United States Court of Appeals,
Sixth Circuit.
The TAUBMAN COMPANY, Plaintiff-Appellee,
v.
WEBFEATS, a Texas Company and Henry Mishkoff, an individual,
Defendants-
Appellants.
Nos. 01-2648, 01-2725.
Argued: Oct. 16, 2002.
Decided and Filed: Feb. 7,
2003.
Shopping mall owner brought trademark infringement
action against Internet domain name registrant. The United States District
Court for the Eastern District of Michigan, Lawrence P. Zatkoff, Chief Judge,
granted preliminary injunction, and registrant appealed. The Court of Appeals,
Suhrheinrich, Circuit Judge, held that: (1) defendant's use of domain name was
not commercial; (2) even if it was commercial there was no risk of consumer
confusion as to source; and (3) defendant's other cybergriping sites created no
potential for confusion as to source.
Reversed.
West Headnotes
[1] Federal Courts 
95
Although
subject-matter jurisdiction can be challenged at any time, even collaterally
after disposition, challenge to personal jurisdiction must be raised in first
responsive pleading or be waived. Fed.Rules
Civ.Proc.Rules 12(h), 60(b)(4),
28 U.S.C.A.
[2] Trade Regulation 
545
Absent
extraordinary circumstances, non-resident trademark infringement defendant
waived any objection to court's personal jurisdiction by failing to raise issue
in his original, pro se answer. Fed.Rules
Civ.Proc.Rule 12(h), 28 U.S.C.A.
[3] Federal Courts 
815
District
court's grant of motion for preliminary injunction is reviewed for abuse of
discretion.
[4] Trade Regulation 
620
Preliminary
injunction is proper in trademark cases where: (1) there is likelihood of
success on merits; (2) there is potential for irreparable harm; (3) there is
potential of adverse public impact; and (4) potential harm to plaintiff
outweighs potential harm to defendant.
[5] Trade Regulation 
134
Lanham Act
does not infringe on First Amendment free speech rights because it only
regulates commercial speech, which is entitled to reduced protection. U.S.C.A.
Const.Amend. 1; Lanham Trade-Mark Act, § 1 et seq., 15
U.S.C.A. § 1051 et seq.
[6] Trade
Regulation 
136
Lanham Act
is strict liability statute; if consumers are confused by infringing mark,
offender's motives are largely irrelevant.
Lanham Trade-Mark Act, § 1 et
seq., 15
U.S.C.A. § 1051 et seq.
[7] Trade Regulation 
620
Preliminary
injunction is proper only to prevent on-going violation of Lanham Act. Lanham Trade-Mark Act, § 1 et seq., 15
U.S.C.A. § 1051 et seq.
[8] Trade Regulation 
350.1
Nearby
resident's use of shopping mall's trademarked name as domain name for website
about mall was not "commercial," and thus not violative of Lanham
Act, absent showing that website was being used in connection with sale of
goods; no goods were sold on website, and there were no advertisements for
sellers of goods. Lanham Trade-Mark
Act, § 32, 15
U.S.C.A. § 1114.
[9] Trade Regulation 
350.1
Website
operator's negotiations with trademark owner over sale of allegedly infringing
domain name did not, without more, qualify operator's use of mark as
"commercial," within meaning of Lanham Act; there was no evidence
operator made habit and business of such practice, or that his initial intent
in selecting mark was to re-sell name.
Lanham Trade-Mark Act, § 32, 15
U.S.C.A. § 1114.
[10] Trade Regulation 
350.1
Even if
nearby resident's use of shopping mall's trademarked name as domain name for
website about mall was commercial, there was no Lanham Act violation, absent
showing of likelihood of consumer confusion as to origin of parties' respective
products; website contained conspicuous disclaimer indicating that it was not
mall's official website, and provided hyperlink to official site. Lanham
Trade-Mark Act, § 32, 15
U.S.C.A. § 1114.
[11] Trade
Regulation 
350.1
Cybergriping
sites, with domain names formed by attaching trademarks to "sucks.com," created no potential
for confusion as to source, and thus were not violative of Lanham Act; rather,
use of non-misleading names was protected free speech. U.S.C.A.
Const.Amend. 1; Lanham Trade-Mark Act, § 32, 15
U.S.C.A. § 1114.
[12] Trade Regulation 
375.1
"Safe
distance rule," potentially applicable when trademark infringer
subsequently uses different name for same product, does not apply when second
use is non-commercial critical commentary.
*771
Douglas W. Sprinkle (argued), Julie
A. Greenberg (briefed), Gifford, Krass, Groh,
Sprinkle, Anderson & Citkowski, Birmingham, MI, for Plaintiff-Appellee.
Paul A. Levy (argued and briefed), Public
Citizen Litigation Group, Washington, DC, Webfeats, Carrollton, TX, Henry
Mishkoff, Carrollton, TX, for Defendants-Appellants.
Ann Beeson (briefed), American Civil Liberties Union Foundation,
Reproductive Freedom Project, New York, NY, Michael
J. Steinberg (briefed), Kary L. Moss (briefed),
American Civil Liberties Union Fund of Michigan, Detroit, MI, Kevin S. Bankston
(briefed), ACLU Immigration Rights Project, New York, NY, for Amicus Curiae.
Before:
BOGGS, SUHRHEINRICH and CLAY, Circuit Judges.
OPINION
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 *772 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." [FN1] See, e.g.,
Martha Kelley, Is *773Liabilty
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).
FN1. Since the
issuance of the injunctions, Mishkoff has apparently created a sixth
"complaint site," "giffordkrassgrohsprinklesucks.com,"
referencing the law firm representing Taubman on appeal. This domain name was not a part of the December
7, 2001 preliminary injunction order that enjoined Mishkoff from maintaining
the other "complaint names."
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." [FN2] 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.
FN2. Taubman sought
the injunction under other claims too, including violation of the
Anticybersquatting Act. However, the district court granted the injunction
based only on the Lanham Act claim.
Accordingly, that is the only issue before this Court.
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.
[1] 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.Civ. 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.
[2] 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.
III. Analysis
Mishkoff claims the injunctions preventing
his use of the domain name
"shopsatwillowbend.com" and the five "complaint
names" are inappropriate because Taubman has not demonstrated a likelihood
of success on the merits and because the orders represent a prior restraint on
his First Amendment right to speak.
*774 A.
Standard of Review
[3] We review the district court's grant of a motion for a
preliminary injunction for abuse of
discretion. Marchwinski
v. Howard,
309 F.3d 330, 333 (6th Cir.2002); Blue
Cross & Blue Shield Mut. of Ohio v. Blue Cross & Blue Shield Ass'n,
110 F.3d 318, 322 (6th Cir.1997). "A district court abuses its discretion
when it relies on clearly erroneous findings of fact ... or when it improperly
applies the law or uses an erroneous legal standard. Under this standard, this court must review the district court's
legal conclusions de novo and its factual findings for clear error." Owner-Operator
Indep. Drivers Ass'n v. Bissell,
210 F.3d 595, 597 (6th Cir.2000).
[4] We have held that an injunction is proper in trademark
cases where:
1) There is a likelihood of success on the merits;
2) There is the potential for irreparable harm;
3) There is the potential of adverse public impact;
4) Potential harm to the plaintiff outweighs the potential
harm to the defendant.
See Rock
and Roll Hall of Fame and Museum Inc. v. Gentile Prods.,
134 F.3d 749, 753 (6th Cir.1998). None of these factors, standing alone, is a
prerequisite to relief; rather, they
must be balanced. Golden
v. Kelsey- Hayes Co.,
73 F.3d 648, 653 (6th Cir.1996); see also County
Sec. Agency v. Ohio Dep't of Commerce,
296 F.3d 477, 485 (6th Cir.2002).
B. Propriety of the Injunctions
1. Likelihood of Success on the Merits
The likelihood of success of Taubman's claim rests with the
language of the Lanham Act, 15
U.S.C. § 1114(1), which imposes liability for infringement of trademarks
on:
Any person who shall, without the consent of the registrant
a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the sale, offering
for sale, distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive ....
[5] Mishkoff proposes that, regardless of whether his use of
Taubman's marks violates the Lanham Act, any injunction prohibiting his use
violates the Constitution as a prior restraint on his First Amendment right of
Free Speech. Since Mishkoff has raised Free Speech concerns, we will first
explain the interrelation between the First Amendment and the Lanham Act.
First, this Court has held that the Lanham Act is constitutional. Semco,
Inc. v. Amcast, Inc.,
52 F.3d 108, 111-12 (6th Cir.1995) (stating that
reach of Lanham Act is limited so as to be constitutional); see also Seven-Up
v. Coca-Cola Co.,
86 F.3d 1379, 1383 n. 6 (5th Cir.1996). The Lanham Act is constitutional because it
only regulates commercial speech, which is entitled to reduced protections
under the First Amendment. Central
Hudson Gas & Elec. Corp. v. Public Serv. Comm'n of New York,
447 U.S. 557, 563, 100 S.Ct. 2343, 65 L.Ed.2d 341
(1980) (stating that regulation of commercial speech is subject
only to intermediate scrutiny). Thus,
we must first determine if Mishkoff's use is commercial and therefore within
the jurisdiction of the Lanham Act, worthy of lesser First Amendment
protections.
If Mishkoff's use is commercial, then, and
only then, do we analyze his use for a likelihood of confusion. If Mishkoff's use is also confusing, then it
is misleading commercial speech, and outside the First *775 Amendment. See
134 Cong. Rec. 31, 851 (Oct. 19, 1988) (statement of Rep. Kastenmeier) (stating
that § 43 of the Lanham Act only
affects misleading commercial speech); cf. Va.
Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc.,
425 U.S. 748, 771 & n. 24, 96 S.Ct. 1817, 48 L.Ed.2d 346 (1976) (stating that misleading commercial speech is not
protected by the First Amendment); Bonito
Boats, Inc. v. Thunder Craft Boats, Inc.,
489 U.S. 141, 157, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989) (stating that a trademark owner has at best a
quasi-property right in his mark, and can only prevent its use so as to
maintain a confusion-free purchasing public) (quoting Crescent
Tool Co. v. Kilborn & Bishop Co.,
247 F. 299, 301(2d Cir.1917) (L.Hand, J.)).
Hence, as per the language of the Lanham Act,
any expression embodying the use of a mark not "in connection with the
sale ... or advertising of any goods or services," and not likely to cause
confusion, is outside the jurisdiction of the Lanham Act and necessarily
protected by the First Amendment.
Accordingly, we need not analyze
Mishkoff's constitutional defenses independent of our Lanham Act analysis. With this backdrop in mind, we proceed to
analyze the nature of the two websites.
a. November 9 Injunction--The "shopsatwillowbend"
Website
In regard to the first website,
"shopsatwillowbend.com," Mishkoff argues that his use is completely
non-commercial and not confusing, and therefore speech entitled to the full
protections of the First Amendment.
Taubman offers three arguments that Mishkoff is using its name
commercially to sell or advertise goods or services. First, Mishkoff had a link to a site owned by Hartley's blouse
company, "shirtbiz.com." Second, he had a link to his own site for
his web design company, Webfeats. Third,
Mishkoff had accepted a $1000 offer to relinquish the name to Taubman.
[6] Although Mishkoff claims his intention in creating his
website was non- commercial, the proper inquiry is not one of intent. Daddy's
Junky Music Stores, Inc. v. Big Daddy's Family Music Center,
109 F.3d 275, 287 (6th Cir.1997). In that sense, the Lanham Act is a strict
liability statute. See éHard
Rock Caf Licensing Corp. v. Concession Servs., Inc.,
955 F.2d 1143, 1152 n. 6 (7th Cir.1992). If consumers are confused by an infringing
mark, the offender's motives are largely irrelevant. Wynn
Oil Co. v. Thomas,
839 F.2d 1183, 1188 (6th Cir.1988) (citing Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,
799 F.2d 867, 875 (2d Cir.1986)). We believe the advertisements on Mishkoff's site, though extremely minimal,
constituted his use of Taubman's mark "in connection with the
advertising" of the goods sold by the advertisers. This is precisely what the Lanham Act
prohibits.
[7][8] However, Mishkoff had at least removed the shirtbiz.com
link prior to the injunction. A
preliminary injunction is proper only to prevent an on-going violation. See, e.g. Hecht
Co. v. Bowles,
321 U.S. 321, 329-30, 64 S.Ct. 587, 88 L.Ed. 754 (1944) (recounting the historical role of courts of equity and
stating that purpose of injunctive relief is "to deter, not to
punish"). As long as Mishkoff has
no commercial links on either of his websites, including links to shirtbiz.com,
Webfeats, or any other business, we find no use "in connection with the
advertising" of goods and services to enjoin, and the Lanham Act cannot be
properly invoked. [FN3]
FN3. Mishkoff sent a
letter to Taubaman's attorneys on August 10, 2001, referencing the removal of
the shirtbiz.com link, and declaring that Mishkoff "will not place any
advertising of any kind on the site in the future." It is unclear whether Mishkoff also removed
the Webfeats link at this time. To be
clear, we also find the Webfeats link to be "use in connection with the
advertising of goods and services" which likewise must remain removed to
avoid a finding of commerciality.
*776
[9] Taubman's assertion
that its offer to buy the domain name "shopsatwillowbend.com" from
Mishkoff qualifies Mishkoff's use of the mark as "in connection with the
sale of goods" is meritless.
Although other courts have held that a so-called cybersquatter, who
registers domain names with the intent to sell the name to the trademark
holder, uses the mark "in connection with the sale of goods," they
have also limited their holdings to such instances where the defendant had made
a habit and a business of such practices.
See, e.g., E
& J Gallo Winery v. Spider Webs Ltd.,
286 F.3d 270, 270 (5th Cir.2002) (noting that
defendant had made a business practice of selling domain names on eBay for no
less than $10,000); Panavision
Int'l, L.P. v. Toeppen,
141 F.3d 1316 (9th Cir.1998).
In Panavision, the defendant, Toeppen, purchased and offered to sell the
name "panavision.com" to Panavision for $13,000. Id.
at 1318.
Evidence showed that Toeppen had attempted similar deals with a myriad
of other companies, ranging from Delta Airlines to Eddie Bauer. Id.
at 1319.
The Ninth Circuit found Toeppen's intent to sell the domain name
relevant in determining that his creation of the site was a commercial use of
Panavision's mark. Id.
at 1325.
In contrast, not only has Mishkoff not made a practice of registering
and selling domain names, but he did not even initiate the bargaining process
here. Although Taubman's counsel
intimated at oral argument that Mishkoff had in fact initiated the negotiation
process, correspondence in the record
supports the opposite conclusion, and shows that Taubman first offered Mishkoff
$1000 to relinquish the site on August 16, 2001, and Mishkoff initially
accepted it under threat of litigation.
Hence, this case is distinguishable from Panavision. There is no
evidence that Mishkoff's initial motive in selecting Taubman's mark was to
re-sell the name. Therefore, we hold
his use of the name "shopsatwillowbend.com" is not "in
connection with the sale of goods."
[10] Even if Mishkoff's use is commercial speech, i.e.,
"in connection with the sale ... or advertising of any goods or
services," and within the jurisdiction of the Lanham Act, there is a
violation only if his use also creates a likelihood of confusion among
customers. 15
U.S.C. § 1114(1). Moreover, the only important question is whether there is
a likelihood of confusion between the parties' goods or services. Bird
v. Parsons,
289 F.3d 865, 877 (6th Cir.2002). Under Lanham Act jurisprudence, it is
irrelevant whether customers would be confused as to the origin of the
websites, unless there is confusion as to the origin of the respective
products. See also Daddy's
Junky Music Stores,
109 F.3d at 280.
Since its inception, Mishkoff had always
maintained a disclaimer on the website, indicating that his was not the
official website. In Holiday
Inns, Inc. v. 800 Reservation, Inc.,
86 F.3d 619 (6th Cir.1996), we found the existence
of a disclaimer very informative, and held that there was no likelihood of confusion, partly on that basis.
In Holiday
Inns, the plaintiff hotel chain used the
phone number 1- 800-HOLIDAY for its guest room reservation hotline. Holiday Inns claimed a Lanham Act violation
when the defendant company, a business that profited by taking reservations *777
for several hotel chains, used the phone number 1- 800-H0LIDAY (with a zero
instead of an "O") in order to take advantage of any calls misdialed
by customers seeking Holiday Inns' hotline.
We found no Lanham Act violation, partly because the defendant played an
unmistakable disclaimer upon answering each call, explaining that it was
unaffiliated with Holiday Inns, and providing customers with Holiday Inns'
correct phone number. Id.
at 621.
We found that the defendant was, in fact, directing business to Holiday
Inns that otherwise would have been lost, and although some callers chose to do
business with the defendant, others hung up and called Holiday Inns. Had it not
been for defendants' service, Holiday Inns would likely never have recovered
many customers who had misdialed. Id.
at 625.
We find the analysis here indistinguishable
from the disclaimer analysis in Holiday
Inns.
[FN4] Mishkoff has placed a conspicuous
disclaimer informing customers that they had not reached Taubman's official
mall site. Furthermore, Mishkoff placed a hyperlink to Taubman's site within
the disclaimer. We find this measure
goes beyond even what was done by the defendant in Holiday
Inns. There, a customer who reached the
defendant's hotline in error had to hang up
and redial the correct Holiday Inns number. Id. Here, a misplaced customer simply has to click his mouse
to be redirected to Taubman's site.
Moreover, like Holiday
Inns, the customers who stumble upon
Mishkoff's site would otherwise have reached a dead address. They would have
received an error message upon typing "shopsatwillowbend.com," simply
stating that the name was not a proper domain name, with no message relating
how to arrive at the official site.
Hence, Mishkoff's website and its disclaimer actually serve to re-direct
lost customers to Taubman's site that might otherwise be lost. Accordingly, we find no likelihood that a
customer would be confused as to the source of Taubman's and Mishkoff's
respective goods.
FN4. In Holiday
Inns, the defendant did not actually use the
plaintiff's trademark, "Holiday," but used the most common
"misspelling" of it.
Accordingly, we also found no infringement in Holiday
Inns because there was no "use" of
the plaintiff's mark.
b. December 7
Injunction--The "sucks" Site
[11] In regard to Mishkoff's "complaint site,"
Taubman claims that Mishkoff's use is necessarily "in connection with the
sale of goods" because his intent behind the use of the names "taubmansucks.com,"
et al., is to harm Taubman
economically.
In Planned
Parenthood Fed'n of Amer., Inc. v. Bucci,
No. 97 Civ. 0629, 1997 WL 133313 (S.D.N.Y. March 24, 1997), aff'd, No.
97-7492, 1998 WL 336163 (2d Cir. Feb.9, 1998),
the defendant usurped the domain name "plannedparenthood.com" and
created a website displaying anti-abortion pictures and pro-life messages in
clear contradiction of the plaintiff's stated mission. Id.
at *1. The court there found that, although not
selling or advertising any goods, the defendant's use of Planned Parenthood's
mark was commercial because he had used plaintiff's mark and attempted to cause
economic harm. Id.
at *4. (noting that Lanham Act is applicable
because "defendant's action in appropriating plaintiff's mark has a
connection to plaintiff's distribution of its services").
Following Planned
Parenthood, Taubman argues that all
cybergriping sites are per se commercial and "in connection with the sale
of goods." However, Planned
Parenthood, as an unpublished district court
opinion, is not binding on this Court, and is nonetheless distinguishable. Even if Mishkoff's use is commercial, it
must *778 still lead to a likelihood of confusion to be violative of the
Lanham Act. 15
U.S.C. § 1114(1). In Planned
Parenthood, the defendant used the
plaintiff's trade name as a domain name, without the qualifying moniker
"sucks," or any other such addendum to indicate that the plaintiff
was not the proprietor of the website.
In contrast, "taubmansucks.com"
removes any confusion as to source. We
find no possibility of confusion and no Lanham Act violation.
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...."
Brief for Respondent, at 58.
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.
2. The Remaining Injunctive Factors
When, as here, a preliminary injunction would
infringe upon a constitutional right, the likelihood of success on the merits
is often the determinative factor. Detroit
Free Press v. Ashcroft,
303 F.3d 681, 710 (6th Cir.2002); Connection
Distrib. Co. v. Reno,
154 F.3d 281, 288 (6th Cir.1998). Even so, the
other three factors also suggest that a preliminary injunction is not
proper. Because Mishkoff is not using
Taubman's mark to peddle competing goods, and because any damages would be
economic in nature and fully compensable monetarily, we find no potential for irreparable
harm to Taubman that should lead us to uphold the injunctions. See Overstreet
v. Lexington- Fayette Urban County Gov't,
305 F.3d 566, 578 (6th Cir.2002) (citing Basicomputer
Corp. v. Scott,
973 F.2d 507, 511 (6th Cir.1992)). Moreover, absent a likelihood of confusion,
we find no negative impact on the public interest caused by Mishkoff's
use. In fact, due to the Free Speech
concerns present, we find the potential for irreparable harm to Mishkoff more
likely, and that the public would be negatively impacted, should we not
dissolve the injunctions. See Overstreet,
305 F.3d at 578 (stating that the potential for
irreparable harm is present when it is constitutional rights that are being
enjoined); see also Connection
Distrib. Co.,
154 F.3d at 288 (stating that the loss of
constitutional rights for even a minimal amount of time constitutes irreparable
harm).
Lastly, although no economic harm will accrue
to Mishkoff should he be prevented from maintaining his sites, there is little
potential harm to Taubman, or any other party, as well, because Mishkoff is not
a competitor in the marketplace.
Accordingly, upon a balancing of the factors for injunctive relief, we
dissolve both injunctions.
[12] Lastly, Taubman argues that the Safe Distance Rule, a
little used tenet which pre-dates the Lanham Act by nearly twenty years,
applies to bar Mishkoff's use of Taubman's mark on his "complaint
site." The Safe Distance Rule was
created to prevent known infringers from using *779 trademarks whose use
by non-infringers would not necessarily be actionable. See Broderick
& Bascom Rope Co. v. Manoff,
41 F.2d 353 (6th Cir.1930). Taubman insists that since Mishkoff has
infringed its mark on his "shopsatwillowbend.com" site, the Safe
Distance rule can be invoked to curtail his use of "taubmansucks.com,"
even if use of "taubmansucks.com" would not be infringing
otherwise.
In Broderick, Judge Denison stated the Safe Distance Rule as follows:
[The defendants] had organized and built up a business
based upon a fraudulent appropriation of what belonged to the plaintiff. To permit them to continue without
interruption, and to the full scope of identity permitted to an honest
competitor, would be to preserve for them a good will acquired through
fraud. The due protection of trade-mark
and similar rights requires that a competitive business, once convicted of
unfair competition in a given particular, should thereafter be required to keep
a safe distance away from the margin line-even if that requirement involves a
handicap as compared with those who have not disqualified themselves.
Id.
at 354.
[FN5] So,
in spite of Taubman's assertions otherwise, the Safe Distance Rule is likewise
founded on a likelihood of confusion standard. The rule simply notes that once
an infringer has confused the public, that confusion is not magically remedied
by a name change. Instead, the
confusion lingers, creating the need for the infringer not only to secure a new
non- infringing name (or other infringing characteristic) for his product, but
one so far removed from any characteristic of the plaintiff so as to put the
public on notice that the two are not related.
FN5. The rule has its
roots even before Broderick. In Coca
Cola Co. v. Gay-Ola Co.,
200 F. 720 (6th Cir.1912), though not referring
to the Safe Distance Rule as such, we held that a soft drink manufacturer, once
found to be infringing on Coca-Cola's trademarks, could no longer continue to
use any mark which might be found to resemble Coca-Cola--namely unmarked red
barrels. This was so even though red
barrels in and of themselves would not constitute infringement of a trademark,
either in 1912 or under the Lanham Act today.
But continued use of the barrels after being found to be an infringer,
would have permitted the defendant to continue to capitalize from confusion
garnered from the earlier infringement.
Id.
at 723.
We
need not find whether the Safe Distance Rule has survived the enactment of the
Lanham Act, because even if it is still good law, it does not apply here.
First, the Safe Distance Rule has only been applied in settings where the
second use was merely a slight deviation of the first use and was also
commercial. See Broderick,
41 F.2d at 353-54 (developing Safe Distance Rule
in instance when infringer attempted to change offending use from
"au-tow-line" to "auto-tow-line"); Badger
Meter, Inc. v. Grinnell Corp.,
13 F.3d 1145, 1156 (7th Cir.1994) (applying Safe
Distance Rule to prevent infringer from changing infringing logo in trivial
ways, because such changes would force relitigation of essentially the same
issue). The Safe Distance Rule has
never been applied when the second use is a non-commercial critical commentary,
but only where the second use is a different name for the same product. See, e.g., Tamko
Roofing Prods., Inc. v. Ideal Roofing Co., Ltd.,
282 F.3d 23, 40 (1st Cir.2002) (applying Safe
Distance Rule where infringer simply tried to escape liability by changing
infringing "Heritage Series" to "H-Series"); Broderick,
41 F.2d at 353-54. As stated above, the First Amendment protects Mishkoff's
commentary and criticism, and negates the Safe Distance Rule to any extent it
might otherwise have applied.
Second, the Safe Distance Rule was meant to
be applied only against proven *780 infringers. See Broderick,
41 F.2d at 354 (referring only to persons
"once convicted of unfair competition"); see also, Tamko
Roofing Products,
282 F.3d at 30 (applying Safe Distance Rule only
after defendant had been found in contempt of an injunction); cf.
Prince
of Peace Enters. v. Kwok Shing Import-Export Inc.,
No. C 94-04183, 1997 WL 475699 at *5 (July 8, 1997 N.D.Cal.) (stating that the Safe Distance Rule does not apply where
"one was not 'caught' infringing a trademark"). Mishkoff has not previously been found
liable of infringement, nor in contempt of either injunction. Accordingly, our
finding above that Taubman is not likely to succeed on the merits of the
"shopsatwillowbend.com" claim precludes any further discussion of the
Safe Distance Rule.
IV. Conclusion
For the foregoing reasons, we REVERSE
the decision of the district court and dissolve both preliminary injunctions
preventing Mishkoff from using the domain name,
"shopsatwillowbend.com," and the five "complaint names"
listed above.
319 F.3d
770, 54 Fed.R.Serv.3d 1026, 65 U.S.P.Q.2d 1834, 2003 Fed.App. 0043P
END OF
DOCUMENT