). This self-identification is part of the process of ensuring that no visitors would think that Taubman is the author of the site; moreover, the court can take judicial notice of the fact that the authors or creators of websites are commonly identified at the bottom of the home page, with both a mailto link and a link to their own home page. If mere self-identification by a person who is in business is enough to render a website commercial, then the statutory limitation of the Lanham Act to "use in commerce" is not a real one. Moreover, Semco v. Amcast, 52 F3d 108, 111-114 (CA6 1995), makes clear that the mere fact that an author is identified as a commercial entity is not sufficient to make its use of a trademark "commercial" under the Lanham Act; the contents of the speech must promote a commercial transaction. Third, the fact that the shops site contains links to the mall and to its various tenants, thereby promoting them (in contradistinction to the district court's theory that the links hurt Taubman) does not render the site commercial, else any site about a commercial entity would itself be commercial, which is plainly not so.

Finally, Taubman appears to argue that Mishkoff transformed his site into a commercial enterprise when he accepted Taubman's offer that, if Mishkoff would give up his domain names and website and promise never to publish anything about Taubman in the future, Taubman would drop the lawsuit it had brought against him and pay him $1000 as compensation for his efforts in creating the site. TaubBrf. 28; see also id. 37, 38 (variously characterizing Mishkoff's acceptance of the settlement offer as his "scheme to make a quick $1000" or "making a quick profit"). Although the statement of the chronology is confusing in Taubman's brief, at 8, the correspondence shows that the offer was made after this suit was filed (the letters are on the "sucks" site, not the "shops" site as Taubman's brief states, as well as in exhibits to Mishkoff's opposition to the motion for a preliminary injunction, REN6, JA97-102). Accordingly, the settlement proposals and discussions are inadmissible under Rule 408. Moreover, the evidence does not support Taubman's argument. It shows only Taubman's willingness to buy both the domain names and Mishkoff's silence, and Mishkoff's willingness to give up the names to avoid having to defend a lawsuit. Moreover, the $1000 offer initiated by Taubman falls far short of the sort of exorbitant sums that have been held to constitute cybersquatting. E.g., Panavision Int'l v. Toeppen, 141 F3d 1316 (CA9 1998) (prices beginning at $10,000).

[Note: Nothing in the record supports Taubman's implication, TaubBrf. 37, that Mishkoff's cost for the six domain names and the website was only $70.]

In summary, Taubman's evidence of commercial use of its trademarks falls woefully short; its contentions were neither raised below, nor relied upon by the district court below. Consequently, the injunctions against both sites cannot stand.

Next: No Consumer Would Be Confused

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