Parody website found not to infringe trademark
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In Utah Lighthouse Ministry v Discovery Computing (Case 07-4095, May 29 2008), the US Court of Appeals for the Tenth Circuit has affirmed a summary judgment in favour of the defendants, holding that a parody website did not infringe the rights of the trademark owner. The case involved the conflict between freedom of speech, religion, commercial use, trademark infringement and parody.
Utah Lighthouse Ministry is a non-profit organization that criticizes the Church of Jesus Christ of Latter-Day Saints, among other organizations, through its official website. The Foundation for Apologetic Information and Research (FAIR) is a volunteer organization that responds to criticism of the Latter-Day Saints Church. It registered several domain names containing the name Utah Lighthouse and created a website (attached to the domain name 'utahlighthouse.org') that parodied Utah Lighthouse's website, copying much of its appearance, although conspicuously presenting different content. It also had an online bookstore through which pro-Latter-Day Saints Church publications were sold.
Utah Lighthouse sued FAIR for:
- trademark infringement;
- violation of federal and state unfair competition law; and
- cybersquatting under the Anti-cybersquatting Consumer Protection Act.
However, at the time the complaint was filed, the application for the registration of the trademark UTAH LIGHTHOUSE was still pending before the US Patent and Trademark Office. The district court granted summary judgment to FAIR on the grounds that:
- the mark UTAH LIGHTHOUSE was not protectable since it was not registered when the suit was filed; and
- Utah Lighthouse had failed to show that the mark had acquired secondary meaning among the public.
Furthermore, the court held that FAIR’s use of the mark was not commercial because its main goal was to convey pro-Latter-Day Saints Church ideas and should be considered as protected non-commercial speech. The district court also addressed the issue of likelihood of confusion and held that the majority of the factors weighed in favour of FAIR. With regard to the cybersquatting claim, the district court found that:
- FAIR had not acted with bad-faith intent to profit; and
- FAIR's use of the mark was non-commercial and a fair-use parody.
On appeal, the Tenth Circuit affirmed the grant of summary judgment in favour of FAIR. The court sidestepped the issue of whether a trademark infringement plaintiff whose trademark application does not issue to registration until after the time the lawsuit is filed is entitled to the presumption of Section 33(a) of the Lanham Act.
Before the court, Utah Lighthouse contended that the subsequent registration of the mark UTAH LIGHTHOUSE on the Principal Register was sufficient proof of the mark’s distinctiveness. Therefore, no showing of secondary meaning was required. The court declined to consider that argument on the grounds that Utah Lighthouse had raised the issue for the first time on appeal. However, it reviewed Utah Lighthouse's attempt to show secondary meaning through evidence offered in the form of hit counts for the UTAH LIGHTHOUSE mark generated on search engines such as Google and Yahoo!. However, the court concluded that:
"the number of search engines hits would support [Utah Lighthouse]'s claim of secondary meaning only if accompanied by some kind of evidence that the relevant market of consumers has visited the websites containing these hits."
The court also discussed whether commercial use of a mark is required to invoke protection under the Lanham Act. Utah Lighthouse asserted that FAIR made commercial use of the UTAH LIGHTHOUSE mark because:
- it provided a link to another website that sold books online;
- it interfered by preventing users from accessing Utah Lighthouse's website even without selling any goods or services; and
- the commercial nature of the Internet rendered use of the mark commercial.
Acknowledging a difference of opinion among the circuit courts, the court held that the links should not be considered as commercial use as they:
- were too attenuated; and
- directed users to a non-commercial website that communicated ideas and expressed points of view.
The court suggested that each case is fact sensitive and requires a case-by-case analysis. The court further held that the interference theory as construed by other circuits:
"eliminates the requirement of an economic competitor and is therefore inconsistent with the purpose of the Lanham Act to protect the ability of consumers to distinguish among competing producers."
As to the third assertion, the court held that not every single "use of the Internet [should be] necessarily [considered as] commercial for the purposes of the Lanham Act". Such a theory could unnecessarily restrain freedom of speech and "greatly expand the scope of the Lanham Act to encompass objectively non-commercial speech".
The court also entertained the question of whether a successful parody might create a likelihood of confusion among the public. Here, the court held that the website was a successful parody. This fact weighed heavily against a finding of likelihood of confusion, since consumers would be well aware of the differences in content and style from the moment they accessed the sites.
Finally, in analyzing the Anti-cybersquatting Consumer Protection Act claim, the court followed similar conclusions reached by several other circuits and held that:
"the quintessential example of bad-faith intent to profit is when a defendant purchases a domain name very similar to the trademark and then offers to sell the name to the trademark owner at an extortionate price."
Because FAIR did not offer to sell the website, the bad-faith requirement was not met. Moreover, since the website’s goal was to defend the Latter-Day Saints Church and complain about Utah Lighthouse, the court applied the same standard of review that it applies to gripe sites and held that FAIR's website was similar to consumer commentaries and constituted fair use.
It should be noted that the domain names in dispute now resolve to the website of Utah Lighthouse, not FAIR.
Dennis S Prahl, Ladas & Parry LLP, New York, with the assistance of Sebastian Lovera
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