Lamparello v. Falwell
Encyclopedia
Lamparello v. Falwell, 420 F.3d 309, is a legal case heard by the United States Court of Appeals for the Fourth Circuit
concerning cybersquatting
and trademark infringement
. The dispute centered on the right to use the domain name
fallwell.com, and provides discussion on cybersquatting
as it applies to criticism of a trademark
.
In 1999, Christopher Lamparello created a website
to respond to and criticize the anti-homosexual statements of popular and sometimes controversial Christian
evangelical preacher Rev. Dr. Jerry Falwell
. Lamparello's website was located at fallwell.com (note the misspelling). Believing that there was confusing similarity between the domain name
and Falwell's own name, domain name, and other trademarks, Falwell and his ministries attempted to legally block Lamparello from using the mark "fallwell" and transfer the ownership of the domain name to Falwell.
The initial decisions (ruled by the National Arbitration Forum
in 2003 and the United States District Court for the Eastern District of Virginia
in 2004) decided in favor of Falwell, granting Falwell's claims of federal trademark infringement, false designation of origin
, unfair competition
, and cybersquatting.
On appeal in 2005, the United States Court of Appeals for the Fourth Circuit
reversed the earlier decisions, ruling that there was not a "likelihood of confusion" between Lamparello's and Falwell's official site; that there was no trademark infringement based on "initial interest confusion" for sites that were non-commercial and critical of the trademark holder; and since Lamparello's site was non-commercial, there was no "bad faith intent to profit" and it was not cybersquatting.
to express his negative opinions about the Fundamentalist Christian preacher Jerry Falwell's public statements against homosexuality
.
Lamparello's site was plainly critical of Falwell and had very little viewership. The website offered no goods or services for sale, though the website contained a link to a separate Amazon.com
webpage selling a book supporting his views, but Lamparello did not stand to financially gain from the sales of the book. Lamparello's website also contained prominent statements declaring that it was not affiliated with Falwell and his ministry, and provided a hyperlink to redirect viewers to Falwell's official website. Lamparello claimed that the domain name was chosen as a parody
of Falwell's name, combining "fall" and "well".
Falwell had a registered trademark
in the name "Listen America with Jerry Falwell". At the time, Falwell did not have any registered trademarks in the names "Falwell" or "Fallwell", but was in the process of registering the name "Jerry Falwell". Falwell had an official website at the domain name falwell.com, where he also sold goods.
Believing in a confusing similarity between the two domain names, Falwell sent Lamparello letters in 2001 and 2003 demanding that Lamparello cease and desist from using fallwell.com or any variation of Falwell's name as a domain name. Lamparello did not comply.
(NAF), in accordance with ICANN
's Uniform Domain Name Dispute Resolution Policy (UDRP), requesting that the domain name be transferred from Lamparello to Falwell.
Under the UDRP, the complainant must show that the registered domain name is identical or confusingly similar to their trademark, that the registrant has no legitimate interest in the domain name, and that the domain name is being used in bad faith.
The NAF panel decided 2-1 on November 20, 2003 to transfer the domain name to Falwell's ministries, Liberty Alliance.
The dissenting panelist, David E. Sorkin, argued that the domain name was not used in bad faith, and that this dispute was not one to be resolved under the UDRP or by the NAF.
(WIPO) in Geneva
, Switzerland
did not accept the case since Falwell did not have a trademark on his own name. After Falwell threatened to sue in Virginia, U.S. in 2003, Cohn surrendered both domain names.
. The ACLU also provided an amicus brief, arguing that the domain name in question was protected by the First Amendment
.
Falwell filed a counterclaim, alleging trademark infringement under (2000), false designation origin under , unfair competition under and the common law of the state of Virginia, and cybersquatting under .
The District Court granted summary judgment for Falwell, blocking Lamparello from using the domain name and ordered the transfer of the website to Falwell. The court denied Falwell's request for statutory damages and attorney fees.
The U.S. Court of Appeals for the Fourth Circuit unanimously reversed the District Court's decision, ruling that Lamparello could continue maintaining the gripe website at fallwell.com. The court reasoned as follows:
Likelihood of Confusion
Initial Interest Confusion
Cybersquatting
declined to hear an appeal from Falwell regarding the 4th Circuit opinion, giving no reasons for declining.
purposes. The utilization of the bad-faith factors of the ACPA
has been criticized by some scholars for leading to counterintuitive results when applied to cases that are not clear-cut cybersquatting
.
This opinion is important when considering typosquatting
and gripe site
s as it upheld Fifth and Sixth Circuit decisions that "the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting." This opinion contained direct analysis of application of the Initial Interest Confusion
doctrine, but leaves questions regarding the IIC unanswered.
United States Court of Appeals for the Fourth Circuit
The United States Court of Appeals for the Fourth Circuit is a federal court located in Richmond, Virginia, with appellate jurisdiction over the district courts in the following districts:*District of Maryland*Eastern District of North Carolina...
concerning cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
and trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
. The dispute centered on the right to use the domain name
Domain name
A domain name is an identification string that defines a realm of administrative autonomy, authority, or control in the Internet. Domain names are formed by the rules and procedures of the Domain Name System ....
fallwell.com, and provides discussion on cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
as it applies to criticism of a trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
.
In 1999, Christopher Lamparello created a website
Website
A website, also written as Web site, web site, or simply site, is a collection of related web pages containing images, videos or other digital assets. A website is hosted on at least one web server, accessible via a network such as the Internet or a private local area network through an Internet...
to respond to and criticize the anti-homosexual statements of popular and sometimes controversial Christian
Christian
A Christian is a person who adheres to Christianity, an Abrahamic, monotheistic religion based on the life and teachings of Jesus of Nazareth as recorded in the Canonical gospels and the letters of the New Testament...
evangelical preacher Rev. Dr. Jerry Falwell
Jerry Falwell
Jerry Lamon Falwell, Sr. was an evangelical fundamentalist Southern Baptist pastor, televangelist, and a conservative commentator from the United States. He was the founding pastor of the Thomas Road Baptist Church, a megachurch in Lynchburg, Virginia...
. Lamparello's website was located at fallwell.com (note the misspelling). Believing that there was confusing similarity between the domain name
Domain name
A domain name is an identification string that defines a realm of administrative autonomy, authority, or control in the Internet. Domain names are formed by the rules and procedures of the Domain Name System ....
and Falwell's own name, domain name, and other trademarks, Falwell and his ministries attempted to legally block Lamparello from using the mark "fallwell" and transfer the ownership of the domain name to Falwell.
The initial decisions (ruled by the National Arbitration Forum
National Arbitration Forum
The National Arbitration Forum , founded in 1986, provides arbitration and mediation services to businesses, based at its Minneapolis, Minnesota headquarters and offices in New Jersey. The company is one of the United States's largest and most controversial dispute resolution companies...
in 2003 and the United States District Court for the Eastern District of Virginia
United States District Court for the Eastern District of Virginia
The United States District Court for the Eastern District of Virginia is one of two United States district courts serving the Commonwealth of Virginia...
in 2004) decided in favor of Falwell, granting Falwell's claims of federal trademark infringement, false designation of origin
False designation of origin
False designation of origin is leaving the origin of a good or service intentionally vague to attempt to profit from it....
, unfair competition
Unfair competition
Unfair competition in a sense means that the competitors compete on unequal terms, because favourable or disadvantageous conditions are applied to some competitors but not to others; or that the actions of some competitors actively harm the position of others with respect to their ability to...
, and cybersquatting.
On appeal in 2005, the United States Court of Appeals for the Fourth Circuit
United States Court of Appeals for the Fourth Circuit
The United States Court of Appeals for the Fourth Circuit is a federal court located in Richmond, Virginia, with appellate jurisdiction over the district courts in the following districts:*District of Maryland*Eastern District of North Carolina...
reversed the earlier decisions, ruling that there was not a "likelihood of confusion" between Lamparello's and Falwell's official site; that there was no trademark infringement based on "initial interest confusion" for sites that were non-commercial and critical of the trademark holder; and since Lamparello's site was non-commercial, there was no "bad faith intent to profit" and it was not cybersquatting.
Background
In 1999, Christopher Lamparello registered the domain name fallwell.com and used the affiliated website as a gripe siteGripe site
A gripe site is a type of website devoted to the critique and or mockery of a person, place, politician, corporation, or institution. They are also known as "complaint" or "sucks" sites...
to express his negative opinions about the Fundamentalist Christian preacher Jerry Falwell's public statements against homosexuality
Homosexuality
Homosexuality is romantic or sexual attraction or behavior between members of the same sex or gender. As a sexual orientation, homosexuality refers to "an enduring pattern of or disposition to experience sexual, affectional, or romantic attractions" primarily or exclusively to people of the same...
.
Lamparello's site was plainly critical of Falwell and had very little viewership. The website offered no goods or services for sale, though the website contained a link to a separate Amazon.com
Amazon.com
Amazon.com, Inc. is a multinational electronic commerce company headquartered in Seattle, Washington, United States. It is the world's largest online retailer. Amazon has separate websites for the following countries: United States, Canada, United Kingdom, Germany, France, Italy, Spain, Japan, and...
webpage selling a book supporting his views, but Lamparello did not stand to financially gain from the sales of the book. Lamparello's website also contained prominent statements declaring that it was not affiliated with Falwell and his ministry, and provided a hyperlink to redirect viewers to Falwell's official website. Lamparello claimed that the domain name was chosen as a parody
Parody
A parody , in current usage, is an imitative work created to mock, comment on, or trivialise an original work, its subject, author, style, or some other target, by means of humorous, satiric or ironic imitation...
of Falwell's name, combining "fall" and "well".
Falwell had a registered trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
in the name "Listen America with Jerry Falwell". At the time, Falwell did not have any registered trademarks in the names "Falwell" or "Fallwell", but was in the process of registering the name "Jerry Falwell". Falwell had an official website at the domain name falwell.com, where he also sold goods.
Believing in a confusing similarity between the two domain names, Falwell sent Lamparello letters in 2001 and 2003 demanding that Lamparello cease and desist from using fallwell.com or any variation of Falwell's name as a domain name. Lamparello did not comply.
UDRP complaint
In October 2003, Falwell submitted a complaint to the National Arbitration ForumNational Arbitration Forum
The National Arbitration Forum , founded in 1986, provides arbitration and mediation services to businesses, based at its Minneapolis, Minnesota headquarters and offices in New Jersey. The company is one of the United States's largest and most controversial dispute resolution companies...
(NAF), in accordance with ICANN
ICANN
The Internet Corporation for Assigned Names and Numbers is a non-profit corporation headquartered in Marina del Rey, California, United States, that was created on September 18, 1998, and incorporated on September 30, 1998 to oversee a number of Internet-related tasks previously performed directly...
's Uniform Domain Name Dispute Resolution Policy (UDRP), requesting that the domain name be transferred from Lamparello to Falwell.
Under the UDRP, the complainant must show that the registered domain name is identical or confusingly similar to their trademark, that the registrant has no legitimate interest in the domain name, and that the domain name is being used in bad faith.
The NAF panel decided 2-1 on November 20, 2003 to transfer the domain name to Falwell's ministries, Liberty Alliance.
The dissenting panelist, David E. Sorkin, argued that the domain name was not used in bad faith, and that this dispute was not one to be resolved under the UDRP or by the NAF.
Related case: jerryfalwell.com
A contemporaneous case was one concerning Gary Cohn and the domain names jerryfalwell.com and jerryfallwell.com. Falwell sued Cohn for "reverse domain name hijacking", but the World Intellectual Property OrganizationWorld Intellectual Property Organization
The World Intellectual Property Organization is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world"....
(WIPO) in Geneva
Geneva
Geneva In the national languages of Switzerland the city is known as Genf , Ginevra and Genevra is the second-most-populous city in Switzerland and is the most populous city of Romandie, the French-speaking part of Switzerland...
, Switzerland
Switzerland
Switzerland name of one of the Swiss cantons. ; ; ; or ), in its full name the Swiss Confederation , is a federal republic consisting of 26 cantons, with Bern as the seat of the federal authorities. The country is situated in Western Europe,Or Central Europe depending on the definition....
did not accept the case since Falwell did not have a trademark on his own name. After Falwell threatened to sue in Virginia, U.S. in 2003, Cohn surrendered both domain names.
District Court
Following the NAF decision, Lamparello filed an action against Falwell in federal district court, seeking declaratory judgment of non-infringement. Lamparello was supported by the Public Citizen Litigation GroupPublic Citizen Litigation Group
Public Citizen Litigation Group is a nationally prominent public interest law firm known for its Supreme Court and appellate practice. The group is the litigating arm of the non-profit consumer advocacy organization Public Citizen...
. The ACLU also provided an amicus brief, arguing that the domain name in question was protected by the First Amendment
First Amendment to the United States Constitution
The First Amendment to the United States Constitution is part of the Bill of Rights. The amendment prohibits the making of any law respecting an establishment of religion, impeding the free exercise of religion, abridging the freedom of speech, infringing on the freedom of the press, interfering...
.
Falwell filed a counterclaim, alleging trademark infringement under (2000), false designation origin under , unfair competition under and the common law of the state of Virginia, and cybersquatting under .
The District Court granted summary judgment for Falwell, blocking Lamparello from using the domain name and ordered the transfer of the website to Falwell. The court denied Falwell's request for statutory damages and attorney fees.
Opinion of the Court
Lamparello appealed the District Court's order and Falwell cross-appealed the denial of statutory damages and attorney fees.The U.S. Court of Appeals for the Fourth Circuit unanimously reversed the District Court's decision, ruling that Lamparello could continue maintaining the gripe website at fallwell.com. The court reasoned as follows:
Likelihood of Confusion
- The Court used the 4th Circuit's seven part test for likelihood of confusion: "(a) the strength or distinctiveness of the mark; (b) the similarity of the two marks; (c) the similarity of the goods/services the marks identify; (d) the similarity of the facilities the two parties use in their businesses; (e) the similarity of the advertising used by the two parties; (f) the defendant’s intent; (g) actual confusion."
- In applying this test, the Appeals Court found that there was only a similarity in the online marks, but nothing else was applicable, and that "Lamparello clearly created his website intending only to provide a forum to criticize ideas, not to steal customers."
- The Court of Appeals stressed that there was no confusion that Lamparello's site was not affiliated with Falwell or his ministries.
After even a quick glance at the content of the website at
www.fallwell.com , no one seeking Reverend Falwell’s guidance would be misled by the domain name —www.fallwell.com — into believing Reverend Falwell authorized the content of that website. No one would believe that Reverend Falwell sponsored a site criticizing himself, his positions, and his interpretations of the Bible.
Initial Interest Confusion
- This argument is roughly a typosquattingTyposquattingTyposquatting, also called URL hijacking, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser...
argument, wherein legitimate potential customers seeking Falwell's website might misspell his official domain name and instead go to fallwell.com, giving Lamparello an "unearned audience". The Appeals Court states that there must be a financial profit from the initial interest confusion, and in the case of noncommercial gripe sites, there is no way to financially profit from the confusion. "This critical element — use of another firm’s mark to capture the markholder’s customers and profits — simply does not exist when the alleged infringer establishes a gripe site that criticizes the markholder."
Cybersquatting
- In order to win a cybersquatting claim, Falwell would have to show bad faith intent to profit from using the fallwell.com domain name, and prove that the domain name is "identical or confusingly similar to, or dilutive of, the distinctive and famous mark". In addition to the already established lack of confusion, the Appeals Court found that Lamparello did not have a bad faith intent to profit due to the lack of income from the site, that Lamparello had not attempted to sell the domain name, and that Lamparello had not purchased a large quantity of domain names.
- Finally, agreeing with prior cases in the Fifth and Sixth Circuits, "the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting."
Subsequent developments
On April 17, 2006, the U.S. Supreme CourtSupreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
declined to hear an appeal from Falwell regarding the 4th Circuit opinion, giving no reasons for declining.
Significance
In contrast to the Court of Appeals' 2001 opinion in People for the Ethical Treatment of Animals v. Doughney, where the Court affirmed the District Court's judgment against the defendant, this case supported the defendant, ruling against one gripe site and for the other. In PETA, the parody website's content was not conveyed simultaneously with the message that the site was peta.org. In short, the Fourth Circuit backtracked on its decision in PETA, justifying the different opinions as a distinction between parody and consumer confusion. Additionally, in both PETA and Lamparello, the website in question had links to items for sale. The distinction between the two cases may have been that in PETA, the defendant registered numerous other websites for cybersquattingCybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
purposes. The utilization of the bad-faith factors of the ACPA
Anticybersquatting Consumer Protection Act
The Anticybersquatting Consumer Protection Act ', 15 U.S.C. § 1125, is an American law enacted in 1999 and established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name...
has been criticized by some scholars for leading to counterintuitive results when applied to cases that are not clear-cut cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
.
Perhaps the Court of Appeals has created a lesson here for counsel representing parties who might assert cyber squatting claims. Before filing suit, initiate bad faith settlement negotiations, for the purpose of obtaining a statement from the cyber squatter that he might be willing to settle. Then, file suit under the ACPA, asserting that your opponent's willingness to engage in your bad faith settlement negotiations demonstrates a bad faith intent to profit on his part.
This opinion is important when considering typosquatting
Typosquatting
Typosquatting, also called URL hijacking, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser...
and gripe site
Gripe site
A gripe site is a type of website devoted to the critique and or mockery of a person, place, politician, corporation, or institution. They are also known as "complaint" or "sucks" sites...
s as it upheld Fifth and Sixth Circuit decisions that "the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting." This opinion contained direct analysis of application of the Initial Interest Confusion
Initial Interest Confusion
Initial Interest Confusion is a legal doctrine under trademark law that permits a finding of infringement when there is temporary confusion that is dispelled before the purchase is made. Generally, trademark infringement is based on the likelihood of confusion for a consumer in the marketplace...
doctrine, but leaves questions regarding the IIC unanswered.