*** Re: 4/22/02 - Public Citizen: Legal Perils and Legal Rights of Internet Speakers (Part 2 of 2)
Trademark Issues
Exclusion of non-commercial sites
Exception for claims of dilution or cybersquatting:
Lanham Act Section 43(c)(4)(B), 15 U.S.C. § 1125(c)(4)(B)
Cybersquatting Act Savings Clause: Public Law 106-113, Section 3008, 113 STAT.
1501A-551.
Requirement of commercial use also applies to infringement claims, although the argument
is more complex. Colligan v. Activities Club of New York, 442 F.2d 686, 692 (2d Cir. 1971).
Endoscopy-America v. Fiber Tech Medical (4th Cir 02/05/2001) (unpublished opinion at
pacer.ca4.uscourts. gov/ opinion.pdf/001032.U.pdf).
S. Rep. 100-515, 100th Cong.2d Sess. 44 (1988), reprinted in 1988 U.S. Code Cong. Ad.
News 5577, 5607: ("Amendment of the definition of `use in commerce' [in section 45 of the
Lanham Act) is one of the most far-reaching changes the legislation contains. . . . The
committee intends that the revised definition of `use in commerce' be interpreted to mean
commercial use which is typical in a particular industry.").
Trademark laws do apply to non-profits, at least where they are engaged in
fundraising or sales: United We Stand America v. United We Stand America, NY
Chapter, 128 F.3d 86 (2d Cir. 1997)
Many trademark lawyers believe that there is no requirement of commercial use for
infringement. In early case holding that Lanham Act reaches infringement by
company in Mexico that bought parts in US and whose products come back over the
border, the Supreme Court reasoned that Lanham Act's requirement that
infringement be "in commerce" reaches to the full extent of Congress' commerce
power. Steele v. Bulova Watch Co., 344 U.S. 280, 283 (1952). Supreme Court has
never considered impact of the 1988 amendments on its dicta in Bulova.
If trying to use this exception, don't "play games" by trying to raise money through
the web site on the side
Courts are reluctant to find wholly non-commercial use where there is a
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patent use of a trademark in a manner that seems confusing. For example,
sites have been deemed "commercial" where web site helps sell the site
owner's books. Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998);
Planned Parenthood v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997);
Christian Science Board v. Robinson, 123 F. Supp.2d 965 (WDNC 2000),
aff'd No. 00-2029 (4th Cir. 01/09/01). In
PETA v. Doughney case, 113 F.
Supp. 2d 915 (E.D. Va. 2000), aff'd, 263 F.3d 359 (4th Cir. 2001), the site
was commercial because it contained links to commercial meat sellers
apparently unconnected with the web site owner, although, on appeal, the
court was more impressed by the fact that the domain name registrant
dropped broad hints to the effect that all PETA needed to do was pay him off.
Some cases go even further, and say that the impact of the web site on the
business of a target of criticism is enough to make it "in commerce". Bihari
v. Gross, 119 F. Supp.2d 309 (S.D.N.Y. 2000) (this decision went on to find
no violation). But this is plainly inconsistent with the statute. There is
dictum to this effect in a number of decisions, where there actually was
commercial content to site.
A fair argument can be made that allowing banners on a site to get free web space,
or merely linking to commercial sites, does not make the site "commercial". The
safest thing, however, is to eschew all of this.
Relevance of First Amendment even when site is deemed "commercial"
Cases require narrow construction of trademark laws to avoid undue impingement on free speech.
Cliffs Notes v. Bantam Doubleday, 886 F.2d 490, 494 (2d Cir. 1989).
If the plaintiff wins, an injunction has to be as narrow as possible to limit impact on speech.
Anheuser-Busch v. Balducci Publications, 28 F.3d 769, 778 (8th Cir. 1994); Better Business Bureau
v. Medical Directors, 681 F.2d 397, 404-405 (5th Cir. 1982)
Two basic kinds of trademark suits
Infringement:
plaintiff claims that defendant's use of its mark is likely to confuse viewers about
whether the plaintiff is the source of the goods of services
Dilution:
plaintiff claims that the use of its mark will either tarnish the mark by associating it
with shoddy or offensive goods or services (for example, using trademark to identify
a pornography web site), or weaken the mark by making it less distinctive as an
indicator of the plaintiff as the source of the goods (think of how "ketchup" lost its
trademark status)
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Checklist of things to check about a critical web site to minimize threat of infringement suit
basic objective go out of your way to be sure that no one can be confused about whether
the site is pro- or anti- the TM owner
1. Be sure not to use type similar to trademark owner's logo
if you use their logo, consider putting a red slash through it, etc
2. Don't use their colors / color scheme
they might argue "trade dress" infringement; and besides, if you mimic their trade
dress, it could look as if you were trying to confuse viewers
3. Visit your target's web site, and make sure yours doesn't have same look and feel
4. Put something near the top of page to emphasize it is critical.
Using disclaimers of sponsorship is a common way of avoiding confusion
They won't do any good if site is genuinely confusing about sponsorship; but they
can tilt a close case
5. If you get a demand letter, make reference to it on the web page:
"GM has sued to make me take down this page...."
Some recipients of trademark demand letters manage to forestall litigation by making
fun of the trademark holder, and attracting media attention that makes would-be
plaintiff think twice about whether it is worth suing. For one example of this sort of
response, see wired.com;
verizonreallysucks.com.
6. If you mimic target's web site or trade dress, and decide to defend on grounds of
parody, you may well prevail, but you will be in thick of likelihood of confusion or
fair use analysis, which are the expensive cases
Domain name cases
Anticybersquatting Act is Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d)
Directed at problem of those who registered domain names using trademarks as a way of shaking
down trademark holder to get own name back. House Report 106-412, 106th Cong. 1st Sess (1999),
at 5-6. Shakedowns took two forms: (1) register name, offer to sell it to owner or potential rivals,
even threatening to auction name to highest bidder, Virtual Works Inc v. Volkswagen of America,
238 F.3d 264 (4th Cir. 2001); (2) register name, erect site with objectionable content, such as
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pornography, to give trademark owner an especial incentive to buy quickly and at high price, see
Ford Motor Co. v. Lapertosa, 126 F. Supp.2d 463 (ED Mich 2000).
Plaintiff must establish both trademark element, that the domain name is "identical or
confusingly similar to or dilutive of" a mark, section 1125(d)(1)(A)(ii), and a bad purpose,
the "bad faith intent to profit" from the good will that the trademark holder has established
in the mark. 1125(d)(1)(A)(i)
Statute recognizes that mere inclusion of the trademark of another in a domain name does
not constitute objectionable conduct.
Cases upholding "sucks" names:
Lucent Technologies v. Lucentsucks.com, 95 F. Supp.2d 528 (E.D. Va 2000); Bally
Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998)
Cases finding legitimate registration of domain name with nothing more than name
of a different company, because no bad faith: Northland Ins. Cos. v. Blaylock, 115
F. Supp.2d 1108 (D. Minn. 2000); Cello Holdings v. Lawrence-Dahl Companies, 89
F. Supp.2d 464 (S.D.N.Y. 2000)
Some cases finding improper use of company name for hostile sites:
People for the Ethical Treatment of Animals v. Doughney, 113 F. Supp.2d 915 (E.D.
Va. 2000), aff'd, 263 F.3d 359 (4th Cir. 2001) (web site for fictional group calling
itself People Eating Tasty Animals used "peta.org"); Jews for Jesus v. Brodsky, 993
F. Supp. 282 (D.N.J. 1998); Planned Parenthood v. Bucci, 42 U.S.P.Q.2d 1430
(S.D.N.Y. 1997) (anti-abortion group registered plannedparenthood.com; site was
misleading about sponsorship).
Several cases state that domain name causes likelihood of confusion because they
create a misleading "initial interest" even if the viewer eventually learns that the web
site is not sponsored by the mark owner. More recent cases reject that view when
the site owner has a legitimate reason for using the mark, because viewers "are
inured to the false starts" of searching on the Web, and will keep looking if they
don't finnd what they want. Strick Corp. v. Strickland, 162 F. Supp.2d 372, 377,
380 (E.D. Pa. 2001).
Not only is non-commercial criticism, or a fair use, a factor supporting a finding of
no bad faith, section 1125(d)(1)(B)(i)(IV), but the statute's savings clause explicitly
preserves the rule that non-commercial criticism is protected. Public Law 106-113,
Section 3008, 113 STAT. 1501A-551. If, however, after being called for
cybersquatting, the domain name registrant tries to place non-commercial criticism
on the web site in order to seek shelter of this exception, a court may well find this
to be a mere ruse and reject the defense. E & J Gallo Winery v. Spider Webs Ltd,
129 F. Supp.2d 1033 (S.D.Tex 2001), aff'd, - F.3d - (5th Cir. 2002). This all goes
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to the defendant's underlying purpose.
It is worth reading the House and Senate Committee reports, as well as the
Conference Report, because their language makes clear that Congress intended this
Act to be applied fairly narrowly. Some of this legislative history is discussed in
Public Citizen briefs, for example, in Altialia v. Porta (alitaliasucks.com),
citizen.org
Note that claims can also be brought under Lanham Act as well as the Cybersquatting Act.
Be
sure
not to offer the domain name for sale; court may conclude that real purpose was to
shake down the trademark owner.
The line between such a shakedown, and bargaining for the resolution of a
legitimate, pre-existing dispute with the trademark holder, can be a narrow one. At
the least, such bargaining over a domain name may prevent a defendant from getting
a quick dismissal of the case because there is a factual question about his motive.
Northland Ins. Cos. v. Blaylock, 115 F. Supp.2d 1108 (D. Minn. 2000). At worst, the
court may just find a violation.
Trademark lawyers often try to get the defendant talking about money as part of
settling the dispute precisely so that they can later claim that the defendant was after
money all along. In theory, settlement discussions cannot be admitted into evidence,
but trademark lawyers seem to have no shame in trying to do just that. So, watch
out!
Domain name cases can also be litigated in the Uniform Dispute Resolution Procedure
("UDRP"). The advantage: it's much cheaper than court. The disadvantage these are
private procedures, run by organizations biased in favor of trademark holders, and several
studies suggest that the process of selecting panelists and the outcomes of the decisions are
biased in favor of trademark holders who are trying to take away domain names.
The complainant decides whether to invoke UDRP or court; but if a lawsuit is filed
the UDRP will defer.
If the complainant chooses to proceed before a single panelist, the respondent can,
by agreeing to pay a large fee, insist that there be a three-member panel, with each
side choosing one member and then picking the third member by a mutual ranking
process. Using panelist records found at www.udrpinfo.com, it is possible to make
some headway against the institutional pro-complainant bias of the procedure.
Either side can go to court if it loses. Sallen v. Corinthians Licenciamentos LTDA,.
273 F.3d 14 (1st Cir. 2001). Judicial review is de novo (that is, no deference to the
decision of the UDRP). Parisi v. Netlearning, 139 F. Supp.2d 745 (E.D. Va. 2001)
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Despite the sense that the UDRP is stacked against a "gripe site" owner, there are a
great many decisions of that sort that are favorable to the respondent. Dorset Police
and Geery Coulter, eresolution.com;
Mayo Foundation for Education and Research v. Briese, http://www.
arbforum.com/domains/decisions/96765.htm (2001); Bosley Medical Institute v.
Kremer, D2000-1647 (WIPO February 28, 2001),
arbiter.wipo.int; Bridgestone
Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000),
arbiter.wipo.int decisions/html/2000/ d2000- 0190.html; Britannia
Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001)
arbiter.wipo.int.
For a lawyer trying to decide whether to represent a particular prospective defendant,
pushing the complainant into the UDRP is a way to get some "discovery" on the
plaintiff's case.
Meta Tag Cases
Meta tags are a form of HTML code that are not seen on the web page, but which summarize the
page's subject matter; many search engines use meta tags to classify web pages for possible response
to search requests (both identifying pages and ranking them within results)
A number of early cases found trademark violations where name of competitor was hidden
on page to attract customers to rival's site. Brookfield Communications v. West Coast
Entertainment, 174 F.3d 1036 (9th Cir. 1999);
Nettis Env't v. IWI, 46 F.Supp.2d 722
(N.D.Ohio 1999).
Other cases found use of meta tags for critical site was legitimate:
Bihari v. Gross, 119 F. Supp.2d 309 (S.D.N.Y. 2000); Bally Total Fitness Holding Corp. v.
Faber, 29 F. Supp. 2d 1161, 1165 (C.D. Cal. 1998)
Cases allowing use of meta tags by commercial ventures with legitimate interest in
trademark:
Bernina v. Fashion Fabrics, 2001 U.S.Dist LEXIS 1211 (N.D. Ill.); Nissan Motor v. Nissan
Computer, 89 F.Supp.2d 1154, 1162 (C.D.Cal. 2000); Playboy Enterprises v. Welles, 7 F.
Supp. 2d 1098 (S.D. Cal. 1998), aff'd, 162 F.3d 1169 (9th Cir. 1999)
on subsequent appeal,
279 F.3d 796 (9th Cir. 2002).
Interesting law review article on subject of meta tags, proposing a novel solution:
McQuaig, Halve the Baby: an Obvious Solution to the Troubling Use of Trademarks
as Metatags, 18 John Marshall J. Computer & Info. L. 643 (2000)
Public Citizen briefs discussing the meta tags issue in the context of a gripe site:
citizen.org
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citizen.org
Public Citizen amicus brief discussing domain names and meta tags in a commercial
context: citizen.org, discussing appeal
from Paccar v. TeleScan, 115 F. Supp.2d 772 (E.D. Mich. 2000)
Copyright Issues
Some of the most interesting and gripping legal issues relating to the Internet involve copyright, but
these are remote from most gripe sites
sites whose focus is opposing the Digital Millennium Copyright Act, or sites that offer
downloads of copyrighted music or videos, or sites that employ protected software,
obviously face some heavily litigated questions; these are not addressed here
Copyright issues most commonly arise for a gripe site when the site republishes a copyrighted
graphic or text for the purpose of illustrating the site, for pointing up a problem, for commenting or
criticizing or ridiculing the target of the site, or for providing evidence to support something stated
on the site
One way to limit exposure is if the copyright holder (or somebody else) has the material on
a different web site; the gripe site can simply link to the other site, directing the viewer to
that site to view the original.
linking can raise copyright problems, but they are likely to be less severe, and less
likely to produce a finding of liability
There is a good discussion of these issues at the Bitlaw web site:
bitlaw.com
Two major defenses from the trademark context do not apply here
(1) No exception for non-commercial use
the non-commercial character of the use is one factor in analyzing a fair use defense,
29 U.S.C. § 107(1), but it is not the only one or even the most important
note that use by a non-profit group in order to raise money may be treated as a
"commercial" use for these purposes Hustler Magazine v. Moral Majority, 796 F.2d
1148, 1152-1153 (9th Cir. 1986)
the question "is not whether the sole motive of the use is monetary gain but whether
the user stands to profit from exploitation of the copyrighted material without paying
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the customary price." Harper & Row v. Nation Enterprises, 471 U.S. 539, 562
(1985)
(2) The First Amendment does not provide much independent help
The Supreme Court has held that First Amendment concerns are met through the
dichotomy between expression (copyrightable) and ideas )(not copyrightable), and
by the fair use doctrine, and thus need not be considered independently. Harper &
Row v. Nation Enterprises, 471 U.S. 539, 555-560 (1985)
one recent case, however, suggests that fair use principles must be applied with First
Amendment principles in mind. Suntrust Bank v. Houghton Mifflin Co., 268 F.2d
1257, 1265 (11th Cir. 2001)
Republication of copyrighted materials
This is the main concern for the author of a gripe site
Creators of web sites frequently grab elements from other web sites
graphics, text, etc
The fact that material is not registered, or not accompanied by the copyright symbol, does
not mean it cannot protected by copyright
the author can register it later, and get relief for infringement after registration
lack of inclusion of copyright notice makes it easier to invoke the defense of
innocent infringement
copyright forbids more than exact copying substantial similarity is also actionable
Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992)
the safest course is to get permission for anything being copied
and be sure that the person who gave permission has the power to give it
web site operators will frequently give permission for reproduction in return for
credit plus a link
a web site operator has several incentives to get linked:
(1) increased exposure on the linking site
(2) increasing the number of links to a site is a good way to improve
the site's search engine ranking
Obtaining permission to reproduce material from an adversary is more difficult
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this is the common most problem for the gripe site operator
the main defense is fair use under section 107 of the Copyright Act
the statute lists four factors
"(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;"
truly non-commercial work, not done with any expectation of financial gain,
is likely protected
Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973), aff'd
by equally divided Court, 420 U.S. 376 (1975).
but courts find various ways of avoiding the conclusion that a use is truly
non-commercial
Weissman v. Freeman, 868 F.2d 1313, 1324 (2d Cir. 1989)
if use is deemed non-commercial, plaintiff must prove likelihood of
substantial impact on the potential market for the original
Sony Corp v Universal City Studios, 464 U.S. 417, 450-454 (1984)
where copying is needed for reporting or commentary, fair use is liberally
applied
New Era Pub. v. Carol Pub. Group, 904 F.2d 152, 156-157 (2d Cir. 1990);
Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1260-1262 (2d Cir. 1986);
Consumers Union v. General Signal Corp., 724 F.2d 1044, 1050 (2d Cir.
1983)
similarly, copying for purposes of parody tends to warrant a finding of fair
use, but not always
Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).
the scope of fair use is wider when related to an issue of public concern
National Rifle Ass'n v. Handgun Control Fed'n, 15 F.3d 559, 562 (6th Cir. 1994)
"(2) the nature of the copyrighted work;"
unpublished work is much more likely to be protected, unless a very small
portion is copied
Harper & Row v. Nation Enterprises, 471 U.S. 539, 564 (1985); Wright v.
Warner Books, 953 F.2d 731, 738-739 (2d Cir. 1991)
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if original work is factual, rather than fictional, scope of fair use is broader
Diamond v. Am-Law Pub. Corp., 745 F.2d 142, 148 (2d Cir. 1984)
"(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole;"
the less of the whole is copied, the more likely is fair use to be found
but if the most important parts are taken, with major effect on market for the
original, fair use is unlikely
Harper & Row v. Nation Enterprises, 471 U.S. 539, 564-565 (1985)
even copying the whole work can be fair use in appropriate circumstances
Sony Corp v Universal City Studios, 464 U.S. 417, 450-454 (1984)
"(4) the effect of the use upon the potential market for or value of the copyrighted
work."
this is easily the most important of the four factors
Harper & Row v. Nation Enterprises, 471 U.S. 539, 566-567 (1985)
even though the copyright owner may prefer to sue out of antagonism,
criticism by an adversary can increase the market for the original
National Rifle Ass'n v. Handgun Control Fed'n, 15 F.3d 559, 562 (6th Cir. 1994)
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