The Prosecution of Cybergripers Under the Lanham ACT

• Author: Blossom Lefcourt
• Position: Assistant Professor
• Pages: 269-303

Page 269

Introduction

The modern value of a trademark lies not in the product but in what one commentator calls the "atmospherics" surrounding the mark itself.¹ As the American capitalist system has matured, so has the scope of legal protection afforded owners of marks in exchange for their investment in creating the atmospherics.² To illustrate: an early twentieth century court found that dairy products bearing the same trade name- Borden's-but originating from different producers would not create consumer confusion because the goods, ice cream and condensed milk, were not in direct competition.³ This outcome is hard to imagine under contemporary trademark jurisprudence, which prevents the use of the prefix Me by entities other than the fast-food chain McDonalds, even by producers not in the restaurant industry, because other uses of those two letters devalues the immense investment the Golden Arches has made to distinguish itself in the marketplace.⁴Page 270

Owners of famous marks vigilantly protect the uniqueness of their brand identity by enforcing the federal property rights granted them under the Lanham Act.⁵ Claims available to intellectual property owners include consumer confusion and unfair competition under 15 U.S.C. ßß 1114⁶ and 1125(a),⁷ and dilution⁸ under the Federal Trade-Page 271mark Dilution Act (FTDA), 15 U.S.C. ß 1125(c).⁹ More recent claims of trademark infringement on the Internet may also be filed under the And Cybersquatting Protection Act (ACPA)¹⁰ and the Internet Corpo-Page 272ration for Assigned Names and Numbers' (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP).¹¹

The ease with which Web sites can be created and accessed presents a particular challenge for mark owners who strive to control the image of their brand.¹² The challenge has been particularly apparent in litigation arising from the unauthorized use of famous marks in Web site domain names;¹³ an unauthorized use categorized as either "cybersquatting" or "cybergriping." Both cybersquatter and cybergriper Web sites typically contain the targeted entity's mark in the domain name, but the motivation behind the use of the mark is distinguishable. The intent of a cybersquatter is generally to profit from the unauthorized use of a mark by holding a domain name hostage from the owner of a mark,¹⁴Page 273 whereas a cybergriper uses a mark in a domain name to aid in the dissemination of a negative message about the mark owner.¹⁵

A mark can be incorporated into the domain name of a cybergriper or cybersquatter Web site in two ways: either alongside a pejorative, such as walmartsucks.com and starbucked.com,¹⁶ or simply as a standalone name, such as kmart.com. Courts deciding cases in which the unauthorized use of a mark in a domain name includes a pejorative have developed a bright-line rule, which states that such a use is permissible under the Lanham Act because the average consumer would obviously be aware that a company-sponsored Web site would not use a pejorative in its own domain name.¹⁷ Thus no Lanham Act violation occurs because no consumer confusion arises. But what about those unauthorized uses of stand-alone marks? The jurisprudence surrounding litigation of this sort of infringement is much more muddled, especially when the mark in question signifies not the new-age religion of fast-food consumerism promoted by McDonalds but the age-old religion of Christianity promoted by Jews for Jesus. Here is where the synchronous functions of the Internet as a marketplace of ideas and a marketplace of consumerism meet.

In part I of this note, I discuss how courts examine cybergriper Web sites under the traditional likelihood of confusion analysis of 15 U.S.C. ßß1114 and 1125(a).¹⁸ While courts deciding these cases are generally correct in finding a likelihood of confusion, the analyses are ultimately unsatisfying because the domain names and content of the Web sites are not considered components of one entity. The failure by courts to adopt a real-world approach that views a domain name as one component of a singular entity-a Web site-results in offending free expression concerns. I argue that a better approach would consider domain names analogous to titles of expressive works in traditional media, such as film or print.

In part II, I discuss the analyses used by courts in claims brought against cybergripers under the FTDA. In deciding cybergriper claims brought under the FTDA, courts have conflated two references to com-Page 274merce contained in the Lanham Act: "use in commerce" for jurisdic-tional purposes under ßß 1114 (1)(a) and 1125(a) and the "noncommercial use" exception to application of the FTDA under ß 1125(c)(4)(B). The interchangeable use of two distinct references to commerce has contributed to a perplexing FTDA jurisprudence that holds the unauthorized use of marks by cybergripers commercial and thus unlawful when there is even a de minimus commercial presence on a Web site, but the unauthorized use of marks in plainly commercial ventures such as pop songs, are noncommercial and therefore lawful. I argue that this confounding and inequitable rule can be remedied, and that the legislative intent behind the FTDA can be more fully realized, by abandoning the distinction between commercial and noncommercial expression in favor of the balancing test endorsed in the Supreme Court's commercial expression doctrine.

I Claims Brought under Traditional Trademark Infringement

A Likelihood of Confusion under ßß 1114 and 1125(a)

Mark owners bringing suit against cybergripers typically claim the cybergriper's use of the mark causes consumer confusion under both ßß 1114 and 1125(a).¹⁹ Section 1114 creates a cause of action for owners of registered marks against any person who makes an unauthorized use of the mark in commerce "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 . . . ."²⁰ Section 1125(a) essentially functions as a federal unfair competition regulation for common law marks.²¹ Section 1125(a)(1)(A) protects both registered and unregistered marks against unauthorized "uses in commerce," which are "likely to cause confusion,Page 275 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 commercial activities . . . ."²²

To prove infringement under both ßß 1114 and 1125(a), a plaintiff must establish: "(1) that Plaintiff possesses the mark; (2) that Defendant uses the Plaintiff's mark; (3) that such use occurs in commerce; (4) in connection with the sale or offering for sale, distribution, or advertising of goods or services; and (5) in a way that is likely to cause confusion among consumers."²³ While ß 1125(a) has a commercial use requirement, ß 1114 has no commercial use requirement and applies only to registered marks.²⁴

B The Misapplication of ßß1114 and 1125(a) to Identical-Name Cybergriper Cases

Most courts deciding cybergriper cases analyze likelihood of confusion under ßß 1114 and 1125(a) simultaneously. In cybergriper cases, the confusion between the first and secondary user arises because of the domain name. For example, the Web site www.porschev8.com may appear to be sponsored by the famous German sports-car manufacturer, but in reality the Web site sponsor is an individual with an avid interest in Porsches.²⁵ Existing case law indicates that a finding of likelihood of confusion may be predetermined in identical-domain-name cybergriper cases in which the cybergriper has no recognized legal interest in the use of the mark.²⁶ Indeed, some courts maintain that consumer interests arePage 276 best served when the owner of a mark is the only entity allowed to use its mark in a domain name because consumers assume use of a mark in a domain name signifies a property interest in the mark.²⁷

1. Planned Parenthood Federation of America v Bucci

In Planned Parenthood Federation of America v. Bucci²⁸, the well-known family-planning-services provider sought a preliminary injunction against an antiabortion activist who maintained the Web site www. plannedparenthood.com. At the time the case was brought, Planned Parenthood maintained its own Web site, www.ppfa.org.²⁹ Whereas Planned Parenthood's mission is to provide information about abortion counseling and services, the offending Web site bearing the organization's name advanced an antichoice ideology and promoted a book titled The Cost of Abortion.³⁰ Bucci, the defendant, admittedly chose to use the claimant's mark with the "specific intent to damage Planned Parenthood's reputation and to confuse unwitting users of the Internet" in an effort to spread his ideological message to a broad audience.³¹ Indeed, the front page of Bucci's Web site intimated the site was the actual Planned Parenthood Web page.³² Unsurprisingly, the New York district court found a likelihood of consumer confusion...