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    Lawsuits and Judicial Decisions 6 of One, Half Dozen of the Other
    posted by DavidP on Wednesday February 12 2003, @12:53PM

    Within days of one another, the Sixth Circuit Court of Appeals has handed down two different and important 'cybersquatting' decisions. Though they are not inconsistent with one another, technically speaking, they surely point in very different directions.



    First came Paccar v Telescan, on Feb 5. The defendant there had a "truck locator" site, where consumers could find vendors of trucks and truck equipment, and used plaintiffs' trademark ("Peterbilt") in a domain name (peterbilt.com) where suppliers for Peterbilt trucks could be found. There was a disclaimer on the www.peterbilt.com site -- disclaiming any relationship to the Peterbilt company -- but the court held that was not sufficient to eliminate the "initial interest confusion" arising out of use of the trademark in the domain. Initial interest confusion, the court wrote, "occurs when a consumer is lured to a product by its similarity to a known mark, even though the consumer realizes the true identity and origin of the product before consummating a purchase."
    "The district court found that TeleScan's disclaimer does not remedy the confusion caused by the use of PACCAR's trademarks in its domain names. An infringing domain name has the potential to misdirect consumers as they search for web sites associated with the owner of a trademark. A disclaimer disavowing affiliation with the trademark owner read by a consumer after reaching the web site comes too late."
    While plaintiffs were applauding, along came Taubman v. Webfeats. This case involved a number of "gripe" sites directed at plaintiff's shopping center, and defendant won a resounding victory. In particular, with respect to the use of the word "sucks" in the domain names appended to plaintiff's trademarks, the court wrote:
    "We find that Mishkoff's use of Taubman's mark in the domain name "taubmansucks.com" is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. Such use is not subject to scrutiny under the Lanham Act. In fact, Taubman concedes that Mishkoff is "free to shout 'Taubman Sucks!' from the rooftops. . . ." Brief for Respondent, at 58. Essentially, this is what he has done in his domain name. 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, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it."

     
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      Related Links  
  • Paccar v Telescan
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  • More on Lawsuits and Judicial Decisions
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  •  
    This discussion has been archived. No new comments can be posted.
    6 of One, Half Dozen of the Other | Log in/Create an Account | Top | 2 comments | Search Discussion
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    Same direction
    by phoffman@proper.com on Friday February 14 2003, @07:45AM (#11156)
    User #2063 Info
    These two cases appear to point in the same direction. In the first case, if the site was called "wheretobuypeterbilt.com" or "perterbilt.wheretobuytrucks.com", the confusion would have been less. Of course, the site would have gotten much less traffic, but the ability to get traffic isn't a right. In the case of "wheretobuypeterbilt.com", Peterbilt could make a case that the site was initially confusing, but their case would be much weaker than for the current decision.
    [ Reply to This | Parent ]


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