Gripe Sites: Trademarks, Domain Names and Free Speech

Sixth Circuit Finds Consumer's Use of Trademarks at Consumer Complaints Site Subject to First Amendment Protection; Metatags Issue Remains Open

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On February 7, 2003, the United States Court of Appeals for the Sixth Circuit found that a "gripe site" devoted to complaints about a shopping center owner was afforded First Amendment protection for its use of trademarks to attract visitors to the website. Taubman Co. v. Webfeats, Nos. 01-2648/2725 (6th Cir. Feb. 7, 2003).

The plaintiff, a large shopping center owner (Taubman), obtained preliminary injunctions against the defendant (Mishkoff) in connection with his registration and use of domains such as <shopsatwillowbendsucks.com> and <taubmansucks.com>, after Mishkoff had originally registered the domain <shopsatwillowbend.com> as a "fan site." Mishkoff was upset by Taubman's efforts to shut down his initial site and to obtain this first Taubman-related domain. Protracted litigation followed, eventually leading to this decision. The history of the litigation is detailed exhaustively from Mishkoff's perspective at http://www.theshopsatwillowbendsucks.com/condensed.html

Taubman argued that Mishkoff was engaged in trademark infringement and sought injunctions against Mishkoff and his domain use and an order transferring the domain registrations to Taubman. Mishkoff's principal arguments were that he was not using Taubman's marks as trademarks (i.e., his uses were not commercial and his First Amendment free speech rights were invaded by the injunctions) and that there was no likelihood of confusion. Taubman was represented in the appeal by Public Citizen Litigation Group, a leading public interest law firm (with whom this author has worked in similar cases, which is noted in the interests of full disclosure), and the American Civil Liberties Union filed an amicus curiae (friend of the court) brief.

The Sixth Circuit dissolved the injunctions, agreeing with Mishkoff in two major respects, (1) that his use of the Taubman marks was noncommercial, non-trademark use and, accordingly, the injunctions constituted prior restraints of his First Amendment rights to freedom of speech and (2) that there was no likelihood of confusion.

By contrast to the decision of another Sixth Circuit panel two days earlier, in PACCAR, Inc. v. TeleScan Technologies L.L.C., No. 00-2183 (6th Cir. Feb. 5, 2003) (discussed by this author in a separate article), the court found Mishkoff's disclaimers to be significant and discussed them in detail, finding that they prevented any likelihood of confusion.

Turning to the First Amendment issues raised by Mishkoff, the court held:

We find that Mishkoff's use of Taubman's mark in the domain name "taubmansucks.com" is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. Such use is not subject to scrutiny under the Lanham Act. In fact, Taubman concedes that Mishkoff is "free to shout 'Taubman Sucks!'  from the rooftops. . . .

" . . . Essentially, this is what he has done in his domain name. The rooftops of our past have evolved into the internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it."

This is a significant ruling and among the first to recognize fully that words that are also trademarks can serve simply to identify businesses, and not only to identify the source of goods or services. Here, there was no use "as a trademark," so there could not be any likelihood of confusion and infringement. A remaining open issue is whether trademarks used as metatags will be afforded the same treatment. There is much in this opinion to suggest that this panel of the Sixth Circuit would treat metatags the same way under the facts of this case, but speculating as to how a court would rule on this or any other issue is largely guesswork.

Businesses with strong marks or domains that are important to their Internet identities should register "sucks" variants of their marks and domain names to keep them out of the hands of disgruntled customers (and competitors). If others have already registered such names, creative and consumerfriendly approaches should be considered to mitigate any resulting damage to the business and its reputation. These cases generally begin with (1) a very upset customer, (2) with lots of time, (3) who considers that insult has been added to injury, and (4) who is very stubborn and resourceful. Businesses should fashion their legal strategies accordingly to prevent further harm to their reputations.

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