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On October 9, 2002, my attorney submitted this letter to the Court of
Appeals to supplement the briefs that he had previously submitted to them. (Note that this graphic
actually represents pieces of two pages that I've "pasted" together.)
And on October 18, 2002, my attorney followed up on the letter
to the Court of Appeals with this submission to the District Court.
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UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
| THE TAUBMAN COMPANY |
| LIMITED PARTNERSHIP, |
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| Plaintiff, | |
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| | Civil Action No. 01-72987 |
| v. |
| | District Judge Zatkoff |
| WEBFEATS AND HENRY MISHKOFF, |
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Magistrate Judge Komives |
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| Defendants. | |
STATEMENT OF ADDITIONAL AUTHORITIES
Defendants present the following additional authorities, which were provided to the Court of
Appeals under Rule 28(j) of the Federal Rules of Appellate Procedure shortly before oral argument
which was held on October 16, 2002, and which also support defendants' positions on the
cross-motions for summary judgment now pending before the Court:
The Sixth Circuit has held in the context of a motion for summary judgment that the issue of
likelihood of confusion is a question of law for the Court, and not a question of fact. Jet, Inc.
v. Sewage Aeration Sys., 165 F.3d 419, 422 (6th Cir. 1999). That decision supports our
contention that summary judgment should be granted dismissing plaintiff's trademark claims.
A very recent decision by Chief Judge Posner for the Seventh Circuit, Ty Inc. v.
Prettyman, No. 02-1771, 2002 WL 31206958 (7th Cir., October 4, 2002), supports the argument that
a domain name can denote the subject of a web site and not its author. The decision overturned an
injunction issued against an unauthorized reseller of Beanie babies who used the name
bargainbeanies.com for a web site on which she marketed Beanie baby products.
A pair of recent Ninth Circuit decisions supports the arguments that the doctrine of
nominative fair use and the First Amendment protect Mishkoff's right to use Taubman's trademark for
a web site describing Taubman's goods and services. Cairns v. Franklin Mint Co., 292 F.3d
1139 (9th Cir. 2002), upheld the use of Princess Diana's trademarked name and likeness to describe
its own Diana-related products, employing the nominative fair use doctrine. Mattel, Inc. v. MCA
Records, 296 F.3d 894 (9th Cir. 2002), upheld the rock group Aqua's right to use plaintiff's
trademarked name "Barbie" in the text and title of a song that commented on Barbie; the Court
declined to reach the nominative fair use argument because it adopted and applied the Second
Circuit's line of cases recognizing a First Amendment right to use a trademark in the title of a
creative work where the trademark is relevant to the subject of the work.
CPC Int'l v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000), supports the argument that
the "taubmansucks" web site does not violate the trademark laws. The Fourth Circuit reversed an
injunction against a web site at Skippy.com that denounced the maker of "Skippy" peanut butter for
allegedly using the courts to steal that trademark from its rightful owner, holding that the speech
was fully protected speech and not commercial. The lower court had issued the injunction to enforce a
previous injunction that barred defendants from infringing the "Skippy" mark by using it on certain
food products.
A portion of Elvis Presley Enterprises v. Elvisly Yours, 936 F.2d 889, 897 (6th Cir.
1991), which limited an injunction against a trademark infringer to forbid only the use of the
plaintiff's trademarks "for commercial purposes," supports the argument that the scope of the
trademark laws are limited to commercial uses. The case indicates that writing a book about a person
with a trademarked name is not a commercial use, and supports defendants' argument that merely
creating a web site that praises a shopping mall is also not a commercial use of the trademark.
Respectfully submitted,
Barbara Harvey (P25478)
Suite 3060
Penobscot Building
645 Griswold
Detroit, Michigan 48226
(313) 963-3570
Paul Alan Levy (DC Bar 946400)
Allison M. Zieve (DC Bar No. 424786)
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000
Attorneys for Defendants
October 18, 2002
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