I want to call your attention to a very important Internet free speech decision, perhaps the most significant of our domain name cases from the past several years. In Lamparello v. Falwell, the United States Court of Appeals for the Fourth Circuit held today that the use of the domain name www.fallwell.com for a web site devoted to denouncing the views of Rev. Jerry Falwell about homosexuality neither infringes Falwell's trademark in his name nor constitutes "cybersquatting." The court chose not to address the issue of whether the non-commercial character of our client's web site was sufficient to excuse it from the coverage of the trademark laws, because it was so clear that his web site did not create any likelihood of confusion about whether Falwell sponsored it. The court ruled that, where the web site is clear about being adverse to the interests of the trademark holder, the fact that the domain name for the web site resembles the trademark is not a reason to find infringement, because the domain name must be considered in the context of the web site.
The decision is important for two other reasons. First, it is a decision by the same court that ruled against the web site operator in the "People Eating Tasty Animals" case, PETA v Doughney. There, the operator of a web site at www.peta.org (now accessible at www.mtd.com/tasty) was found guilty of both infringement and cybersquatting. It has always been my feeling that the case turned on the fact that Doughney was plainly trying to hit PETA up for a payment for the domain name, but the case has been widely if incorrectly cited in briefs as standing for the proposition that a domain name in the form www.trademark.com was impermissible for a gripe site. That the same court that issued PETA has now made clear this construction of its opinion was erroneous - and Judge Michael, a member of the panel in Falwell, was also one of the judges in PETA - could well signal the end of the line for lawsuits of this kind.
Second, this opinion contains some welcome skepticism about the doctrine of "initial interest confusion," a trademark law analysis that some courts have deployed rather carelessly over the past several years to find trademark infringement even though there was no consumer confusion about whether a product or service was sponsored by a trademark holder. Trademark law has always protected against only a substantial likelihood of confusion by the reasonable consumer, and not against "temporary confusion" or confusion caused wholly by consumer carelessness. In some of the early Internet infringement cases, there was some tendency to "baby" consumers by assuming that Internet users are stupid and that domain names can easily mislead them way from the web sites of trademark holders. By holding that "initial interest confusion" is not present here, in part because of flaws in the doctrine and in part because it does not apply to non-commercial criticism anyway, the court has written a decision that may play an important role in the development of trademark law apart from the issue of domain names and the Internet.
The opinion is available on the our web site [PDF]. It will be posted on the Fourth Circuit's web site later today.
Our local counsel in the case was Ray Battocchi. of McLean, Virginia. We are also grateful to Richard Ravin, a New Jersey lawyer who was of counsel in the district court, to Rebecca Tushnet, Phil Malone and Bruce Keller who led the preparation of an amicus brief for a group of twelve law professors in the intellectual property field, and to Rebecca Glenberg who wrote a separate amicus brief for the ACLU and the ACLU-Virginia.
By Paul Alan Levy, Attorney
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