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Diverting Traffic On The Web: Trademarks And The First Amendment

What’s at the heart of cybersquatting may also be at the heart of free speech on the Internet: the diversion of Internet users looking for plaintiff’s web site to defendant’s web site. Cybersquatters register domain names to accomplish this, while meta-infringers (as we will call them) use HTML code and search engine optimization techniques. Meta-infringers do this by creating keyword density by using competitor’s trademarks and permutations thereof in their website in order to rank higher in the search engine results when someone searches on the competitor’s trademarks.

Initial Interest Confusion In Brookfield Communications v. West Coast Entm’t Corp., the Ninth Circuit enjoined defendant from using plaintiff’s trademarked term in its HTML code (regardless of whether metatags are dead, there are other ways to optimize the terms such that a similar result may be accomplished); even though HTML code is not visible and therefore not likely to cause confusion—initial interest confusion has resulted because the users have been diverted to defendant’s web site.

Nominative Use In NKOTB v. News Am. Publ’g, Inc., the Ninth Circuit articulated a three part test for determining when an unauthorized use of a trademark is permissible: (1) the product can’t be readily identifiable without use of the term; (2) defendant uses only what is reasonably necessary to identify its products; and (3) the user must do nothing to suggest sponsorship or endorsement by the trademark holder. The Court noted that its holding in Playboy Enters., Inc. v. Welles, which applied the NKOTB test, was also intended to protect those who criticize the holder of a well known trademark.

Commercial Speech The Supreme Court has held that false or misleading commercial speech may be enjoined because it is not protected by the First Amendment. However, the Ninth Circuit has limited such injunctions to cases where the representations were found to be false and deceptive. See J.K. Harris v. Taxes.com.

In Taxes.com, defendant was not proscribed from using its competitors’ trademark in a nominative manner to criticize the competitor where the defendant had gathered the facts and declared them to be factually correct. Similarly, in Taubman v. Webfeats, the Sixth Circuit held that defendant’s registration of gripe sites incorporating plaintiff’s trademarks into the domain names (shopsatwillowbendsucks.com; theshopsatwillowbendsucks.com; willowbendmallsucks.com; and willowbendsucks.com) was protected by the First Amendment: although economic damage might [result], the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business…as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it.

The point of all this is that despite the enactment of stronger trademark protections, the Courts are allowing both competitors and consumers who have legitimate gripes to utilize trademarks in a way that clearly allows those sites to not only be seen and heard but to move out of obscurity and onto the search page results alongside the companies they are criticizing. As the court in Taubman so eloquently put it: In fact, Taubman concedes that Mishkoff is free to shout Taubman Sucks! from the rooftops. . . . The rooftops of our past have evolved into the Internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his opinion about Taubman. Trademark holders have been forewarned.

By Kevin J. Heller, Intellectual Property Attorney

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