The dispute involved Henry Mishkoff, a computer consultant and
web designer, and Taubman Company, a Delaware shopping mall
developer.
Upon hearing the news that Taubman was building a mall called
"The shops at Willow Bend" near his home in Plano, Texas, Mishkoff
registered the domain name "shopsatwillowbend.com", and created a
web site featuring information about the mall, with a map and links
to Taubman stores' sites.
Mishkoff described his site as a "fan site" with no commercial
purpose. The site, however, contained a link to the site of a
company run by his girlfriend, which sold custom-made shirts, and
to the site of Mishkoff's own web design business.
Taubman demanded that Mishkoff remove the site from the
internet, claiming that it was infringing on its registered trade
mark "The Shops at the Willow Bend". When Mishkoff refused, Taubman
sued.
Following the filing of the lawsuit, Mishkoff registered five
more domains: "taubmansucks.com", "shoppsatwillowbendsucks.com",
"theshoppsatwillowbendsucks.com", "willowbendmallsucks.com" and
"willowbendsucks.com".
All five domain names linked to the same site, where Mishkoff
criticised Taubman and covered his legal dispute with the company.
Mishkoff removed the links to his and his girlfriend's business
sites from shopsatwillowbend.com.
In October 2001, a Michigan district court issued a temporary
order requiring Mishkoff to take down the "shopsatwillowbend.com"
site. A few days later, Taubman amended its initial filing to
include the five "sucks.com" domain names registered by Mishkoff
and these were added to the order.
The web designer appealed the order. In a unanimous opinion, the
6th Circuit Court of Appeals overruled the lower court's order,
reasoning that Mishkoff's use of the trade marks was not "in
connection with the sale or advertising of goods and services," and
reasoned that there was no likelihood of confusion among
consumers.
The court found that shopsatwillowbend.com contained a prominent
disclaimer, indicating that the site was unofficial, and that it
"actually served to re-direct lost customers to Taubman's
site."
Mishkoff, the court said, had no intention to confuse or deceive
consumers, or to make a profit, and therefore his use of Taubman's
marks was protected by free speech.
As regards Mishkoff's use of the five "sucks.com" domains, the
court found that it was "purely an exhibition of Free Speech."
The court said:
"Although economic damage might be an intended effect of
Mishkoff's expression, the First Amendment protects critical
commentary where there is no confusion as to source, even when it
involves the criticism of a business."
The court concluded that restricting Mishkoff's use of the
Taubman marks on his complaint sites would be no different to
ordering him not to shout "Taubman Sucks!" from his rooftop, and
dismissed the company's claims.
This is believed to be the first ruling of its kind by a US
appeals court.
The court's decision is available at:
pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06
