CHRISTOPHER LAMPARELLO, Plaintiff-Appellant
v.
JERRY FALWELL; JERRY FALWELL MINISTRIES, Defendants-Appellees.
UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT
2005 U.S. App. LEXIS 18156
August 24, 2005, Decided
DISPOSITION: REVERSED AND REMANDED.
MOTZ, Circuit Judge:
Christopher Lamparello appeals the district court's order enjoining him from
maintaining a gripe website critical of Reverend Jerry Falwell. For the
reasons stated below, we reverse.
I.
Reverend Falwell is "a nationally known minister who has been active as a
commentator on politics and public affairs." Hustler Magazine, Inc. v.
Falwell, 485 U.S. 46, 47, 99 L. Ed. 2d 41, 108 S. Ct. 876 (1988). He
holds the common law trademarks "Jerry Falwell" and "Falwell," and the
registered trademark "Listen America with Jerry Falwell." Jerry Falwell
Ministries can be found online at "www.falwell.com," a website which
receives 9,000 hits (or visits) per day.
Lamparello registered the domain name "www.fallwell.com" on February 11,
1999, after hearing Reverend Falwell give an interview "in which he
expressed opinions about gay people and homosexuality that [Lamparello]
considered . . . offensive." Lamparello created a website at that domain
name to respond to what he believed were "untruths about gay people."
Lamparello's website included headlines such as "Bible verses that Dr. Falwell chooses to ignore" and "Jerry Falwell has been bearing false witness
(Exodus 20:16) against his gay and lesbian neighbors for a long time." The
site also contained in-depth criticism of Reverend Falwell's views. . . .
Although the interior pages of Lamparello's website did not contain a
disclaimer, the homepage prominently stated, "This website is NOT affiliated
with Jerry Falwell or his ministry"; advised, "If you would like to visit
Rev. Falwell's website, you may click here"; and provided a hyperlink to
Reverend Falwell's website.
At one point, Lamparello's website included a link to the Amazon.com webpage
for a book that offered interpretations of the Bible that Lamparello
favored, but the parties agree that Lamparello has never sold goods or
services on his website. The parties also agree that "Lamparello's domain
name and web site at www.fallwell.com," which received only 200 hits per
day, "had no measurable impact on the quantity of visits to [Reverend
Falwell's] web site at www.falwell.com."
Nonetheless, Reverend Falwell sent Lamparello letters in October 2001 and
June 2003 demanding that he cease and desist from using www.fallwell.com or
any variation of Reverend Falwell's name as a domain name. Ultimately,
Lamparello filed this action against Reverend Falwell and his ministries
(collectively referred to hereinafter as "Reverend Falwell"), seeking a
declaratory judgment of noninfringement. Reverend Falwell counter-claimed,
alleging trademark infringement under 15 U.S.C. § 1114 (2000), false
designation of origin under 15 U.S.C. § 1125(a), unfair competition under 15
U.S.C. § 1126 and the common law of Virginia, . . . and cybersquatting under 15
U.S.C. § 1125(d).
The parties stipulated to all relevant facts and filed cross-motions for
summary judgment. The district court granted summary judgment to Reverend
Falwell, enjoined Lamparello from using Reverend Falwell's mark at
www.fallwell.com, and required Lamparello to transfer the domain name to
Reverend Falwell. Lamparello, 360 F. Supp. 2d at 773, 775. However,
the court denied Reverend Falwell's request for statutory damages or
attorney fees, reasoning that the "primary motive" of Lamparello's website
was "to put forth opinions on issues that were contrary to those of
[Reverend Falwell]" and "not to take away monies or to profit." Id.
at 775. . . .
II.
We first consider Reverend Falwell's claims of trademark infringement and
false designation of origin. . . .
Both infringement and false designation of origin have five elements. To
prevail under either cause [*7] of action, the trademark holder must prove:
(1) that it possesses a mark; (2) that the [opposing party] used the mark;
(3) that the [opposing party's] use of the mark occurred "in commerce";
(4) that the [opposing party] used the mark "in connection with the sale,
offering for sale, distribution, or advertising" of goods or services; and
(5) that the [opposing party] used the mark in a manner likely to confuse
consumers.
. . .
Trademark law serves the important functions of protecting product
identification, providing consumer information, and encouraging the
production of quality goods and services. . . .
Lamparello and his amici argue at length that application of the Lanham Act
must be restricted to "commercial speech" to assure that trademark law does not
become a tool for unconstitutional censorship. . . .
In its two most significant recent amendments to the Lanham Act, the Federal
Trademark Dilution Act of 1995 ("FTDA") and the Anti-cybersquatting Consumer
Protection Act of 1999 ("ACPA"), Congress left little doubt that it
did not intend for trademark laws to impinge the First Amendment rights of
critics and commentators. The dilution statute applies to only a "commercial
use in commerce of a mark," 15 U.S.C. § 1125(c)(1), and explicitly states
that the "noncommercial use of a mark" is not actionable. Id.
§ 1125(c)(4). Congress explained that this language was added to "adequately
address legitimate First Amendment concerns," . . .
Similarly, Congress directed that in determining whether an individual has
engaged in cybersquatting, the courts may consider whether the person's use
of the mark is a "bona fide noncommercial or fair use." 15 U.S.C. §
1125(d)(1)(B)(i)(IV). The legislature believed this provision necessary to
"protect the rights of Internet users and the interests of all Americans in free
speech and protected uses of trademarked names for such things as parody,
comment, criticism, comparative advertising, news reporting, etc." . . .
. . .
In the case at hand, we need not resolve that question or determine whether
Sections 32 and 43(a) [of the Lanham Act] apply exclusively to commercial speech because
Reverend Falwell's claims of trademark infringement and false designation
fail for a more obvious reason. The hallmark of such claims is a
likelihood of confusion - and there is no likelihood of confusion here. . .
.
Reverend Falwell's mark is distinctive, and the domain name of Lamparello's
website, www.fallwell.com, closely resembles it. But, although Lamparello
and Reverend Falwell employ similar marks online, Lamparello's website looks
nothing like Reverend Falwell's; indeed, Lamparello has made no attempt to
imitate Reverend Falwell's website. Moreover, Reverend Falwell does not even
argue that Lamparello's website constitutes advertising or a facility for
business, let alone a facility or advertising similar to that of Reverend
Falwell. Furthermore, Lamparello clearly created his website intending only
to provide a forum to criticize ideas, not to steal customers.
Most importantly, Reverend Falwell and Lamparello do not offer similar goods
or services. Rather they offer opposing ideas and commentary. Reverend
Falwell's mark identifies his spiritual and political views; the website at
www.fallwell.com criticizes those very views. After even a quick
glance at the content of the website at www.fallwell.com, no one seeking
Reverend Falwell's guidance would be misled by the domain name --
www.fallwell.com -- into believing Reverend Falwell authorized the content
of that website. No one would believe that Reverend Falwell sponsored a site
criticizing himself, his positions, and his interpretations of the Bible.
See New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308-09
(9th Cir. 1992) (stating that use of a mark to solicit criticism of the
markholder implies the markholder is not the sponsor of the use). n3
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n3 If Lamparello had neither criticized Reverend Falwell by name nor
expressly rejected Reverend Falwell's teachings, but instead simply had
quoted Bible passages and offered interpretations of them subtly different
from those of Reverend Falwell, this would be a different case. For, while a
gripe site, or a website dedicated to criticism of the markholder, will
seldom create a likelihood of confusion, a website purporting to be the
official site of the markholder and, for example, articulating positions
that could plausibly have come from the markholder may well create a
likelihood of confusion.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
. . .
2.
Nevertheless, Reverend Falwell argues that he is entitled to prevail under
the "initial interest confusion" doctrine. This relatively new and
sporadically applied doctrine holds that "the Lanham Act forbids a
competitor from luring potential customers away from a producer by initially
passing off its goods as those of the producer's, even if confusion as to
the source of the goods is dispelled by the time any sales are
consummated." Dorr-Oliver, 94 F.3d at 382. According to Reverend
Falwell, this doctrine requires us to compare his mark with Lamparello's
website domain name, www.fallwell.com, without considering the
content of Lamparello's website. Reverend Falwell argues that some people
who misspell his name may go to www.fallwell.com assuming it is his site,
thus giving Lamparello an unearned audience -- albeit one that quickly
disappears when it realizes it has not reached Reverend Falwell's site. This
argument fails for two reasons.
First, we have never adopted the initial interest confusion theory; rather,
we have followed a very different mode of analysis, requiring courts to
determine whether a likelihood of confusion exists by "examining the
allegedly infringing use in the context in which it is seen by the
ordinary consumer." Anheuser-Busch, Inc. v. L & L Wings, Inc.,
962 F.2d 316, 319 (4th Cir. 1992) . . .
Moreover, even if we did endorse the initial interest confusion theory, that
theory would not assist Reverend Falwell here because it provides no basis
for liability in circumstances such as these. The few appellate courts that
have followed the Ninth Circuit and imposed liability under this theory for
using marks on the Internet have done so only in cases involving a factor
utterly absent here -- one business's use of another's mark for its own
financial gain. . . .
III.
We evaluate Reverend Falwell's cybersquatting claim separately because the
elements of a cybersquatting violation differ from those of traditional
Lanham Act violations. To prevail on a cybersquatting claim, Reverend
Falwell must show that Lamparello: (1) "had a bad faith intent to profit
from using the [www.fallwell.com] domain name," and (2) the domain name
www.fallwell.com "is identical or confusingly similar to, or dilutive of,
the distinctive and famous [Falwell] mark." . . .
"The paradigmatic harm that the ACPA was enacted to eradicate" is "the
practice of cybersquatters registering several hundred domain names in an
effort to sell them to the legitimate owners of the mark." . . . The
Act was also intended to stop the registration of multiple marks with the
hope of selling them to the highest bidder, "distinctive marks to defraud
consumers" or "to engage in counterfeiting activities," and "well-known
marks to prey on consumer confusion by misusing the domain name to divert
customers from the mark owner's site to the cybersquatter's own site, many
of which are pornography sites that derive advertising revenue based on the
number of visits, or 'hits,' the site receives." . . . The Act was not intended to prevent "noncommercial uses
of a mark, such as for comment, criticism, parody, news reporting, etc.,"
and thus they "are beyond the scope" of the ACPA. . . .
After close examination of the undisputed facts involved in this
case, we can only conclude that Reverend Falwell cannot demonstrate that
Lamparello "had a bad faith intent to profit from using the [www.fallwell.com]
domain name." . . . Lamparello clearly employed
www.fallwell.com simply to criticize Reverend Falwell's views. . . . That Lamparello provided a
link to an Amazon.com webpage selling a book he favored does not diminish
the communicative function of his website. The use of a domain name to engage in
criticism or commentary "even where done for profit" does not alone evidence a
bad faith intent to profit. . .
Equally important, Lamparello has not engaged in the type of conduct
described in the statutory factors as typifying the bad faith intent to
profit essential to a successful cybersquatting claim. . . .
Notably, the case at hand differs markedly from those in which the courts
have found a bad faith intent to profit from domain names used for websites
engaged in political commentary or parody. For example, in PETA we
found the registrant of www.peta.org engaged in cybersquatting because
www.peta.org was one of fifty to sixty domain names Doughney
had registered, PETA, 263 F.3d at 362, and because Doughney had
evidenced a clear intent to sell www.peta.org to PETA, stating that PETA
should try to "'settle' with him and 'make him an offer.'" . . . In contrast, Lamparello did not
register multiple domain names, he did not offer to transfer them for
valuable consideration, and he did not create a likelihood of confusion. . .
.
REVERSED AND REMANDED