In late May, the United States Court of Appeals for the Tenth Circuit issued an opinion in Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 2008 WL 22043807 (10th Cir. May 29, 2008). With this decision, the Tenth Circuit joins an expanding group of federal appeals courts holding that federal trademark law does not prohibit a noncommercial website's use of a trademark for purposes of commenting on or criticising the trademark owner. See, e.g., Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005); Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003); Falwell v. Lamparello, 420 F.3d 309 (4th Cir. 2005). The case is not your usual "gripe site" case, but instead involves a more subtle parody of an ideological opponent's website.
The controversy revolves around a website created in 2003 by Allen Wyatt, the webmaster and vice president of the Foundation for Apologetic Information and Research (FAIR), an organization that reponds to criticisms of the Mormon Church. Wyatt's website parodied the official website of the Utah Lighthouse Ministry (UTLM), an organization that publishes books and other materials critical of Mormonism. The parody site deliberately imitated the design elements of the UTLM website and replicated certain aspects of its textual layout, with slight modifications to convey a critical message. Wyatt placed no disclaimer on the site indicating that it was not affiliated with UTLM.
The Wyatt site contained no advertising and sold no goods or services. It had a number of external links to the website of a pro-Mormon organization at Brigham Young University, to the official website of the Mormon Church, and to articles on the FAIR website that were critical of the founders of UTLM. One link went to FAIR's homepage, which in turn linked to FAIR's online bookstore. Wyatt also bought ten domain names and redirected them all to his parody website. The domain names included www.utahlighthouse.com, www.uthahlighthouse.org, and others including the personal names of the founders of the UTLM.
UTLM sued Wyatt, FAIR, and others in federal court in Utah for trademark infringement, unfair competition, and cybersquatting. (For details, see our database entry, Utah Lighthouse Ministry v. Wyatt.) The district court granted summary judgment for the defendants, dismissing all the claims. The Tenth Circuit affirmed, with three important holdings coming out of the decision:
- Federal trademark infringement and unfair competition claims require a "commercial use" of the plaintiff's trademark -- in the language of the statute, a use "on or in connection with any goods or services." In this case, Wyatt's use of the "Utah Lighthouse" trademark was not commercial because the primary purpose of the parody site was expressive and it hosted no advertising, offered no goods or services for sale, and did not link to commercial sites (the link to the FAIR bookstore from FAIR's homepage was too "roundabout and attenuated"). The court expressly rejected UTLM's argument that the Wyatt site was commercial because it prevented Internet users from accessing UTLM's own goods and services, and its argument that using a trademark as a domain name is inherently commercial.
- A successful parody weighs heavily against a likelihood of confusion, a key element a trademark infringement claim. In this case, the court applied several of the traditional "likelihood of confusion" factors in light of the special goals and requirements of parody. For instance, the court found that Wyatt's intentional use of the plaintiff's trademark did not weigh against him because the benefit he derived from such use arose "from the humorous association, not from public confusion as to the source of the marks." The court also concluded that, as a general matter, a successful parody does not cause confusion because it "relies upon a difference from the original mark to produce its desired effect."
- For purposes of the Anticybersquatting Consumer Protection Act (ACPA), use of a trademark in a domain name for a noncommercial website aimed at criticizing a trademark owner generally does not constitute "bad faith intent to profit." This holding is in line with two other federal appellate decisions interpreting the ACPA -- TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004), and Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004). What is unique here is that Wyatt registered ten domain names. Registering multiple domain names is a factor that ordinarily weighs in favor of "bad faith," but Wyatt's expressive motivation for doing so clearly won the day.
Overall, this is a fine result, and it is good to see influential appellate courts protecting expressive activities against encroachment by zealous trademark owners. On the other hand, this court's interpretation of the "commercial use" requirement -- like that of the other courts to address this requirement -- leaves websites that host advertisements vulnerable to trademark claims based on criticial speech unrelated to advertising, promoting, or selling a product or service.
Maybe I'm wrong, but I don't think that a court would find an op-ed in the New York Times to be a "commercial use" for purposes of trademark law just because the newspaper sells advertising space. (If anyone knows of a trademark case dealing with this issue, we'd love input in the comments.) Why should it be different for an online platform that relies on advertising? Courts should look at the character of the speech itself, not the medium in which it is found. So far, however, this view has gotten little traction.
Newspapers and Use in Commerce
I haven't found an offline newspaper being deemed to make a use in commerce simply because it references a trademark. But online, it seems to be a different story--chalk it up to cyberspace exceptionalism. Eric.