CHRISTOPHER LAMPARELLO v. JERRY FALWELL; JERRY FALWELL MINISTRIES
No. 04-2011
No. 04-2122
United States Court of Appeals for the Fourth Circuit
August 24, 2005
Before MICHAEL, MOTZ, and KING, Circuit Judges.
PUBLISHED. Arguеd: May 26, 2005. Reversed and remanded by published opinion. Judge Motz wrote the opinion, in which Judge Michael and Judge King joined.
AMERICAN CIVIL LIBERTIES UNION; ACLU FOUNDATION OF VIRGINIA; INTELLECTUAL PROPERTY LAW FACULTY, Amici Supporting Appellee.
COUNSEL
ARGUED: Paul Alan Levy, PUBLIC CITIZEN LITIGATION GROUP, Washington, D.C., for Christopher Lamparello. John Holbrook Midlen, Jr., MIDLEN LAW CENTER, Chevy Chase, Maryland, for Jerry Falwell and Jerry Falwell Ministries. ON BRIEF: Allison M. Zieve, PUBLIC CITIZEN LITIGATION GROUP, Washington, D.C., for Christopher Lamparello. Phillip R. Malone, Bruce P. Keller, Jeffrey P. Cunard, BERKMAN CENTER FOR INTERNET AND SOCIETY, HARVARD LAW SCHOOL, Cambridge, Massachusetts; Rebecca Tushnet, Visiting Associate Professor of Law, GEORGETOWN UNIVERSITY LAW CENTER, Washington, D.C., for Amici Curiae, Intellectual Property Law Faculty, Supporting Christopher Lamparello. Rebecca K. Glenberg, AMERICAN CIVIL LIBERTIES UNION OF VIRGINIA FOUNDATION, INC., Richmond, Virginiа; Michael Adams, AMERICAN CIVIL LIBERTIES UNION, New York, New York, for Amici Curiae, American Civil Liberties Union and American Civil Liberties Union of Virginia Foundation, Inc., Supporting Christopher Lamparello.
DIANA GRIBBON MOTZ, Circuit Judge:
Christopher Lamparello appeals the district court‘s order enjoining him from maintaining a gripe website critical of Reverend Jerry Falwell. For the reasons stated below, we reverse.
I.
Reverend Falwell is “a nationally known minister who has been active as a commentator on politics and public affairs.” Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 47 (1988). He holds the common law trademarks “Jerry Falwell” and “Falwell,” and the registered trademark “Listen America with Jerry Falwell.” Jerry Falwell Ministries can be found online at “www.falwell.com,” a website which receives 9,000 hits (or visits) per day.
Lamparello registered the domain name “www.fallwell.com” on February 11, 1999, after hearing Reverend Falwell give an interview “in which he expressed opinions about gay people and homosexuality that [Lamparello] considered . . . offensive.” Lamparello created a website at that domain name to respond to what he believed were “untruths about gay people.” Lamparello‘s website included headlines such as “Bible verses that Dr. Falwell chooses to ignore” and “Jerry Falwell has been bearing false witness (Exodus 20:16) against his gay and lesbian neighbors for a long time.” The site also contained in-depth criticism of Reverend Falwell‘s views. For example, the website stated:
Dr. Falwell says that he is on the side оf truth. He says that he will preach that homosexuality is a sin until the day he dies. But we believe that if the reverend were to take another thoughtful look at the scriptures, he would discover that they have been twisted around to support an anti-gay political agenda . . . at the expense of the gospel.
Although the interior pages of Lamparello‘s website did not contain a disclaimer, the homepage prominently stated, “This website is NOT
At one point, Lamparello‘s website included a link to the Amazon.com webpage for a book that offered interрretations of the Bible that Lamparello favored, but the parties agree that Lamparello has never sold goods or services on his website. The parties also agree that “Lamparello‘s domain name and web site at www.fallwell.com,” which received only 200 hits per day, “had no measurable impact on the quantity of visits to [Reverend Falwell‘s] web site at www.falwell.com.”
Nonetheless, Reverend Falwell sent Lamparello letters in October 2001 and June 2003 demanding that he cease and desist from using www.fallwell.com or any variation of Reverend Falwell‘s name as a domain name. Ultimately, Lamparello filed this action against Reverend Falwell and his ministries (collectively referred to hereinаfter as “Reverend Falwell“), seeking a declaratory judgment of noninfringement. Reverend Falwell counter-claimed, alleging trademark infringement under
Lamparello appeals the district court‘s order; Reverend Falwell cross-appeals the denial of statutory damages and attorney fees. We review de novo a district court‘s ruling on cross-motions for summary judgment. See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001) [hereinafter ”PETA“].
II.
We first consider Reverend Falwell‘s claims of trademark infringement and false designation of origin.
A.
Section 32 of the Lanham Act creates a cause of action against:
[a]ny 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 оr in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.
[a]ny person who, on or in connection with any goods or services, . . . uses in commerce any word . . . [or] name . . . ,
or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commеrcial activities by another person.
Both infringement and false designation of origin have five elements. To prevail under either cause of action, the trademark holder must prove:
(1) that it possesses a mark; (2) that the [opposing party] used the mark; (3) that the [opposing party‘s] use of the mark occurred “in commerce“; (4) that the [opposing party] used the mark “in connection with the sale, offering for sale, distribution, or advertising” of goods or services; and (5) that the [opposing party] used the mark in a manner likely to confuse consumers.
PETA, 263 F.3d at 364 (citing
Trademark law serves the important functions of protecting product identification, providing consumer information, and encouraging the production of quality goods and services. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995). But protections “‘against unfair competition‘” cannot be transformed into “‘rights to control language.‘” CPC Int‘l, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000) (quoting Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1710-11 (1999)). “Such a transformation” would raise serious First Amendment concerns because it would limit the
ability to discuss the products or criticize the conduct of companies that may be of widespread public concern and importance. Much useful social and commercial discourse
would be all but 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.
Id. (internal quotation marks and citations omitted).
Lamparello and his amici argue at length that application of the Lanham Act must be restriсted to “commercial speech” to assure that trademark law does not become a tool for unconstitutional censorship. The Sixth Circuit has endorsed this view, see Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003), and the Ninth Circuit recently has done so as well, see Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 674 (9th Cir. 2005).
In its two most significant recent amendments to the Lanham Act, the Federal Trademark Dilution Act of 1995 (“FTDA“) and the Anti-cybersquatting Consumer Protection Act of 1999 (“ACPA“), Congress left little doubt that it did not intend for trademark laws to impinge the First Amendment rights of critics and commentators. The dilution statute applies to only a “commercial use in commerce of a mark,”
Thus, even if we accepted Lamparello‘s contention that Sections 32 and 43(a) of the Lanham Act apply only to commercial speech, we would still face the difficult question of what constitutes such speech under those provisions. In the case at hand, we need not resolve that question or determine whether Sections 32 and 43(a) apply exclusively to commercial speech because Reverend Falwell‘s claims of trademark infringement and false designation fail for a more obvious reason. The hallmark of such claims is a likelihood of confusion — and there is no likelihood of confusion here.
B.
1.
“[T]he use of a competitor‘s mark that does not cause confusion as to source is permissible.” Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 380 (7th Cir. 1996). Accordingly, Lamparello can only be
We have identified seven factors helpful in determining whether a likelihood of confusion exists as to the source of a work, but “not all these factors are always relevant or equally emphasized in each case.” Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) (internal quotation marks, citations, and brackets omitted). The factors are: “(a) the strength or distinctiveness of the mark; (b) the similarity of the two marks; (c) the similarity of the goods/services the marks identify; (d) the similarity of the facilities the two parties use in their businesses; (e) the similarity of the advertising used by the two parties; (f) the defendant‘s intent; (g) actual confusion.” Id. (citation omitted).
Reverend Falwell‘s mark is distinctive, and the domain name of Lamparello‘s website, www.fallwell.com, closely resembles it. But, although Lamparello and Reverend Falwell employ similar marks online, Lamparello‘s website looks nothing like Reverend Falwell‘s; indeed, Lamparello has made no attempt to imitate Reverend Falwell‘s website. Moreover, Reverend Falwell does not even argue that Lamparello‘s website constitutes advertising or a facility for business, let alone a facility or advertising similar to that of Reverend Falwell. Furthermore, Lamparello clearly created his website intending only to provide a forum to criticize ideas, not to steal customers.
Most importantly, Reverend Falwell and Lamparello do not offer similar goods or services. Rather they offer opposing ideas and commentary. Reverend Falwell‘s mark identifies his spiritual and political views; the website at www.fallwell.com criticizes those very views. After even a quick glance at the content of the website at www.fallwell.com, no one seeking Reverend Falwell‘s guidance would be misled by the domain name — www.fallwell.com — into believing Reverend Falwell authorized the content of that website. No one would believe that Reverend Falwell sponsored a site criticizing himself, his positions, and his interpretations of the Bible. See NewKids on the Block v. News Am. Publ‘g, Inc., 971 F.2d 302, 308-09 (9th Cir. 1992) (stating that use of a mark to solicit criticism of the markholder implies the markholder is not the sponsor of the use).3
Finally, the fact that people contacted Reverend Falwell‘s ministry to report that they found the content at www.fallwell.com antithetical to Reverend Falwell‘s views does not illustrate, as Reverend Falwell claims, that the website engendered actual confusion. To the contrary, the anecdotal evidence Reverend Falwell submitted shows that those searching for Reverend Falwell‘s site and arriving instead at Lamparello‘s site quickly realized that Reverend Falwell was not the source of the content therein.
For all of these reasons, it is clear that the undisputed record evidences no likelihood of confusion. In fact, Reverend Falwell even conceded at oral argument that those viewing the content of Lamparello‘s website probably were unlikely to confuse Reverend Falwell with the source of that material.
2.
Nevertheless, Reverend Falwell argues that he is entitled to prevail under the “initial interest confusion” doctrine. This relatively new and sporadically applied doctrine holds 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 the goods is dispelled by the time any sales are consummated.” Dorr-Oliver, 94 F.3d at 382. According to Reverend Falwell, this doctrine requires us to compare his mark with Lamparello‘s website domain name, www.fallwell.com, without
First, we have never adopted the initial interest confusion theory; rather, we have followed a very different mode of analysis, requiring courts to determine whether a likelihood of confusion exists by “examin[ing] the allegedly infringing use in the context in which it is seen by the ordinary consumer.” Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 319 (4th Cir. 1992) (emphasis added) (citing cases); see also What-A-Burger of Va., Inc. v. WHATABURGER, Inc., 357 F.3d 441, 450 (4th Cir. 2004).
Contrary to Reverend Falwell‘s arguments, we did not abandon this approach in PETA. Our inquiry in PETA was limited to whether Doughney‘s use of the domain name “www.peta.org” constituted a successful enough parody of People for the Ethical Treatment of Animals that no one was likely to believe www.peta.org was sponsored or endorsed by that organization. For a parody to be successful, it “must convey two simultaneous — and contradictory — messages: that it is the original, but also that it is not the original and is instead a parody.” PETA, 263 F.3d at 366 (internal quotation marks and citation omitted). Doughney argued that his domain name conveyed the first message (that it was PETA‘s website) and that the content of his website conveyed the requisite second message (that it was not PETA‘s site). Id. Although “[t]he website‘s content ma[de] it clear that it [wa]s not related to PETA,” id., we concluded that the website‘s content could not convey the requisite second message because the site‘s content “[wa]s not conveyed simultaneously with the first message, [i.e., the domain name itself,] as required to be considered a parody.” Id. at 366. Accordingly, we found the “district court properly rejected Doughney‘s parody defense.” Id. at 367.
PETA simply outlines the parameters of the parody defense; it does not adopt the initial interest confusion theory or otherwise diminish the necessity of examining context when determining whether a likelihood of confusion exists. Indeed, in PETA itself, rather than embrac-
Moreover, even if we did endorse the initial interest confusion theory, that theory would not assist Reverend Falwell here because it provides no basis for liability in circumstances such as these. The few appellate courts that have followed the Ninth Circuit and imposed liability under this theory for using marks on the Internet have done so only in cases involving a factor utterly absent here — one business‘s use of another‘s mark for its own financial gain. See, e.g., PACCAR Inc. v. Telescan Techs., L.L.C., 319 F.3d 243, 253 (6th Cir. 2003); Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002); Brookfield Communications, Inc. v. West Coast Entm‘t Corp., 174 F.3d 1036, 1055-56 (9th Cir. 1999).
Profiting financially from initial interest confusion is thus a key element for imposition of liability under this theory.5 When an alleged
This critical element — 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. See Hannibal Travis, The Battle For Mindshare: The Emerging Consensus that the First Amendment Protects Corporate Criticism and Parody on the Internet, 10 Va. J.L. & Tech. 3, 85 (Winter 2005) (“The premise of the ‘initial interest’ confusion cases is that by using the plaintiff‘s trademark to divert its customers, the defendant is engaging in the old ‘bait and switch.’ But because . . . Internet users who find [gripe sites] are not sold anything, the mark may be the ‘bait,’ but there is simply no ‘switch.‘“) (citations omitted).6 Applying
In sum, even if we were to accept the initial interest confusion theory, that theory would not apply in the case at hand. Rather, to determine whether a likelihood of confusion exists as to the source of a gripe site like that at issue in this case, a court must look not only to the allegedly infringing domain name, but also to the underlying content of the website. When we do so here, it is clear, as explained above, that no likelihood of confusion exists. Therefore, the district court erred in granting Reverend Falwell summary judgment on his infringement, false designation, аnd unfair competition claims.
III.
We evaluate Reverend Falwell‘s cybersquatting claim separately because the elements of a cybersquatting violation differ from those of traditional Lanham Act violations. To prevail on a cybersquatting claim, Reverend Falwell must show that Lamparello: (1) “had a bad
“The paradigmatic harm that the ACPA was enacted to eradicate” is “the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark.” Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir. 2004). The Act was also intended to stop the registration of multiple marks with the hope of selling them to the highest bidder, “distinctive marks to defraud consumers” or “to engage in counterfeiting activities,” and “well-known marks to prey on consumer confusion by misusing the domain name to divert customers from the mark owner‘s site to the cybersquatter‘s own site, many of which are pornography sites that derive advertising revenue based on the number of visits, or ‘hits,’ the site receives.” S. Rep. No. 106-140, 1999 WL 594571, at *5-6. The Act was not intended to prevent “noncommercial uses of a mark, such as for comment, criticism, parody, news reporting, etc.,” and thus they “are beyond the scope” of the ACPA. Id. at *9.
To distinguish abusive domain name registrations from legitimate ones, the ACPA directs courts tо consider nine nonexhaustive factors:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person‘s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person‘s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person‘s intent to divert consumers from the mark owner‘s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person‘s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person‘s prior conduct indicating a pattern of such conduct;
(VII) the person‘s provision of material and misleading false contact information when applying for the registration of the domain name, the person‘s intentional failure to maintain accurаte contact information, or the person‘s prior conduct indicating a pattern of such conduct;
(VIII) the person‘s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of the registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person‘s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section.
These factors attempt “to balance the property interests of trademark owners with the legitimate interests of Internet users and others
After close examination of the undisputed facts involved in this case, we can only conclude that Reverend Falwell cannot demonstrate that Lamparello “had a bad faith intent to profit from using the [www.fallwell.com] domain name.” PETA, 263 F.3d at 367. Lamparello clearly employed www.fallwell.com simply to criticize Reverend Falwell‘s views. Factor IV of the ACPA,
Equally important, Lamparello has not engaged in the type of conduct described in the statutory factors as typifying the bad faith intent to profit essential to a successful cybersquatting claim. First, we have already held, supra Part II.B, that Lamparello‘s domain name does not create a likelihood of confusion as to source or affiliation. Accordingly, Lamparello has not engaged in the type of conduct — “creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site,”
Factors VI and VIII also counsel against finding a bad faith intent to profit here. Lamparello has made no attеmpt — or even indicated a willingness — “to transfer, sell, or otherwise assign the domain name to [Reverend Falwell] or any third party for financial gain.”
Notably, the case at hand differs markedly from those in which the courts have found a bad faith intent to profit from domain names used for websites engaged in political commentary or parody. For example, in PETA we found the registrant of www.peta.org engaged in cybersquatting because www.peta.org was one of fifty to sixty domain names Doughney had registered, PETA, 263 F.3d at 362, and because Doughney had evidenced a clear intent to sell www.peta.org to PETA, stating that PETA should try to “‘settle’ with him and ‘make him an offer.‘” Id. at 368. See also Virtual Works, 238 F.3d at 269-70. Similarly, in Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004),
Instead, Lamparello, like the plaintiffs in two cases recently decided by the Fifth and Sixth Circuits, created a gripe site. Both courts expressly refused to find that gripe sites located at domain names nearly identical to the marks at issue violated the ACPA. In TMI, Inc. v. Maxwell, 368 F.3d 433, 434-35 (5th Cir. 2004), Joseph Maxwell, a customer of homebuilder TMI, registered the domain name “www.trendmakerhome.com,” which differed by only one letter from TMI‘s mark, TrendMaker Homes, and its domain name, “www.trendmakerhomes.com.” Maxwell used the site to complain about his experience with TMI and to list the name of a contractor whose work pleased him. After his registrаtion expired, Maxwell registered “www.trendmakerhome.info.” TMI then sued, alleging cybersquatting. The Fifth Circuit reversed the district court‘s finding that Maxwell violated the ACPA, reasoning that his site was noncommercial and designed only “to inform potential customers about a negative experience with the company.” Id. at 438-39.
Similarly, in Lucas Nursery & Landscaping, a customer of Lucas Nursery registered the domain name “www.lucasnursery.com” and posted her dissatisfaction with the company‘s landscaping services. Because the registrant, Grosse, like Lamparello, registered a single domain name, the Sixth Circuit concluded that her conduct did not constitute that which Congress intended to proscribe — i.e., the registration of multiple domain names. Lucas Nursery & Landscaping, 359 F.3d at 810. Noting that Grosse‘s gripe sitе did not create any confusion as to sponsorship and that she had never attempted to sell the domain name to the markholder, the court found that Grosse‘s conduct was not actionable under the ACPA. The court explained: “One
Like Maxwell and Grosse before him, Lamparello has not evidenced a bad faith intent to profit under the ACPA. To the contrary, he has used www.fallwell.com to engage in thе type of “comment[ ] [and] criticism” that Congress specifically stated militates against a finding of bad faith intent to profit. See S. Rep. No. 106-140, 1999 WL 594571, at *14. And he has neither registered multiple domain names nor attempted to transfer www.fallwell.com for valuable consideration. We agree with the Fifth and Sixth Circuits that, given these circumstances, the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting.
IV.
For the foregoing reasons, Lamparello, rather than Reverend Falwell, is entitled to summary judgment on all counts.8 Accordingly, the judgment of the district court is reversed and the case is remanded for entry of judgment for Lamparello.
REVERSED AND REMANDED