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Act 57: We Reply to Their Opposition

This is our reply to Taubman's opposition to our motion for a stay pending our appeal of the injunction that forced me to remove my TaubmanSucks.com site from the Web. This brief was created by Paul Levy, the Public Citizen attorney who is handling my appeal.


Plaintiff-Appellee,   )
v.   )   Nos. 01-2648 and 01-2725
Defendants-Appellants.   )


Appellants Henry Mishkoff and his sole proprietorship have sought a stay pending appeal of the preliminary injunction barring him from "using websites on the Internet with [specified] domain names," and ordering him to "remove [those] websites from the Internet." In his moving papers, Mishkoff argued that the district court violated well-established First Amendment principles by issuing a prior restraint without any compelling interest. Mishkoff also showed that a trademark violation can be found only when viewers are likely to be confused about "source," that no viewer is likely to believe that a web site labeled "Taubman Sucks" is sponsored by Taubman, and that every court that has considered such a site in the past has ruled against the trademark plaintiff. Mishkoff also pointed out that, despite the general rule that a preliminary injunction is reviewed on an abuse of discretion standard, errors of law are reviewed de novo and factual findings in free speech cases are subject to de novo review under Bose Corp. v. Consumers Union, 466 U.S. 485, 499 (1984).

Rather than address these arguments specifically, appellant has chosen to rest largely on the general proposition that arguments were made to the district judge about likelihood of confusion and prior restraint, that because he both issued the preliminary injunction and denied a stay, he must have considered all these points and rejected them, and that these explicit or implicit findings and conclusions should receive appellate deference. With only a few exceptions, addressed below, Taubman does not attempt to explain the findings or conclusions below, or to counter Mishkoff's legal analysis, which therefore stands unrebutted.

For example, Taubman invokes the district court's indirect response to the argument that enjoining the "sucks" site would constitute a prior restraint, stating that the First Amendment does not apply once a defendant has been found in violation of the Lanham Act. Opp. 5. Taubman does not cite any cases to support this argument; instead, it notes that the district court cited this Court's decision in Semco v. Amcast, 52 F.3d 108 (6th Cir. 1995). However, as we showed in our opening brief, not only does Semco not stand for the proposition that a Lanham Act injunction can avoid all scrutiny under the prior restraint doctrine (nor does it support the district court's analysis of the commercial speech doctrine in deciding that the Lanham Act applies here), Mem. 8-9, but several courts of appeals, following Supreme Court guidance, have held that the First Amendment does require narrowly tailored injunctions in the Lanham Act context specifically, and in commercial speech cases generally. Mem. 13-14. Taubman makes no effort to rebut these arguments.

Taubman also argues that the preliminary injunction against the "sucks" site is not a prior restraint "inasmuch as the injunction purports to limit only Defendants' use of domain names incorporating Plaintiffs trademarks; the injunction does not proscribe or in any way restrain speech of any kind." Opp. 5-6. We disagree with the proposition that an injunction against the domain name "Taubmansucks.com" "does not proscribe speech in any way"; the courts have recognized that domain names are speech protected by the First Amendment, and, as we explained in our opening brief, the injunction is tantamount to an order barring the erection of a large highway sign next to the mall stating, "Taubman Sucks." The order is an impermissible prior restraint for that reason alone.

But appellee errs in arguing that the order under appeal bars only the "sucks" domain names. The injunction both forbids "using websites on the Internet with the following domain names," Order, page 1, and orders defendants to "remove the websites with the following domain names... from the Internet." Id. pages 1-2. These two portions of the injunction would be duplicative if they both did no more than prevent Mishkoff from using certain domain names; rather, the second part of the injunction requires the removal of certain websites from the Internet, using the domain names at which they were posted to identify the material that was to be removed. Moreover, this two-part injunction was precisely what plaintiff had requested, on the theory that the "sucks" website contained defamatory statements and confidential information and hence was subject to being enjoined independent of the domain name issue. Indeed, plaintiff explained in the court below that it had crafted a proposed order not just to restrict use of the domain names, but also "to expressly require that these additional websites be shut down," Docket Item No. 10, at page 3. What's more, far from narrowing its preliminary injunction when Mishkoff noted its breadth in moving for a stay, the district court attempted to justify enjoining the site itself by mentioning, in a footnote, that it was "by no means implausible" that an Internet viewer could be confused about whether the contents of the home page were sponsored by Taubman (we address that point below). The injunction thus cannot be defended on the theory that it is limited to the domain names.

Nor, indeed, does the creation of a new web site coupling the name of plaintiff's firm with a derogatory word show that Mishkoff remains free of prior restraint. Because the injunction forbade Mishkoff from leaving his previous "sucks" website posted on the Internet, Mishkoff was unable to post the materials previously posted at Taubmansucks.com using the new GiffordKrassGrohSprinkleSucks.com domain name. Nor did he have the time to create a whole set of new text explaining in detail the abuses to which he was subject throughout the litigation. Instead, the new "sucks" site begins the account of the litigation where the enjoined site left of, and the prior restraint continues to prevent him from posting on the Internet the hundreds of printed pages that appear in the district court record at Docket Item 42, and on the CD submitted with the motion for a stay.

Note: Moreover, if the district court's theory of this case is upheld, the new "sucks" site could also be enjoined. After all, plaintiff's law firm undoubtedly has at least a common law trademark claim in its name.

Taubman also asserts that court below "specifically... ruled that Plaintiff will suffer without an injunction." Opp. 6. Taubman does not provide a citation for this point, for good reason. The court's opinion on the preliminary injunction discusses the supposed harm to plaintiff from Mishkoff's first web site, but its only mention of harm to the plaintiff from the "sucks" site is the judge's concern that Mishkoff's criticism represented an effort "to inflict further economic harm," and as our opening brief showed (without any response by Taubman), that is not a sufficient basis for a prior restraint. Mem. 7-8. There was no mention of "harm to the plaintiff" in the order denying a stay pending appeal. Consequently, there are no findings on this issue to which any deference can be given.

Taubman also relies on the "findings" in the order below denying a stay pending appeal, and the district court's "careful" analysis and "well-considered, thoroughly written order...." Opp. 3. We take particular issue with district court's contention it is "by no means implausible" that Internet viewers might be confused because the district court entered the phrase "shops at willow bend" into a search engine and obtained a search result that contained the clause, "the irony is that I do not believe that the Shops at Willow Bend (an impressive new shopping mall in Piano, Texas)...." Stay Denial Order at 3 n.1. Based on this evidence, the district judge suggested that these search results might bring Internet viewers to the "sucks" site out of confusion about whether, because this clause (and the page itself) contains a favorable reference to the mall, Taubman is the sponsor of the site. Id. As we showed in our moving papers, to which the entire home page of the web site is appended, there is no way that a person visiting this page could possibly believe that Taubman sponsored a page which discusses Taubman's "sucky" lawyers and concludes that, although Taubman has created a nice mall, it "sucks indirectly" because it is responsible for its lawyers' abuses.

The plaintiff did not offer this search as evidence, and regrettably, the district court failed to place this basis for its ruling in the record. However, Mishkoff has replicated the Google search on which the district court relied, and those results are attached to his affidavit. The "sucks" site shows up at search result number 32 (out of a total of more than 3000 "hits") on the seventh printed page and the fourth screenful of listings of search results. Among the earlier search results are numerous links to the official "shopwillowbend.com" web site, to the portion of the Taubman.com web site that is devoted to Shops at Willow Bend, and to other web sites on which Taubman appears to be advertising its mall. Thus, a viewer would not find the search results that concerned the district court until after he or she had reviewed literally dozens of other sites that are sponsored by Taubman itself and which, presumably, did not satisfy the viewer by providing the desired information. This is not evidence of likelihood of confusion about source but quite the opposite.

Regrettably, Mishkoff was not given notice that this evidence was before the court below, and so he had no opportunity to rebut the inferences that the court seems to have drawn from it.

Note: Recognizing that search results are dynamic over time, because the exact listing of results changes as the search engine's database of pages downloaded from the web changes over time, Mishkoff Affidavit, ¶5, Mishkoff is filing a motion in the district court asking the judge to place his own search results into the record for this Court's review.

Indeed, it was wholly inappropriate for the district court to conduct its own search in this fashion, outside the presence of the parties and without giving the parties notice of its activities. Cf. United States v. Walls, 443 F.2d 1220, 1223 (6th Cir. 1971) (reversible error to view premises without opportunity for defendant to be present). The very process reflected by the mention of this evidence shows that the district court was not considering the evidence in a dispassionate manner that warrants deference. To the contrary, this was a court that was determined to find a way to justify a completely unsupportable prior restraint, even to the point of basing its decision on evidence of its own creation that was not shared with the defendant.

The Court should grant the motion to stay that prior restraint. Because a briefing schedule has recently been issued, the portion of our motion seeking an expedited schedule in this Court has been rendered moot in part; however, oral argument should be scheduled promptly after the briefs in the case have been submitted.

Respectfully submitted,

Paul Alan Levy

Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000

Attorneys for Appellants

January 30, 2002

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