Lamparello v. Falwell

Brief Fact Summary.

Lamparello (Plaintiff) argued that his gripe website, www.fallwell.com, aimed at criticizing the views of Reverend Jerry Falwell (Reverend Falwell) (Defendant), an outspoken, nationally known minister, did not infringe on Defendant’s trademarks; did not constitute false designation of origin; and did not constitute illegal cybersquatting.

Synopsis of Rule of Law.

(1) A gripe website, the domain name of which contains an almost identical spelling of a trademark owned by the target of the site’s criticism, does not infringe the owner’s trademark or cause false designation of origin where there is no likelihood of confusion that the site is sponsored by the trademark owner.

(2) Under the Anticybersquatting Consumer Protection Act of 1999, the use of a trademark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting where the use is not for profit and the site’s operator does not engage in selling domain names.

Facts.

Reverend Jerry Falwell (Reverend Falwell) (Defendant) is a nationally known and outspoken minister who actively comments on politics and public affairs.  He holds the common law trademarks “Jerry Falwell†and “Falwell,†and the registered trademark “Listen America with Jerry Falwell.â€Â  Jerry Falwell Ministries can be found online at www.falwell.com, a website that receives 9,000 hits a day.  After hearing Reverend Falwell’s (Defendant) views on homosexuality, Lamparello (Plaintiff) registered the domain name to respond to what he believed where “untruths about gay people.â€Â  The homepage prominently indicated that the website was not affiliated with Defendant or his ministry and provided a link to Defendant’s site for those who wished to visit that site.  Plaintiff’s site received about 200 hits per day, and no goods or services were sold on it.  Defendant sent Plaintiff cease and desist letters to stop using www.fallwell.com or any variation of Defendant’s name as a domain name.  Ultimately, Plaintiff filed an action against Defendant seeking a declaratory judgment of noninfringement.  Defendant counter-claimed, alleging trademark infringement under 15 U.S.C. § 1114 (2000), false designation of origin under 15 U.S.C. § 1125(a), unfair competition under 15 U.S.C. § 1126 and state common law and cybersquatting under 15 U.S.C. § 1125(d).  The district court granted summary judgment to Reverend Falwell (Defendant), enjoined Lamparello (Plaintiff) from using Defendant’s mark at www.fallwell.com, and required Plaintiff to transfer the domain name to Reverend Falwell.  The court of appeals granted review.

Issue.

(1) Does a gripe website, the domain name of which contains an almost identical spelling of a trademark owned by the target of the site’s criticism, infringe the owner’s trademark or cause false designation of origin where there is no likelihood of confusion that the site is sponsored by the trademark owner?

(2) Under the Anticybersquatting Consumer Protection Act of 1999, does the use of a trademark in a domain name for a gripe site criticizing the markholder constitute cybersquatting where the use is not for profit and the site’s operator does not engage in selling domain names?

Held.

(Motz, J.) (1) No.  A gripe website, the domain name of which contains an almost identical spelling of a trademark owned by the target of the site’s criticism, does not infringe the owner’s trademark or cause false designation of origin where there is no likelihood of confusion that the site is sponsored by the trademark owner.  While trademark law protects product identification, it cannot be used to control language, otherwise much useful social and commercial discourse would be nearly impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark.  On one hand, it is arguable that the Lanham Act reaches only “commercial speech†so that trademark law does not become a tool for unconstitutional censorship.  Some courts have endorsed this view, and it is clear from Congress’s more recent enactments in the trademark area that it intended for trademark laws not to impinge the First Amendment rights of critics and commentators.  On the other hand, the trademark infringement and false designation of origin provisions of the Lanham Act (Sections 32 and 43(a), respectively) do not employ the term “noncommercial.â€Â  They state that they relate only to the use of a mark “in connection with the sale, offering for sale, distribution, or advertising of any goods or services,†or “in connection with any goods or services.â€Â  However, have been reluctant to define those terms narrowly.  In any event, it is not necessary to reach the issue of whether the Lanham Act reaches only “commercial speech,†since here it is clear there is no likelihood of confusion—the hallmark of trademark infringement and false designation claims.  A review of the likelihood of confusion factors leads to the conclusion that those viewing the content of “’s website probably would not confuse Defendant with the source of that material.  In addition, Defendant’s contention that he must prevail under the “initial interest confusion†doctrine must be rejected.  This relatively new and seldom-use doctrine provides that “the Lanham Act forbids a competitor from luring potential customers away from a producer by initially passing off its goods as those of the producer’s, even if confusion as to the source of those of the producer’s even if confusion as to the source of the goods is dispelled by the time any sales are consummated.â€Â  Under this doctrine, the court would compare his Reverend Falwell’s (Defendant) mark with Lamparello’s (Plaintiff) website domain name without considering the content of Plaintiff’s website.  Defendant argues that some people who misspell his name may go to www.fallwell.com assuming it is his site, thereby giving Plaintiff an unearned audience—although one that quickly disappears when it realizes it has not reached Defendant’s site.  There are two reasons this argument fails.  First, this court has never adopted the “initial interest confusion†doctrine, but instead has required a determination as to whether a likelihood of confusion exists by “examining the allegedly infringing use in the context in which it is seen by the ordinary consumer.â€Â  In the context of domain names, this means that the allegedly infringing domain name must be evaluated together with the content of the website identified by the domain name.  Second, even if the doctrine were to be applied in this case, it would not be helpful to Defendant as it requires that the use of another’s mark be for financial gain.  That element clearly is absent here, given that Lamparello (Plaintiff) is not competing for a share of Reverend Falwell’s (Defendant) market; use of another firm’s mark to capture the markholder’s customers and profits simply does not exist when the alleged infringer establishes a gripe site that criticizes the markholder.  To hold otherwise would enable the markholder to insulate himself from criticism—or at least minimize his access to it.  Such use of the Lanham Act as a shield from criticism has been rejected.  Accordingly, the district court erred in granting summary judgment to Defendant on his infringement, false designation, and unfair competition claims.  Reversed as to this issue.

(2) No.  Under the Anticybersquatting Consumer Protection Act of 1999, the use of a trademark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting where the use is not for profit and the site’s operator does not engage in selling domain names.  To prevail on a claim under the Anticybersquatting Consumer Protection Act of 1999 (ACPA), a markholder must show that the defendant (1) “had a bad faith intent to profit from using the domain name,†and (2) the domain name “is identical or confusingly similar to, or dilutive of, the distinctive and famous mark.â€Â  The ACPA was primarily intended to prevent the registration of multiple marks in the hope of selling them to their legitimate owner or to the highest bidder, not to prevent criticism of a markholder or such noncommercial uses.  In this case, Plaintiff did not have a bad faith intent to profit from using the www.fallwell.com domain name, which he clearly used simply to criticize Defendant’s views.  In addition, Plaintiff did not engage in the kind of conduct at which the ACPA was aimed primarily: he did not create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site, and he did not attempt—or even indicate a willingness—to transfer, sell, or otherwise assign the domain name to Reverend Falwell (Defendant) or any third party for financial gain.  He also registered just one domain name, not multiple names.  Therefore, consistent with the holdings of other Circuits in similar cases, Lamparello (Plaintiff) did not engage in cybersquatting under the ACPA.  Reversed and remanded for entry of summary judgment for Lamparello (Plaintiff).

Discussion.

This opinion, among other things, manifests the court’s skepticism about the “initial interest confusion†doctrine.  This is in keeping with traditional precepts of trademark law, which has always protected against only a substantial likelihood of confusion by the reasonable consumer, and not against “temporary confusion†or confusion caused solely by consumer carelessness.  By rejecting the “initial interest confusion†doctrine, the court seems to have rendered a decision that establishes trademark law principles that go beyond the specific issue of domain names and the Internet, and that can be applied in other contexts as well.