Taubman Co. v. Webfeats

Last updated
The Taubman Company v. Webfeats
US-CourtOfAppeals-6thCircuit-Seal.png
Court United States Court of Appeals for the Sixth Circuit
Full case nameThe Taubman Company v. Webfeats and Henry Mishkoff
ArguedOctober 16 2002
DecidedFebruary 7 2003
Citation(s)319 F.3d 770
Holding
Held that, in the context of an injunction application, speech critical of plaintiff's business was protected by the First Amendment, and could not be blocked by the Lanham Act.
Court membership
Judge(s) sitting Danny Julian Boggs, Richard Fred Suhrheinrich, and Eric L. Clay
Laws applied
U.S. Const. amend. I, Lanham Act

Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th Cir. 2003) was a United States Court of Appeals for the Sixth Circuit case concerning trademark infringement under the Lanham Act due to the unauthorized use of a domain name and website. The appellate court held that Taubman's trademark infringement claim did not have a likelihood of success and that the use of the company's mark in the domain name was an exhibition of Free Speech. [1]

Contents

Taubman Co. v. Webfeats became the first federal appellate court case that addressed the phenomenon of "cybergriping". [2] The legal battle also evolved into a civil liberties case, attracting the attention of organizations such as the American Civil Liberties Union (ACLU) and the nonprofit advocacy group Public Citizen. [3]

Facts

Taubman Company Limited Partnership announced that it is building a shopping mall called The Shops at Willow Bend at Plano, Texas. When Henry Mishkoff heard of the construction, which was near his home, he created a Website using a domain called shopsatwillowbend.com. [4] It featured information about the mall, including maps directing visitors to its shops. [5] Taubman company immediately filed a lawsuit before the U.S. District Court for the Eastern District of Michigan and sent Mishkoff a cease-and-desist letter after learning of the existence of the latter's website. [6] Mishkoff, who is a web developer, responded to the legal maneuver by registering new websites with derogatory domain names such as theshopatwillowbendsucks.com and taubmansucks.com. [6] The plaintiff also asked the court to stop Mishkoff from using the web names attached to sucks.com. It is considered as a "complaint name" and the process is also known as "cybergriping", [7] a phenomenon described as an Internet buzzword for a website that criticizes organizations, individuals, products, and services. [2]

The federal district court granted the plaintiff's petition for preliminary injunction and ordered the defendant to cease and desist from using the shopsatwillowbend.com domain and website as well as the other registered gripe domains. [4] Mishkoff secured representation from Paul Alan Levy at Public Citizen and appealed the case to the U.S. Court of Appeals for the 6th Circuit.

Ruling

According to the Court of Appeals, Mishkoff erred in claiming two assignments of error: that the U.S. District Court did not have jurisdiction over him; and, that the plaintiff's trademark claim will not succeed because it cannot demonstrate customer confusion regarding the origin of Taubman and Mishkoff's products. [8] However, the court dissolved the lower court's injunctions. It ruled that Taubman's mark in Mishkoff's website is purely an exhibition of Free Speech and not a violation cited in the Lanham Act. [6] The court acknowledged that defendant's websites might lead to economic damage but his right to do so is protected by the First Amendment, particularly since it falls under critical commentary without any confusion as to the source. [6]

Related Research Articles

<span class="mw-page-title-main">Laches (equity)</span> Unreasonable delay by a plaintiff in bringing their claim

In common law legal systems, laches is a lack of diligence and activity in making a legal claim, or moving forward with legal enforcement of a right, particularly in regard to equity. This means that it is an unreasonable delay that can be viewed as prejudicing the opposing party. When asserted in litigation, it is an equity defense, that is, a defense to a claim for an equitable remedy.

A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion.

<i>Itar-Tass Russian News Agency v. Russian Kurier, Inc.</i>

Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, was a copyright case about the Russian language weekly Russian Kurier in New York City that had copied and published various materials from Russian newspapers and news agency reports of Itar-TASS. The case was ultimately decided by the United States Court of Appeals for the Second Circuit. The decision was widely commented upon and the case is considered a landmark case because the court defined rules applicable in the U.S. on the extent to which the copyright laws of the country of origin or those of the U.S. apply in international disputes over copyright. The court held that to determine whether a claimant actually held the copyright on a work, the laws of the country of origin usually applied, but that to decide whether a copyright infringement had occurred and for possible remedies, the laws of the country where the infringement was claimed applied.

<span class="mw-page-title-main">Lanham Act</span> United States trademark law

The Lanham (Trademark) Act (Pub. L. 79–489, 60 Stat. 427, enacted July 5, 1946, codified at 15 U.S.C. § 1051 et seq. is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.

Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs.

<i>A&M Records, Inc. v. Napster, Inc.</i> US legal case

A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 was a landmark intellectual property case in which the United States Court of Appeals for the Ninth Circuit affirmed the a district court ruling that the defendant, peer-to-peer file sharing service Napster, could be held liable for contributory infringement and vicarious infringement of copyright. This was the first major case to address the application of copyright laws to peer-to-peer file sharing.

<i>In re Aimster Copyright Litigation</i>

In re Aimster Copyright Litigation, 334 F.3d 643, was a case in which the United States Court of Appeals for the Seventh Circuit addressed copyright infringement claims brought against Aimster, concluding that a preliminary injunction against the file-sharing service was appropriate because the copyright owners were likely to prevail on their claims of contributory infringement, and that the services could have non-infringing users was insufficient reason to reverse the district court's decision. The appellate court also noted that the defendant could have limited the quantity of the infringements if it had eliminated an encryption system feature, and if it had monitored the use of its systems. This made it so that the defense did not fall within the safe harbor of 17 U.S.C. § 512(i). and could not be used as an excuse to not know about the infringement. In addition, the court decided that the harm done to the plaintiff was irreparable and outweighed any harm to the defendant created by the injunction.

<i>Stern Electronics, Inc. v. Kaufman</i> American legal case

Stern Electronics Inc. v. Kaufman, 669 F.2d 852, is a legal case in which the United States Court of Appeals Second Circuit held that Omni Video Games violated the copyright and trademark of Scramble, an arcade game marketed by Stern Electronics. The lawsuit was due to a trend of "knock-off" video games in the early 1980s, leading to one of the earliest findings of copyright infringement for a video game, and the first federal appellate court to recognize a video game as a copyrighted audiovisual work.

Lexmark International, Inc. v. Static Control Components, Inc., is an American legal case involving the computer printer company Lexmark, which had designed an authentication system using a microcontroller so that only authorized toner cartridges could be used. The resulting litigation has resulted in significant decisions affecting United States intellectual property and trademark law.

Los Angeles Times v. Free Republic, 56 U.S.P.Q.2d 1862, is a United States district court copyright law case. Several newspapers sued the Internet forum Free Republic for allowing its users to repost the full text of copyrighted newspaper articles, asserting that this constituted copyright infringement. Free Republic claimed that they were not liable under the doctrine of fair use and the First Amendment guarantee of freedom of speech. The federal courts ruled in favor of the newspapers.

<i>Brookfield Communications, Inc. v. West Coast Entertainment Corp.</i>

The case Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 174 F.3d 1036, heard by the United States Court of Appeals for the Ninth Circuit, established that trademark infringement could occur through the use of trademarked terms in the HTML metatags of web pages when initial interest confusion was likely to result.

<i>Facebook, Inc. v. Power Ventures, Inc.</i> Lawsuit brought by Facebook in the United States

Facebook, Inc. v. Power Ventures, Inc. is a lawsuit brought by Facebook in the United States District Court for the Northern District of California alleging that Power Ventures Inc., a third-party platform, collected user information from Facebook and displayed it on their own website. Facebook claimed violations of the CAN-SPAM Act, the Computer Fraud and Abuse Act ("CFAA"), and the California Comprehensive Computer Data Access and Fraud Act. According to Facebook, Power Ventures Inc. made copies of Facebook's website during the process of extracting user information. Facebook argued that this process causes both direct and indirect copyright infringement. In addition, Facebook alleged this process constitutes a violation of the Digital Millennium Copyright Act ("DMCA"). Finally, Facebook also asserted claims of both state and federal trademark infringement, as well as a claim under California's Unfair Competition Law ("UCL").

Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), is a United States Supreme Court case, in which the Court confirmed the application of and set out a test for contributory trademark liability under § 32 of the Lanham Act.

<i>1-800 Contacts, Inc. v. WhenU.com, Inc.</i> American legal case

1-800 CONTACTS v. WhenU.com was a legal dispute beginning in 2002 over pop-up advertisements. It was brought by 1-800 Contacts, an online distributor of various brands of contact lenses against WhenU SaveNow, a maker of advertising software. The suit also named Vision Direct, one of WhenU advertising customers, as a co-defendant. 1-800 CONTACTS alleged that the advertisements provided by WhenU, which advertised competitors of 1-800 CONTACTS when people viewed the company's web site, were "inherently deceptive" and that one of the advertisements "misleads users into falsely believing the pop-up advertisements supplied by WhenU.com are in actuality advertisements authorized by and originating with the underlying Web site".

National Basketball Association v. Motorola, 105 F.3d 841 is a United States Court of Appeals for the Second Circuit case in which the National Basketball Association (NBA) purported that Motorola and STATS infringed the NBA's copyright on the broadcast of games and misappropriated the data presented on the SportsTrax pager.

<i>Network Automation, Inc. v. Advanced Systems Concepts, Inc.</i> Court case decided on March 8, 2011

Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 was a court case decided on March 8, 2011, where the United States Court of Appeals for the Ninth Circuit ruled that the use of a competitor's trademark as an Internet search advertising keyword did not constitute trademark infringement. In the case, Network Automation advertised their own competing product in search queries that contained Advanced Systems Concepts' "ActiveBatch" trademark. In determining whether trademark infringement occurred, the court evaluated factors relevant to the likelihood of customer confusion outlined in AMF Inc. v. Sleekcraft Boats and concluded that confusion was unlikely.

<i>Bosley Medical Institute, Inc. v. Kremer</i>

Bosley Medical Institute v. Kremer, No. 04-55962 is a case in which the United States Court of Appeals for the Ninth Circuit affirmed, reversed and remanded the rulings of the United States District Court for the Southern District of California, holding that defendant, Michael Kremer, could not be held liable for trademark infringement or dilution for his use of the Bosley Medical Group's name in creating a website that was critical of the company's business practices.

<i>College Network, Inc. v. Moore Educational Publishers, Inc.</i>

College Network, Inc. v. Moore Educational Publishers, Inc., No. 09-50596 was an unpublished appellate level case in the Fifth Circuit that upheld a district court jury decision to dismiss the purchase of trademarked keywords as infringing. The original suit was brought on a claim of trademark infringement in the purchase of certain advertising keywords that the defendant countered with claims of defamation and tortious interference, also known as intentional interference with contractual relations. The main issue addressed in the appeal was the sufficiency of the evidence presented in the counterclaims of the defendant. The court upheld the lower court's ruling, but vacated the award for tortious interference.

<i>Rosetta Stone Ltd. v. Google, Inc.</i> U.S. court decision

Rosetta Stone v. Google, 676 F.3d 144 was a decision of the United States Court of Appeals for the Fourth Circuit that challenged the legality of Google's AdWords program. The Court overturned a grant of summary judgment for Google that had held Google AdWords was not a violation of trademark law.

Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. ___ (2020), was a United States Supreme Court case related to trademark law under the Lanham Act. In the 9–0 decision on judgement, the Court ruled that a plaintiff in a trademark infringement lawsuit is not required to demonstrate that the defendant willfully infringed on their trademark to claim lost profit damages.

References

  1. ↑ "Taubman Co. v. Webfeats (Lawsuit) | Digital Media Law Project". www.dmlp.org. Retrieved 2019-04-23.
  2. 1 2 Wilson, Kevin P. (2004). "TAUBMAN CO. v. WEBFEATS: THE INTRODUCTION OF CYBERGRIPING TO THE FEDERAL COURT SYSTEM". Jurimetrics. 44 (4): 499–510. ISSN   0897-1277. JSTOR   29762870.
  3. ↑ Bocij, Paul (2004). Cyberstalking: Harassment in the Internet Age and how to Protect Your Family . Westport, CT: Praeger. pp.  157. ISBN   978-0275981181.
  4. 1 2 Eko, Lyombe (2013). American Exceptionalism, the French Exception, and Digital Media Law. Lanham, MD: Lexington Books. pp. 248–249. ISBN   9780739181126.
  5. ↑ Miller, Roger; Jentz, Gaylord (2010). Business Law Today: Comprehensive, Eight Edition. Mason, OH: South-Western Cengage Learning. p. 62. ISBN   9780324595741.
  6. 1 2 3 4 Hudson, David L. (2009). Protecting Ideas. Philadelphia, PA: Chelsea House Publishers. p. 74. ISBN   978-0791086469.
  7. ↑ Miller, Roger; Cross, Frank (2006). The Legal Environment Today, 5th edition. Mason, OH: Thomson West. p. 132. ISBN   978-0324640977.
  8. ↑ "FindLaw's United States Sixth Circuit case and opinions". Findlaw. Retrieved 2019-05-01.
This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.