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A. Domain Names Are A Webhost's Description of His Website's Contents and Hence Are Protected by the First Amendment Unless The Description Is False or Misleading.

Taubman disputes Mishkoff's point that domain names often contain a communication about the contents of a website that is, therefore, protected by the First Amendment. According to Taubman, a domain name is nothing more than a "locator" for a website that describes its source, much as the placement of a brand name on a product describes its source, and is not a communicative act at all. TaubBrf. 46. On this theory, Taubman argues that, because the preliminary injunctions do no more than prevent Mishkoff from placing a misleading source identifier on the websites, they do not violate the First Amendment and are justified by the Lanham Act. According to Taubman, the preliminary injunctions only prohibit the use of its trademark in domain names, and, even if the domain names enable Mishkoff to bring his website to the attention of web users, there is no First Amendment right "to enable web user accessibility." Id. 48.

This argument is erroneous for several different reasons. Although Taubman is correct that domain names function primarily as locators or identifiers for their websites, that function is scarcely the same as identifying the source of the website. The "source" of the website is just one characteristic that the domain name may identify; the name may as easily identify the subject or title of the page. Moreover, as the Second Circuit has held in the line of cases beginning with Rogers v. Grimaldi, 875 F2d 994 (CA2 1989), cited in MishBrf. 21, the titles of literary works are expression protected by the First Amendment; consequently, even if a work is about a person or thing that has a trademarked name, the author is entitled to give the work that name. Taubman never grapples with this line of cases or responds to the point.

[Note: Indeed, contrary to Taubman's argument, even source identification is "speech" protected by the First Amendment. See MishBrf. 20-21. The First Amendment does not protect mis-identification of source, especially in the commercial context, because false speech is not protected.]

Taubman claims that Mishkoff's analysis is all theory, but has no record or case support. However, Mishkoff's brief cited cases discussing the propriety of using domain names as subject or title identifiers rather than source identifiers, MishBrf. 37, 44, and his argument is based on facts in the record and the common experience of Internet users.

Although it is unquestionably true that domain names are sometimes used to denote the source of a website, it is also true that they are used to denote subject or title (for example, www.apples.com). Sometimes source and subject and title may all be the same (as in www.gm.com), but there are many domain names that plainly do not denote their source at all - for example, the "sucks" domain names that are at issue in the second injunction. Taubmansucks.com, as apparent from the name, does not denote the source, but that the website is about how Taubman "sucks."

More generally, one cannot tell, simply by examining a domain name in isolation, whether it identifies source, title or subject - whether, to use the analogy presented in MishBrf. at 37, the name is a subject, title or author card in the card catalogue of the Internet. (The predominant public image of the Internet is that of a library, as a source of information, and not as a place to go shopping. http://www.markle.org/news/AccountabilityChapter1.pdf, at 20-25.) Accordingly, the more recent cases involving domain names, cited in MishBrf. at 41-42, reject the theory that a trademark owner can automatically win a Lanham Act claim by invoking the doctrine of initial interest confusion based on the domain name alone, and instead consider the domain name in the context of the underlying web site to decide whether the defendant had fairly used a domain name that either contains, or indeed, consists solely of, the plaintiff's trademark.

The case authority on which Taubman relies for a different theory of how domain names function did not rely on any more "evidence" in the records of their cases than Mishkoff has used in his briefs here. In PACCAR v. TeleScan Technologies, 115 F.Supp.2d 772 (EDMich 2000), on which Taubman relies at length, the court drew its "factual" assertions about the Internet from a lengthy blocked quotation from Brookfield Communications v. West Coast Entertainment, 174 F3d 1036 (CA9 1999). Moreover, not only was there no record on the question but the parties did not even brief the question; the court spoke ex cathedra, perhaps based on the judges' experience as Internet users.

Many of these early cases predicated their analyses on the proposition that, unless a trademark owner could control every domain name that was even close to their names, they would become invisible on the Internet because Internet users were not very bright and easily confused by similar names, and because there was, supposedly, nothing analogous to the telephone directory to help Internet users searching for a particular company to find the official website. See TaubBrf at 45, citing cases.

More recent cases take a much more enlightened view of Internet users and a more skeptical attitude toward claims that web users will be easily confused by domain names. In part, this view is due to the evolving technology of search engines and increasing consumer awareness of how to use them. Thus, in Strick Corp. v. Strickland, 162 FSupp2d 372, 377, 380 (EDPa 2001), and Chatam Int'l v. Bodum, 157 FSupp2d 549, 558-559 (EDPa 2001), the courts dismissed the theory that Internet users would easily be distracted from finding the sites they were really seeking. Instead, these decisions recognize, if an Internet user does not succeed with her first "name guess," she will guess another name or, indeed, use a search engine. The Ninth Circuit itself recently distinguished Brookfield Communications in a case in which there was a two-letter difference between plaintiff's trademark and defendant's domain name, dismissing plaintiff's concerns about lost customers by saying that Internet users are aware of the importance of "very small differences" in domain names. Entrepreneur Media v. Smith, 279 F3d 1135, 1147 (CA9 2002). See MishBrf. at 41-42, 48.

This Court has yet to address the question of how domain names function; its early rulings in such cases have been cautious and avoided broad pronouncements. See Bird v. Parsons, 2002 WL 1012175 (CA6 May 21, 2002); Allard Enterprises v. Advances Programming Resources, 249 F3d 564, 575 (CA6 2001); Data Concepts v. Digital Consulting, 150 F3d 620 (CA6 1998). To the extent that the Court is prepared to rule on the preliminary injunction without evidence from plaintiff carrying its burden of proof on the question whether Mishkoff's names not only create a likelihood of confusion, but create so great a likelihood as to outweigh Mishkoff's First Amendment right to identify the subject of his websites, the Court should employ an analysis similar to Entrepreneur and Strick and uphold Mishkoff's right to use the challenged domain names and websites.

Moreover, the evidence in the appellate record shows how effectively Internet users could employ search engines to find Taubman's official mall site if they reached Mishkoff's shops site or sucks site but wanted the official site instead. The district court entered the terms "shops at willow bend" into a search engine, and produced a search result in which the first two entries - and four of the first ten entries - were Taubman's own websites. REN53, JA201. No Mishkoff site appeared until the 32nd listing on the fourth page of search results. Id., JA207. Indeed, Internet users would not have had to use a search engine had they reached Mishkoff's "shops" site in error, in light of the prominent link to Taubman's website that appeared at the very top of Mishkoff's web site. (A copy of that page is attached to this brief as an addendum).

Thus, this case is about Taubman's effort to suppress any portrayal of its mall that it cannot control and to suppress criticism of its conduct in this litigation. Taubman's own brief makes this point most effectively, when it argues that the reason why it needs the domain name is to ensure that customers can find its site about the mall, TaubBrf. 45-46, but that it does not matter if some other person is barred from using a trademark in a domain name because there is no First Amendment right "to the best position to enable web user accessibility." Id. 48. According to Taubman, its trademark rights need not "yield to the exercise of First Amendment rights where adequate avenues of communication exist." Id. 55.

This argument is wrong as a matter of fact and law. It is wrong as a matter of law because the adequacy of alternative means of communication is a part of the analysis for time, place and manner limitations on speech. City of Ladue v. Gilleo, 512 US 43, 56 (1994). The preliminary injunctions in this case contain a content-based restriction - under Taubman's argument, Mishkoff is entitled to mount a website to praise or criticize it, so long as he does not use its name to describe the subject of his commentary.

Taubman suggests that content based speech restrictions do require an analysis of alternate means of communication because the misuse of its trademark constitutes a trespass on its property, which therefore requires consideration of whether there are other ways the defendant could speak without using the trademark. TaubBrf., citing Dr. Seuss Enterprises v. Penguin Books, 924 FSupp 1559, 1573 (SDCal. 1996), and Dallas Cowboys Cheerleaders v. Pussycat Cinema, 604 F2d 200, 206 (CA2 1979). In these cases, however, the defendants did not purport to be commenting on the plaintiff or its trademark, and Dr. Seuss expressly recognized that, if the defendant had been commenting on its books, the use of the trademark would be justified as necessary to describe those books. 942 FSupp at 1572, 1573 n21 (citing 604 F2d at 206). And in the case cited by Dallas Cowboys to support the consideration of adequacy of alternatives, the issue was whether members of the public could enter the property owner's mall to protest; the trespass was clear and the question was whether the trespass was justified. A trademark, however, does not grant an unqualified right to use certain words exclusively, and the question in a case like this is whether there is a trespass at all. Any assumption that Taubman has a "property right" to exclude Mishkoff, before the Court has decided there is fair use or a First Amendment right to use its mark in order to identify the subject of his speech, would be an exercise in question-begging.

Moreover, as a matter of fact, there is no adequate alternative to using the name of Taubman's mall and company to denote the subjects about which Mishkoff wishes to speak. Given the vastness of the Internet, the right to post a website is useless unless the operator can bring his site to the attention of those who might be interested to know of its existence. Domain names play an important role in that process, and so long as the website is truly related to the words embodied in the domain name, its operator should be allowed to use a trademarked word in the name as an accurate description of the site.

Taubman also errs in contending that the injunctions under review are directed only at the domain names and not at the underlying websites. The district court has repeatedly characterized the first injunction as being directed at the site as well as the name. REN12, at 1, JA124; REN40, at 2, JA171. Plaintiff's preliminary injunction brief had likewise sought to "divest Defendants of their ring of websites..." REN3, Memorandum 14, JA30. Not only does Taubman fail to show that the "shops" injunction is limited, its appellate brief repeatedly defends the injunction on the theory that "the website itself," and not just the domain name, infringes its trademark. TaubBrf. 184-185.

Indeed, the language of the "sucks" injunction is broader than the language of the "shops" injunction, and on its face bars the "sucks" web site. By its terms, the second injunction both forbids "using websites on the Internet with the following domain names," REN40, page 15, and orders defendants to "remove the websites with the following domain names... from the Internet." Id. pages 15-16. These two portions of the injunction would be duplicative if 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 contained the language that 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," REN10 at 2, JA117. Following this request, the expanded preliminary injunction as issued by the Court first barred Mishkoff from using websites with the specified domain names, and in a separate paragraph ordered him to remove those websites from the Internet. REN 40, at 1, JA184. And, 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 "sucks" site were sponsored by Taubman. Accordingly, neither injunction can be defended on the theory that it is limited to the domain names.

Next: The Injunction Against the "Sucks" Site

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