Gripers 1, Initial Interest Confusion 0–Lamparello v. Falwell

Lamparello v. Falwell, No. 04-2011 (4th Cir. Aug. 24, 2005).

Following on the Ninth Circuit Bosley opinion from earlier this year, gripe sites won another important victory yesterday in the Fourth Circuit. This ruling is significant not only because it vindicates gripe sites, but also because it squarely confronts the Initial Interest Confusion doctrine (which so many other courts have ducked recently).

The Facts

Lamparello built a site at fallwell.com that criticized Jerry Falwell’s views. The home page contained a disclaimer and a link to Falwell’s site; at some point Lamparello had commercial outlinks. The parties agreed that Lamparello had very little traffic (200 hits/day) and no diversionary effect.

No Likelihood of Confusion

The court discusses, and then sidesteps, the argument that Lamparello’s site was non-commercial and therefore outside the scope of the Lanham Act. Instead, the court says it does not need to resolve that question because there was no likelihood of confusion.

In support of this, the court does a very efficient multi-factor analysis. There is not sufficient similarity between the “products” because the websites look totally different and offer opposing, not similar, views. Further, there is no evidence that consumers were actually confused; instead, the anecdotal evidence showed that misdirected searchers quickly realized they were at the wrong site.

While I don’t disagree with this conclusion, this type of analytically efficient multi-factor analysis shows exactly why trademark law should not apply to non-commercial gripe sites at all. The factors really don’t make sense because Lamparello was not marketing goods or services in commerce. Thus the court has to resort to analytical tricks like comparing the source of the “content” rather than the source of “goods or services.” So, from my view, the court should have disposed of the case because there was not sufficient “use in commerce” to meet the threshold standards for trademark infringement.

Initial Interest Confusion

Having concluded that there was no likelihood of confusion under the multi-factor test, the court then addressed the initial interest confusion (IIC) doctrine. Plaintiffs have routinely attempted to use the IIC doctrine as a bypass to the multi-factor test, and in some cases the courts have let this go to absurd results.

In this case, the court had to address IIC because of the Fourth Circuit PETA v. Doughney precedent. In that case, a parody website called “People Eating Tasty Animals” operated at peta.org was deemed to infringe the trademark of People for the Ethical Treatment of Animals. Although the Doughney case never used the phrase “initial interest confusion,” the case was entirely consistent with an IIC analysis.

The court trashes the IIC doctrine in a variety of ways. It calls the doctrine “relatively new and sporadically applied,” even though there have been at least 100 cases referencing the doctrine over more than 3 decades.

It then takes the position that the Fourth Circuit has never adopted the IIC doctrine. While this is technically true, this is a very generous characterization of Asia Apparel, LLC v. Cunneen, 118 Fed. Appx. 782 (4th Cir. Jan. 11, 2005) (which affirmed without comment a lower court opinion predicated on IIC) and the Doughney case (which was an IIC case in every respect except that it didn’t use the words “initial interest confusion”). The court then severely limits the Doughney precedent, saying that the case merely evaluated whether Doughney’s peta.org was a good enough parody. In any case, the court says that IIC is not a bypass to the multi-factor test; instead, the entire context must be considered.

One would think the court had said enough at this point. The court sidestepped the “use in commerce” inquiry. The court said there was no likelihood of confusion. The court said that the Fourth Circuit does not recognize an IIC bypass to the multi-factor test. What’s left to say?

Too much! The court then spends 3 more pages in a surprisingly academic discourse trashing the IIC doctrine, articulating a completely confusing definition of IIC, and generally going where no dicta should ever go.

Having concluded that IIC was not recognized in the Fourth Circuit, the court then says that even if it was, there was no IIC in this case because all prior appellate courts applying IIC to the Internet have done so when the mark was being used for financial gain.

While I think this is technically true, this is a confusing statement. Almost all trademark infringement cases take place in the context of one party using a trademark for financial gain because of the “use in commerce” requirement. If the trademark is not being used for financial gain, usually there isn’t use in commerce, which means the plaintiff’s case should fail before even reaching the question of likelihood of confusion/IIC.

So the court’s delineation (no financial gain, no IIC) should apply to a null set of cases (or a very small number of cases). So this statement, while seemingly important to this case, has very little predictive consequence for most other cases (besides the fact that it’s dicta).

In any case, the court then uses this definition of IIC to conclude that the “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.” Of course, these factual conditions are not opposites; one could imagine a gripe site that also is for-profit (see, e.g., badbusinessbureau.com). Nevertheless, the court says that giving the trademark owner too much power here would allow the owner to insulate itself from criticism, and that’s not permissible.

In a footnote, the court specifically attacks two early IIC-style cases–Planned Parenthood v. Bucci and Jews for Jesus v. Brodsky–both of which held gripe sites liable for infringement. The court said that these cases failed to consider the site’s content in considering if the domain name was infringing.

To recap, the court reaches the following key points in its dicta:

* the Fourth Circuit may not recognize the IIC doctrine

* the IIC doctrine requires that the alleged infringer make a financial gain using the trademark

* to assess IIC, the domain name and the website associated with it must be reviewed together

* thus, a gripe site does not commit IIC

I am no fan of the initial interest confusion doctrine, a point I’ve explained in great detail elsewhere. So I’m certainly not going to complain about any ruling that takes swipes at the IIC doctrine. However, this opinion is deficient in at least two key respects.

First, as discussed earlier, the limitation of IIC to “financial gain” situations does very little to constrain the doctrine.

Second, the court says that IIC cannot be evaluated without looking at the underlying website–this is fine, but why call that initial interest confusion? The court could have said–and should have said–that it was simply refusing to recognize IIC at all. Instead, its implicit standard–look at both the domain name and the website to determine IIC–sounds less like IIC and more like standard likelihood of confusion. So why didn’t the court skip the IIC charade and just say that the standard likelihood of confusion test should be applied to the domain name + website combination?

After the dangerous dicta digression, the court concludes that there is no likelihood of confusion, so the court grants summary judgment to Lamparello.

ACPA

The court also rejected Falwell’s ACPA claim. In this respect, this case is even better for gripe sites than the Bosley case, which left the ACPA claim open. The court says there is no way for Falwell to show that Lamparello had a bad faith intent to profit from the domain name and does a fairly efficient application of the multi-factor bad faith test in ACPA.

More interesting is how the court distinguishes Doughney. The court notes that Doughney had a portfolio of 50-60 domain names and had told PETA to “make him an offer” suggesting a desire to get paid. Through these distinctions, I think the court again severely limits the precedential impact of Doughney.

Conclusion

This has been a good year for trademark defendants–two major victories for gripe sites (Bosley and Lamparello) and major win for adware vendors (1-800 Contacts). This trend suggests that the courts are correcting the silly doctrines that were an overreaction to the dot com speculative bubble, and we should applaud this development. In particular, this court does serious violence to Doughney as a precedent and undercuts the Bucci and Brodsky cases as well–all welcome corrections from my perspective.

However, the combination of the three cases still leave far more questions than answers. Exactly what constitutes a “use in commerce” in the online context? Exactly what constitutes IIC? These major opinions continue to sidestep these important issues rather than resolving them, leaving us with continued uncertainty about the scope of these doctrines. I trust eventually we’ll get cases that make clear and strong pronouncements, but for now we’re left waiting.

On that front, the press reports indicate that Falwell is seeking an en banc rehearing. So we may not have heard the last of this case.

UPDATE: In April 2006, the Supreme Court denied cert, so the case is over.

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