U.S. Court of Appeals upholds (Anyname)sucks.com sites as Freedom of Speech ------- The Taubman Co. v. Webfeats case ------- February 7, 2003. The U.S. Court of Appeals for the Sixth Circuit has dissolved a preliminary injunction prohibiting a Texas-based website www.taubmansucks.com, holding that the site's non-commercial nature precludes The Taubman Co. from enjoining the site owner's right of free speech. The Taubman Co. v. Webfeats. On October 11, 2001, the U.S. District Court for the Eastern District of Michigan granted Taubman's motion for a preliminary injunction, enjoining the defendants from from using the host name, "shopsatwillowbend.com" because it included reference to Taubman's property "The Shops at Willow Bend" located in Plano, Texas. Taubman had claimed that the site owner violated the real estate company's rights by including its trademark "The Shops at Willow Bend" in the site name. The defendants claimed that their use was non-commercial, and therefore did not violate the Lanham Act. The Sixth Circuit reversed the district court's decision to enjoin the defendants' non-commercial use. In doing so, the court emphasised that the defendants had prominently displayed a disclaimer of any affiliation with the Taubman Co. on the homepage of the offending site, noting that "[Defendants] website and its disclaimer actually serve to re-direct lost customers to Taubman's site that might otherwise be lost." The Court of Appeals also dissolved the lower court's injunction against several "cybergripping" sites established by the defendants in response to Taubman's and its lawyer's conduct during the case. In doing so, the court stated, "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. . . ." ---------------------------------------------------------- oOO ---------------------------------------------------------- CASE HISTORY: The U.S. Court of Appeals for the Sixth Circuit ruled recently that a domain name that adds the word "sucks" to a trademark does not create confusion as to source and therefore the First Amendment protects its use for a complaint website. According to the court, even if the website operator intends to cause economic damage to the trademark holder, a critical commentary site is not a commercial use of the trademark and thus is not subject to the Lanham Act. The defendant, Henry Mishkoff of Carrollton, Texas, owned Webfeats, a website development company. Taubman Co. brought a trademark infringement suit to block Mishkoff's registration and use of an Internet domain name that incorporated a trademark owned by Taubman. Subsequently, Mishkoff registered several more domain names incorporating Taubman trademarks appended with the word "sucks." He used these new domain names in connection with a website that included information about his legal battle with Taubman and editorial commentary about the company. In reversing a district court's preliminary injunctions prohibiting Mishkoff from using the domain names, the court of appeals determined that Mishkoff's use of the domain names would be subject to the Lanham Act only if they were being used in connection with the sale or advertising of goods and services. The court concluded that so long as Mishkoff had removed hyperlinks to his own and his girlfriend's businesses and had not placed any other advertising on the site, it was not a commercial use and it was inappropriate to restrain his speech through a preliminary injunction. The court also said that a prominent disclaimer on the site with a hyperlink to Taubman's actual website prevented any confusion in the marketplace and actually benefitted Taubman by redirecting Internet traffic that would otherwise have been lost. The court also determined that, because the domain names included the word "sucks," there was no possibility of confusion. Furthermore Mishkoff's use of the sites for critical commentary, which was not commercial use, was protected as free speech. ---------------------------------------------------------- oOO ---------------------------------------------------------- http://www.shopsatwillowbendsucks.com/news.html ---------------------------------------------------------- oOO ---------------------------------------------------------- IF YOU ARE INTERESTED IN FREEDOM AND CIVIL RIGHTS ON THE INTERNET, MUCH INFORMATION CAN BE FOUND AT: ELECTRONIC FREEDOM FOUNDATION; AND: GLOBAL INTERNET LIBERTY CAMPAIGN; http://www.gilc.org/speech/ http://www.gilc.org/ ---------------------------------------------------------- oOo ---------------------------------------------------------- |
U.S. Court of Appeals upholds (Anyname)sucks.com sites as Freedom of Speech ------- The Taubman Co. v. Webfeats case ------- February 7, 2003. The U.S. Court of Appeals for the Sixth Circuit has dissolved a preliminary injunction prohibiting a Texas-based website www.taubmansucks.com, holding that the site's non-commercial nature precludes The Taubman Co. from enjoining the site owner's right of free speech. The Taubman Co. v. Webfeats. On October 11, 2001, the U.S. District Court for the Eastern District of Michigan granted Taubman's motion for a preliminary injunction, enjoining the defendants from from using the host name, "shopsatwillowbend.com" because it included reference to Taubman's property "The Shops at Willow Bend" located in Plano, Texas. Taubman had claimed that the site owner violated the real estate company's rights by including its trademark "The Shops at Willow Bend" in the site name. The defendants claimed that their use was non-commercial, and therefore did not violate the Lanham Act. The Sixth Circuit reversed the district court's decision to enjoin the defendants' non-commercial use. In doing so, the court emphasised that the defendants had prominently displayed a disclaimer of any affiliation with the Taubman Co. on the homepage of the offending site, noting that "[Defendants] website and its disclaimer actually serve to re-direct lost customers to Taubman's site that might otherwise be lost." The Court of Appeals also dissolved the lower court's injunction against several "cybergripping" sites established by the defendants in response to Taubman's and its lawyer's conduct during the case. In doing so, the court stated, "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. . . ." ---------------------------------------------------------- oOO ---------------------------------------------------------- CASE HISTORY: The U.S. Court of Appeals for the Sixth Circuit ruled recently that a domain name that adds the word "sucks" to a trademark does not create confusion as to source and therefore the First Amendment protects its use for a complaint website. According to the court, even if the website operator intends to cause economic damage to the trademark holder, a critical commentary site is not a commercial use of the trademark and thus is not subject to the Lanham Act. The defendant, Henry Mishkoff of Carrollton, Texas, owned Webfeats, a website development company. Taubman Co. brought a trademark infringement suit to block Mishkoff's registration and use of an Internet domain name that incorporated a trademark owned by Taubman. Subsequently, Mishkoff registered several more domain names incorporating Taubman trademarks appended with the word "sucks." He used these new domain names in connection with a website that included information about his legal battle with Taubman and editorial commentary about the company. In reversing a district court's preliminary injunctions prohibiting Mishkoff from using the domain names, the court of appeals determined that Mishkoff's use of the domain names would be subject to the Lanham Act only if they were being used in connection with the sale or advertising of goods and services. The court concluded that so long as Mishkoff had removed hyperlinks to his own and his girlfriend's businesses and had not placed any other advertising on the site, it was not a commercial use and it was inappropriate to restrain his speech through a preliminary injunction. The court also said that a prominent disclaimer on the site with a hyperlink to Taubman's actual website prevented any confusion in the marketplace and actually benefitted Taubman by redirecting Internet traffic that would otherwise have been lost. The court also determined that, because the domain names included the word "sucks," there was no possibility of confusion. Furthermore Mishkoff's use of the sites for critical commentary, which was not commercial use, was protected as free speech. ---------------------------------------------------------- oOO ---------------------------------------------------------- http://www.shopsatwillowbendsucks.com/news.html ---------------------------------------------------------- oOO ---------------------------------------------------------- IF YOU ARE INTERESTED IN FREEDOM AND CIVIL RIGHTS ON THE INTERNET, MUCH INFORMATION CAN BE FOUND AT: ELECTRONIC FREEDOM FOUNDATION; AND: GLOBAL INTERNET LIBERTY CAMPAIGN; http://www.gilc.org/speech/ http://www.gilc.org/ ---------------------------------------------------------- oOo ---------------------------------------------------------- |
