Re: 2/7/03 - [Taubman vs. Mishkoff] Opinion of US Court of Appeals for the Sixth Circuit (part 1 of 2)
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2003 FED App. 0043P (6th Cir.)
File Name: 03a0043p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
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The Taubman Company,
Plaintiff-Appellee,
v.
Webfeats, a Texas Company and Henry Mishkoff, an individual,
Defendants-Appellants.
Nos. 01-2648/2725
Appeal from the United States District Court
for the Eastern District of Michigan at Detroit.
No. 01-72987--Lawrence P. Zatkoff, Chief District Judge.
Argued: October 16, 2002
Decided and Filed: February 7, 2003
Before: BOGGS, SUHRHEINRICH, and CLAY, Circuit Judges.
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COUNSEL
ARGUED: Paul A. Levy, PUBLIC CITIZEN LITIGATION GROUP, Washington, D.C., for Appellants.
Douglas W. Sprinkle, GIFFORD, KRASS, GROH, SPRINKLE, ANDERSON & CITKOWSKI, Birmingham, Michigan, for Appellee.
ON BRIEF: Paul A. Levy, PUBLIC CITIZEN LITIGATION GROUP, Washington, D.C., for Appellants. Julie A. Greenberg, GIFFORD, KRASS, GROH, SPRINKLE, ANDERSON & CITKOWSKI, Birmingham, Michigan, for Appellee. Ann Beeson, Kevin S. Bankston, AMERICAN CIVIL LIBERTIES UNION, New York, New York, Michael J. Steinberg, Kary L. Moss, AMERICAN CIVIL LIBERTIES UNION, Detroit, Michigan, for Amicus Curiae.
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OPINION
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SUHRHEINRICH, Circuit Judge. Defendant-Appellant Henry Mishkoff, d/b/a Webfeats, appeals from two preliminary injunctions, respectively entered on October 11, 2001, and December 7, 2001, in the United States District Court for the Eastern District of Michigan, together granting Plaintiff-Appellee the Taubman Company's (Taubman) request to prevent Mishkoff from using six internet domain names because they likely violate Taubman's trademarks in the terms "Taubman," and "The Shops at Willow Bend."
Mishkoff claims two assignments of error. First, he contends that the United States District Court for the Eastern District of Michigan lacked personal jurisdiction over him. Second, he claims that even if jurisdiction was proper, Taubman is unlikely to succeed on the merits of its trademark claims because it has not demonstrated that customers would likely be confused between the origin of Taubman's and Mishkoff's products.
We reverse the decision of the district court and dissolve both injunctions. We find, first, that Mishkoff has waived any challenge he might have to the personal jurisdiction of the district court in the Eastern District of Michigan. Second, Taubman had failed to demonstrate a likelihood of success on the merits because Mishkoff's use was not "in connection with the sale or advertising of goods or services," and there is no likelihood of confusion among consumers.
I. Facts
Mishkoff is a resident of Carrollton, Texas, and a web designer by trade. Upon hearing the news that Taubman, a Delaware corporation with its principal place of business in Michigan, was building a shopping mall called "The Shops at Willow Bend," in Plano, Texas, Mishkoff registered the domain name, "shopsatwillowbend.com," and created an internet website with that address. Mishkoff had no connection to the mall except for the fact that it was being built near his home.
Mishkoff's website featured information about the mall, with a map and links to individual websites of the tenant stores. The site also contained a prominent disclaimer, indicating that Mishkoff's site was unofficial, and a link to Taubman's official site for the mall, found at the addresses "theshopsatwillowbend.com," and "shopwillowbend.com."
Mishkoff describes his site as a "fan site," with no commercial purpose. The site did, however, contain a link to the website of a company run by Mishkoff's girlfriend, Donna Hartley, where she sold custom-made shirts under the name "shirtbiz.com;" and to Mishkoff's site for his web design business, "Webfeats."
When Taubman discovered that Mishkoff had created this site, it demanded he remove it from the internet. Taubman claimed that Mishkoff's use of the domain name "shopsatwillowbend.com" infringed on its registered mark, "The Shops at Willow Bend." Taubman filed a complaint on August 7, 2001, claiming, inter alia, trademark infringement under the Lanham Act, 15 U.S.C. § 1114, asking for a preliminary injunction, and demanding surrender of Mishkoff's domain name.
Mishkoff responsively registered five more domain names: 1) taubmansucks.com; 2) shopsatwillowbendsucks.com; 3) theshopsatwillowbendsucks.com; 4) willowbendmallsucks.com; and 5) willowbendsucks.com. All five of these web names link to the same site, which is a running editorial on Mishkoff's battle with Taubman and its lawyers, and exhaustively documents his proceedings in both the district court and this Court, both through visual scans of filed motions, as well as a first person narrative from Mishkoff. In internet parlance, a web name with a "sucks.com" moniker attached to it is known as a "complaint name," and the process of registering and using such names is known as "cybergriping."(1) See, e.g., Martha Kelley, Is Liabilty Just a Link Away? Trademark Dilution by Tarnishment Under the Federal Trademark Dilution Act of 1995 and Hyperlinks on the World Wide Web, 9 J. Intell. Prop. L. 361, 375 (2002) (defining "cybergriping"); Ronald F. Lopez, Corporate Strategies for Addressing Internet "Complaint" Sites, 14 Int'l L. Practicum 101, 101-02 (Autumn 2001) (giving examples of different types of "complaint" sites).
On October 11, 2001, the district court granted Taubman's motion for a preliminary injunction, enjoining Mishkoff from using the first host name, "shopsatwillowbend.com."(2) On October 15, 2001, Taubman filed a motion to amend the preliminary injunction to include the five "complaint names" used by Mishkoff. On December 7, 2001, the district court allowed the amendment and enjoined Mishkoff from using the complaint names.
On November 9, Mishkoff filed a notice of appeal from the October 11 injunction. On December 10, Mishkoff filed a notice of appeal from the December 7 injunction. Accordingly, each case is timely before this Court under Fed. R. App. P. 4(a)(1)(A). The cases have been consolidated on appeal.
II. Personal Jurisdiction
Mishkoff first claims that the United States District Court for the Eastern District of Michigan lacks personal jurisdiction over him. He asserts that since he is a resident of Texas, the websites were created in Texas, and the mall which is the subject of the websites stands in Texas, a federal court in Michigan cannot exercise jurisdiction over him as a defendant.
Although Mishkoff raises serious doubts in our minds about whether the district court properly held jurisdiction, his motion was ultimately untimely. Although subject-matter jurisdiction can be challenged at any time, Fed. R. Civ. P. 12(h); see also Ambrose v. Welch, 729 F.2d 1084, 1085 (6th Cir. 1984), even collaterally after disposition, see Fed. R. App. P. 60(b)(4), a challenge to personal jurisdiction must be raised in the first responsive pleading or be waived. Fed. R. Civ. P. 12(h)(1); see, e.g., Reynolds v. Int'l Amateur Athletic Fed'n, 23 F.3d 1110, 1120 (6th Cir. 1994); In Re Wolverine Radio Co., 930 F.2d 1132, 1137 n.5 (6th Cir. 1991). Mishkoff did not raise the issue of personal jurisdiction in his original answer.
Mishkoff asks this court for leeway, in light of the fact that he was originally litigating this case pro se. Unfortunately, as the district court stated, there is no legal basis for so doing. This is not to say that this Court will never grant leeway to a pro se party, but Mishkoff has not presented the kind of extraordinary circumstances that would warrant such action. Accordingly, we find that Mishkoff has waived any challenge to personal jurisdiction.
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