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As expected, Judge Zatkoff denied my motion for a stay of his order
to remove my TaubmanSucks.com site from the Web.
For some reason, his decision took quite a while to reach me. (Bad news
travels slowly?) The order is dated December 26, 2001, and the envelope is postmarked with the same
date, but it didn't reach me until January 4, 2002. Good thing it wasn't an injunction ordering me to
remove yet another site from the Web, I would have been cited for contempt of court by now.
Anyway, here's the text of the judge's order [with my comments
enclosed in brackets, like this].
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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
THE TAUBMAN COMPANY LIMITED PARTNERSHIP, Plaintiff,
v. WEBFEATS and HENRY MISHKOFF, Defendants.
CASE NO. 01-72987
HON. LAWRENCE P. ZATKOFF
ORDER
This matter is before the Court on Defendants' Motion for Stay Pending Appeal. On
December 7, 2001, the Court expanded its preliminary injunction, which initially enjoined
Defendants from using a website with the domain name www.shopsatwillowbend.com, to include
websites with the following domain names:
- www.taubmansucks.com
- www.willowbendsucks.com
- www.willowbendmallsucks.com
- www.shopsatwillowbendsucks.com
- www.theshopsatwillowbendsucks.com
Defendants argue that by imposing this expanded preliminary injunction, the Court issued a prior
restraint on speech without personal jurisdiction. In response, Plaintiff argues that an appeal is not
likely to succeed, and therefore the expanded preliminary injunction should not be stayed.
The Court reviewed the materials submitted. As to the argument that the Court lacks
personal jurisdiction, the Court finds that, for the reasons stated in the Court's December 7, 2001
Opinion and Order, Defendants waived their defense of personal jurisdiction. Further, assuming
arguendo that Defendants did not waive their defense of personal jurisdiction, the Court would, for
the reasons stated in the December 7, 2001 Opinion and Order, have personal jurisdiction over
Defendants. In particular, the Court disagrees with Defendants' assertion that "federal courts around
the country" have "unanimous[ly]" held that "non-interactive" websites do not give rise to personal
jurisdiction. See Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316, 1321 (9th Cir. 1998) (finding
personal jurisdiction over an Illinois defendant that created a non-interactive website because the
effects of his harmful conduct were felt by a company that was a resident of California).
Defendants' argument based on the First Amendment is stronger than Defendants' argument
that the Court lacks personal jurisdiction; nevertheless, that argument also fails. When properly
invoked, the protections of the First Amendment are mighty. The protections of the First
Amendment, however, are not properly invoked by a defendant that is found to be in violation of the
Lanham Act. See Semco, Inc. v. Amcast, Inc., 52 F.3d 108, 111 (6th Cir. 1995) ("The House
apparently intended to limit the application of the Lanham Act strictly to 'commercial speech,' as
that phrase has been defined in the constitutional jurisprudence of the Supreme Court. 'Commercial
speech' receives much narrower First Amendment protection than other speech, and the Constitution
does not protect deceptive or misleading commercial speech."). In order to violate the Lanham Act,
a defendant's activities must be likely to cause confusion, and there must be some commercial use.
See Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 280 (6th
Cir. 1997) ("The touchstone of liability under [the Lanham Act] is whether the defendant's use of
the disputed mark is likely to cause confusion among consumers. . . .").
As to the "likelihood of confusion" element, Defendants are under higher scrutiny because
they have already been enjoined. See Sunbeam Products, Inc. v. West Bend Co., 123 F.3d 246, 260
(5th Cir. 1997). Defendants' "sucks.com" websites may cause confusion because it is not
immediately apparent from the domain names alone that the websites are not operated by Plaintiff;
for example, because humor is a common form of advertising, see WHS Entertainment Ventures v.
United Paperworkers Intern. Union, 997 F. Supp. 946, 951 (M.D. Tenn. 1998), Plaintiff may have
tried to create a humourous website.
Note: It is by no means implausible that Plaintiff would operate a website named
www.shopsatwillowbendsucks.com. For instance, if an individual were to use a popular search
engine, such as www.google.com, and type in the words "shops at willow bend," that individual
would find an entry for a website entitled "Taubman Sucks," with the following text underneath:
"... However, the irony is that I do not believe that The Shops at Willow Bend (an
impressive new shopping mall in Plano, Texas) or the Taubman Company (the ..." (emphasis in
original). In addition, when an individual first logs onto Defendants' "sucks.com" websites, a
message in large letters appear: "Introduction: Actually, They Don't Suck". When read in
isolation, words such as "impressive new shopping mall" are hardly unflattering. In fact, at first
glance, the website may appear to be humourous, and may well appear to be written by Plaintiff.
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[The judge has created a bizarre argument that Taubman has never advanced: namely, that my
TaubmanSucks site might have been confused with Taubman's official site (the potential for confusion,
by the way, is a key element in proving trademark infringement) because someone might think that
Taubman was using the domain name "TaubmanSucks.com" as a joke! While I'm sure that Taubman is widely
known for its madcap frivolity, I still have a hard time imagining that they would deliberately
acknowledge that they suck.
To support his theory, the judge points out that I actually said some nice things about Taubman
and their mall on the TaubmanSucks.com home page. I said these things, by the way, out of a sense of
fairness, in that I felt (and still feel) that Taubman had created a impressive mall, and that I had
no problem with the mall and with Taubman per se, my only problem was with the heavy-handed way
they were harassing me with this lawsuit. So basically the judge is saying that I would have been
better off (from a legal standpoint) if I had confined myself to negative comments about Taubman, and
that by expressing positive comments I created the possibility that someone might confuse me with
Taubman! In other words, my sense of fairness is coming back to haunt me.]
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In addition, the Lanham Act may be violated if a defendant uses a plaintiff's trademark to
promote an idea that the plaintiff does not necessarily agree with. See Brach Van Houten Holding,
Inc. v. Save Brach's Coalition for Chicago, 856 F. Supp. 472 (N.D. Ill. 1994) (holding that the
use of plaintiff's trademark on literature produced by a public interest group opposed to the
closing of plaintiffs candy factory in Chicago was a violation of the Lanham Act).
As for a commercial use, the Court is uncertain as to the exact nature of the commercial use
of Defendants' websites. If, as it appears to the Court for the reasons stated in the December 7, 2001
Opinion and Order, Defendants' initial website, www.shopsatwillowbend.com, had some type of
commercial use, then there are many potential commercial uses for Defendants' "sucks.com"
websites. For instance, if Defendants hoped to resell their www.shopsatwillowbend.com website
to Plaintiff, such as the defendant did in Toeppen, then the creation of the "sucks.com" websites may
be an attempt to force Plaintiff to buy Defendants' www.shopsatwillowbend.com website in order
to make Defendants stop disparaging Plaintiff.
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[Continuing a practice he initiated in his previous order, the judge is making up allegations
against me. He notes that "the Court is uncertain as to the exact nature of the commercial use of
Defendants' websites," a phrase that can only be interpreted as meaning that my websites had a
commercial use, he's just not certain of what that use was. But that doesn't stop him from
engaging in wild and unsupported speculation: Perhaps I hoped to "force" (how? with bazookas?)
Plaintiff to buy my domain names! The fact that there is not a shred of evidence to support this
conjecture does not seem to bother him – nor does the fact that, once again, he's putting forth
an allegation that Taubman has never even suggested.
This is a critically important issue, because, as the judge himself has noted, Taubman has no
trademark-infringement case under the Lanham Act unless they can prove that my websites had some kind
of commercial purpose. And I have to admit that I do find it unsettling that, since Taubman has been
unable to come up with any theories that would indicate that my websites had some kind of commercial
use, the judge has decided to invent some for them. (I'm pleased to note that the judge has not
repeated the argument from his previous order that the fact that I had links to the websites of stores
in the mall suggested that I wanted to divert business from the mall. He's not repeating it, of course,
because it's been pointed out to him that Taubman's own mall site also includes links to those same
websites!)
It's hard enough trying to fight Taubman, with their massive resources, without having to counter
arguments made by the supposedly impartial judge who's in charge of the case. If this were a football
game, the judge would be assessed a 15-yard penalty for piling on. (Actually, that's not a perfect
analogy – but I don't know what kind of penalty is assessed when it's the referee who's
committing the foul.)]
Note: The Court notes that shortly after Defendants informed Plaintiff that they registered the
"sucks.com" websites, Plaintiff offered Defendants $1,000 in order to remove the websites from
the Internet. Defendants initially agreed to accepted the offer before negotiations broke down.
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[This is troubling from a couple of perspectives.
First, it's inaccurate. Taubman offered me $1,000 to resolve the situation, which I accepted.
Taubman then imposed new conditions, which I refused. What I would describe as "Taubman refusing to
honor a contract" the judge has chosen to describe as a "breakdown of negotiations."
Also, although I'm certainly not a lawyer, it's my understanding that settlement discussions cannot
be introduced as evidence in a civil trial. If that's true – if the so-called "negotiations"
could not be introduced as evidence should this case proceed to trial – then how could it be
proper for the judge to cite those discussions as a factor in his decision?]
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That is at least one possible commercial use of Defendants' "sucks.com" websites.
As the Court mentioned in its December 7, 2001 Opinion and Order, all the relevant facts are
not known at this time. But, based upon the facts within its knowledge, the Court is sufficiently
justified in expanding the preliminary injunction, and therefore the Court will deny Defendants'
motion.
For the reasons stated above, Defendants' Motion for Stay Pending Appeal is DENIED.
IT IS SO ORDERED.
Date: 26 DEC 2001
LAWRENCE P. ZATKOFF
CHIEF UNITED STATES DITRICT JUDGE
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View the Original Order (in a
separate window)
In addition to my comments about what the judge said, there's one
important comment I need to make about what the judge did not say.
In his injunction, the judge ordered me to "remove the websites
with the domain names..." from the Internet. I first assumed that he meant that I could no longer
use those domain names but that I was free to repost the material under a new domain name. However, it
was pointed out to me that the judge actually ordered me to remove the websites (technically,
one website with five different domain names), and that if I reposted the material, I could be subject
to a contempt citation. Even though I had hundreds of hours of work in that site, I didn't want to go
to jail, so I removed the site from the Web.
Still operating under the assumption that the judge had not actually
intended to supress the content of my website, I gave him (in my motion for a stay) a chance to
clarify his intentions: "In the event the Court did, in fact, intend the narrower ruling, it is
suggested that its order be rewritten to require only that defendants refrain from using specified
domain names without imposing any limit on what may be placed on the Internet using other domain
names." To my surprise and dismay, the judge pointedly ignored my suggestion, leading me to draw the
conclusion that he did intend to censor the content of my website after all.
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