Best Western International (BWI) is a non-profit organization whose members operate Best Western hotels around the world. In May 2006, the website "www.freewrites.com" was established as a forum for BWI members and "governors" to discuss matters about BWI administration on a confidential basis. (BWI "governors" act as liasons between the members and the board of directors.) Although designed as a forum for members and governors only, the website was accessible to members of the public who knew of its location. The site was not authorized by BWI.

Proposed changes in BWI's method of operation drew extensive comment and criticism from anonymous posters on the site.

In June 2006, BWI brought a lawsuit in federal court in Arizona against the website administrator (John Doe), as well as BWI members who posted comments on the website ('Jane Does 1-X') and BWI governors who posted comments on the website ('John Does 1-X'). BWI alleged defamation and trademark infringement, as well as breach of contract, breach of implied contract, and breach of implied covenant of good faith and fair dealing. The complaint did not specify any allegedly defamatory statements.

BWI moved for expedited discovery, requesting permission to serve subpoenas on various internet service providers. The subpoenas sought disclosure of the identities of the operator of the forum site and those individuals who had posted messages.

Following Doe v. Cahill, 884 A.2d 451 (Del. 2005), the court denied BWI's motion to expedite discovery, concluding that BWI had not made a sufficient evidentiary showing to overcome the defendants' qualified First Amendment right to engage in anonymous speech. The court stressed that BWI had failed to identify a single false statement made by the anonymous defendants, a single item of confidential information posted on the site by them, or a single instance where BWI's mark was improperly used. Best West. Int'l v. Doe, 06-cv-01537, slip op. at 7 (D. Ariz. July 25, 2006). The court left open the possibility that BWI could meet its required evidentiary showing on a renewed motion.

During the course of litigation, two defendants came forward of their own accord: James Furber, the operator of the website, and James Dial, a BWI member who posted comments on the site.

BWI renewed its motion for expedited discovery seeking disclosure of the identities of the remaining anonymous defendants, and the court granted the motion in October 2006. The court found that BWI had overcome the defendants' qualified First Amendment right to engage in anonymous speech by introducing evidence sufficient to create a genuine issue of fact on its breach of contract claims. Best West. Int'l v. Doe, 06-cv-01537, slip op. at 9-10 (Oct. 25, 2006).

In the same opinion, the court dismissed the trademark and unfair competition claims in BWI's original complaint because there was no allegation that the defendants had used BWI's marks in connection with the sale or advertising of goods or services. See id. at 4-5. The dismissal was without prejudice, and the trademark claims appeared again in BWI's amended complaints.

In November 2006, BWI named Furber and Dial in its first amended complaint. After conducting discovery, BWI filed its second amended complaint in August 2007, naming six defendants: James Dial, Nidrah Dial, James Furber, Teresa Furber, Loren Unruh, and Gayle Unruh. James and Nidrah Dial and Loren Unruh are BWI members.

In May 2007, the court denied James Furber's motion for summary judgment without prejudice, finding it premature. It granted Furber leave to re-file his motion after August 17, 2007.

Update:

8/21/2007 - Best Western filed second amended complaint.

9/10/2007 - James Dial filed answer to second amended complaint.

11/28/2007 - Parties filed joint stipulation to dismiss defendant Theresa Thurber.

5/9/2008 - Defendants James Dial, Nidrah Dial, Loren Unruh, Gayle Unruh, and James Furber moved for summary judgment.

9/5/2008 - The court granted in part and denied in part the defendants motion for summary judgment.

10/20/2008 - Court denied the plaintiffs' motion to dismiss Dial's counterclaim.

12/5/2008 - Court referred the case to a magistrate for a settlement conference. 

3/12/2009 - Court dismissed the case with prejudice after the parties stipulated to the dismissal.

On July 20, 2007, Patrick O'Keefe, the operator of the fan site MarianoRivera.com received a letter from SFX Baseball Group, which represents Yankees baseball player, Mariano Rivera. The letter asserted that the site's use of the domain name, marianorivera.com, violates the Cybersquatting provisions of federal trademark law and Rivera's right of publicity in his name and likeness. It demanded that the site cease using the domain name and transfer ownership of it to SFX.

O'Keefe wrote about the threat on his site:

What strikes me most about this is the accusations of unethical behavior here. I registered the domain name because I wanted to create a Mariano Rivera fan site and it was the best domain available. End of story. Our intentions are good. Our intent was never, at any point in time, to trick people into thinking this was Mariano Rivera's official website. At the top of every page, it says "Unofficial Mariano Rivera Fan Site." In the subject line of the home page, it says "Unofficial Mariano Rivera Fan Site." It says it in other locations, as well. We have never said, in any way, shape or form that we are otherwise. We've worked hard on this site and we've put many hours in. Why? Because we're Mariano Rivera fans and Yankees fans.

On August 1, 2007, O'Keefe spoke with a representative of SFX. The representative told him that he could continue to operate the website, but refused to give any assurances about the future.

The matter appears resolved, at least for the present.

Michael Morgan is a real estate broker and consultant, who sold or placed under contract several homes in Lennar Pacific developments in Florida, and who also owned a home in one of Lennar's developments. He and Lennar became embroiled in a bitter dispute over the cancellation of number of housing contracts, and Morgan contended that Lennar owed him several hundred thousand dollars.

On June 5, 2006, during the course of this dispute, Morgan created a website -- www.defectivehomes.us -- which Morgan described as aimed at providing consumer information on defects in homes built by Lennar Corporation. Morgan apparently used the Lennar trademark in the metatags for the site. In emails to Lennar personnel shortly after the site's creation, Morgan drew attention to the new website, challenging the recipients to run a keyword search using the LENNAR mark, and making statements indicating that he might profit from the site ("You created a new business model for me.").

Morgan then registered a series of LENNAR-oriented domain names -- www.lennarhomes.info; www.lennarhome.info; www.lennar-homes.info; www.lennar-home.info; www.lenarhome.info; www.lenarhomes.info; www.lenarhomes.com. All of these domain names redirected users to Morgan's new primary website, www.lennar-homes.info, onto which he had moved most of the content from www.defectivehome.us.

Lennar initially filed suit in Florida state court in June 2006 for trademark infringement. Before that action was concluded, in April 2007, Lennar sued Morgan in federal court for trademark infringement and violations of the Anti-Cybersquatting Consumer Protection Act.

In May 2007, Morgan moved to dismiss or, in the alternative, to stay the federal action. Lennar then moved for a preliminary injunction to bar Morgan's use of its trademark. In July 2007, Morgan withdrew his motion to dismiss or stay and filed a motion for summary judgment.

On July 20, 2007, the magistrate judge issued his report and recommendations to the district court on Lennar's motion for a preliminary injunction. The report concluded that Morgan had violated the Anti-Cybersquatting Consumer Protection Act and committed trademark infringement. It recommended that the district court issue a preliminary injunction, barring Morgan from (1) using Lennar's marks or mispellings of its marks in domain names, (2) using Lennar's marks or mispellings of them in metags, sponsored links, or any type of paid advertising, and (3) infringing any of Lennar's marks.

The magistrate judge found that Morgan's websites were not "gripe sites," but rather sites that promoted his commercial interests and those of his sponsors. The report gave weight to the following facts:

• visitors to the website were encouraged to contact Morgan to engage his services in lodging complaints against home builders;
• visitors to the websites were encouraged to contact Morgan regarding his other businesses, including his real estate brokerage, real estate consultancy, and Internet marketing businesses;
• the websites solicited monetary contributions and provided links to the websites of various groups that solicited monetary contributions;
• the websites provided links to Universal Fastener Outsourcing and the American Society of Home Inspectors -- commercial websites related to construction defects;
• the websites provided links to commercial websites and websites in which commercial "banner" advertisements were displayed; and
• the websites provided links to the promotional websites of law firms endorsed by Morgan, in particular the website of "The Miller Law Firm," which Morgan endorsed as "highly recommended." Entire portions of The Miller Law Firm's website were reproduced on the sites.

The magistrate judge also drew attention to the fact that Morgan used "Internet search engine manipulation," including metatags and sponsored links, to divert users searching for Lennar's website to his websites. Finally, despite the fact that Morgan removed the content from those websites with Lennar-oriented domain names and cancelled the registration for them in April 2007, the court found that there was an ongoing risk that he would restore content to other websites and noted that there "exist any number of other potential domain names that are confusingly similar to the Lennar Marks available to [Morgan]."

The magistrate judge drew one especially questionable conclusion of law. He held that the "in connection with goods or services" requirement of Section 1114 of the Lanham Act (15 U.S.C. 1114(1)(a)) "is not only met by use of the mark in connection with goods or services distributed or advertised by the alleged infringer; it may also be met by use in connection with the goods or services distributed by the trademark holder." This sweeping statement, if accepted by other courts, would bring almost any criticism of a plaintiff's goods or services on the Internet within the coverage of the Lanham Act. Luckily, this is not the law -- it is an overbroad statement of a minority view that has mostly been rejected by the courts. See, e.g., Bosley Med. Inst. v. Kremer, 403 F.3d 672, 679 (9th Cir. 2005). Moreover, this sweeping formulation was entirely unnecessary in light of the magistrate judge's factual findings that Morgan used his websites to encourage visitors to engage his services in lodging complaints against home builders, to contact him concerning his other business enterprises, and to promote the commercial activities of third parties of his choosing.

The district court did not get a chance to rule on the magistrate judge's report and recommendations because the parties settled out of court in August 2007 for an undisclosed sum. The federal and state actions have been voluntarily dismissed.

Eros, LLC has created adult entertainment products in the virtual world Second Life, which it sells to other Second Life users for Linden dollars, which can be converted into US dollars. Another Second Life user, with avatar name "Volkov Catteneo," allegedly copied Eros's products and sold them to other Second Life users without authorization. According to the TimesOnline, the products at issue are beds that allow users of Second Life to have virtual sex in them.

In July 2007, Eros began a John Doe lawsuit for copyright and trademark infringement in federal court in Florida. Eros filed an ex parte motion seeking permission to issue subpoenas to discover information about the identity of the anonymous defendant from Linden Lab, which operates Second Life, and from PayPal, which was used to pay for Catteneo's account. The court granted the motion, and Eros obtained account information from each company.

However, Catteneo then gave an interview with Reuters, during which he claimed that he had provided both PayPal and Linden with false information. Eros then filed a motion for permission to issue subpoenas to AT&T and Charter Communications seeking subscriber information for certain IP addresses allegedly used by Catteneo. The court granted the motion in September 2007.

On October 24, 2007, Eros filed an amended complaint, naming Robert Leatherwood, a resident of Texas, and ten John Doe defendants. The amended complaint alleges that Leatherwood acted in concert with unknown parties to make and sell unauthorized copies of Eros's products.

On March 20, 2008, Eros filed an unopposed motion for entry of a judgment by consent against Leatherwood. The judge granted the motion, and the final order enjoined Leatherwood from further unauthorized copying of Eros's merchandise.

BidZirk, LLC is a reseller of items on eBay. Philip Smith contacted the company and engaged it to sell certain items on his behalf. Unhappy with the prices that he received, Smith published a four-part blog posting entitled "Special Report: You Gotta Be Berserk To Use An eBay Listing Company! The Whole Story." In the post, Smith depicted his negative experience with BidZirk and his interactions with the company's president, Daniel Schmidt. In the course of this discussion, Smith reproduced BidZirk's logo and made snarky comments about it. He also discussed more generally the positive and negative aspects of using an eBay listing company, such as BidZirk, and provided a checklist for readers to consult in deciding whether to do so. Additionally, he linked to an article on another website that discussed Schmidt and Patterson's upcoming wedding and contained a photograph of them.

Bidzirk, Schmidt and Patterson sued Smith in federal court in South Carolina in early 2006. The complaint included claims for violations of the Lanham Act (BidZirk), defamation (Schmidt), and "invasion of privacy" (Schmidt and Patterson). The "invasion of privacy" claim originally appeared to be a claim for misappropriation of name and likeness, but the plaintiffs adopted a "false light" theory in briefs opposing summary judgment.

BidZirk moved for a preliminary injunction barring Smith's use of its trademark and the district court denied the motion. The district court adopted the Report and Recommendations of the magistrate judge, which concluded that Smith's blog post fit the statutory exemption to trademark dilution for "news reporting or news commentary." See BidZirk v. Smith, No. 6:06-00109 (D. S.C. Apr. 10, 2006) ; see also 15 U.S.C. § 1125(c)(4)(C). BidZirk appealed, and the Fourth Circuit affirmed the district court.

Update:

9/26/2007 - Smith filed a motion for summary judgment.

10/22/2007 - The district court granted summary judgment to Smith, reaffirming that Smith was entitled to the statutory exemption for "new reporting and news commentary." It also sanctioned the plaintiffs' counsel $1000 for filing and refusing to withdraw a "lis pendis" on Smith's condo.

2/19/2008 - Smith filed a letter request for a hearing regarding sanctions. Court denied the request.

Penn Warranty contracts with individuals to provide service warranties on used cars. On May 20, 2000, Penn Warranty provided DeGiovanni a "standard warranty" for a used truck in New Jersey, where he lived at the time. DeGiovanni filed a claim under the service contract, which Penn Warranty denied. Giovanni brought a breach of contract lawsuit in small claims court in New Jersey, and the case settled out of court for $2500. He then created a "gripe site," on which he claimed that Penn Warranty engaged in deceptive business practices. The site contained some generally negative comments about the car service warranty industry, the auto insurance industry, and New Jersey judges. More importantly, the gripe site also contained statements that Penn Warranty "cleverly" interprets its standard contracts, that it is a "blatantly dishonest company," that it is a "crooked company," that it "has been ripping of ripping off its contract holders for quite a while," and that it had committed fraud.

Before publishing the site on the web, DeGiovanni contacted Penn Warranty and stated that he would publish the website and expose the company's unfair practices unless it "did the right thing." Penn Warranty did not concede to DeGiovanni's "demands," and he pubished the site. DeGiovanni also sent the content of the site to Penn Warranty's employees.

Penn Warranty sued in New York state court, alleging defamation, trade libel, harrasment, extortion and coercion, intentional interference with prospective economic advantage, cybersquatting, and violations of RICO. On DeGiovanni's motion for summary judgment, the court dismissed the defamation and trade libel claims, holding that the statements on DeGiovanni's website were statements of personal opinion protected by the First Amendment. The court dismissed the intentional interference with economic advantage claim because Penn Warranty offered no evidence of any customer that did not do business with it as a result of DeGiovanni's site. The court dismissed the extortion/harassment/coercion claim, holding that the defendant could not be held liable for threatening to do something he had a right to do -- to express his constitutionally protected opinions. It dismissed Penn Warranty's trademark claim, which revolved around DeGiovanni's use of a domain name similar to the domain name of Penn Warranty's website, because DeGiovanni's use of the mark was not commercial and because the domain names were not confusingly similar. Finally, it dismissed the RICO claims for failure to provide any evidence of an enterprise, among other grounds. See Penn Warranty Corp. v. DiGiovanni, 810 N.Y.S.2d 807 (N.Y. Sup. Ct. 2005).

Landmark Education is a for-profit company engaged in the business of making "education programs" available to the general public and corporations, on subjects including communication, time management, and productivity. Its basic program is "The Forum" -- a three day/one evening seminar directed at "enhancing communication, creativity, and productivity for participants." Participants in the Forum may and are urged to take additional seminars given by Landmark and to recruit new participants for Landmark programs.

Rick Ross runs nonprofit websites, www.rickross.com , www.culteducation.com, and www.cultnews.com, through his non-profit entity, the Rick Ross Institute of New Jersey. The websites provide information to the public about cults and other controversial groups. On the website, Ross solicits contributions and sells his books and multimedia materials. Ross also operates a for-profit business "de-programming" the victims of cults, which is advertised on his sites.

Ross included Landmark on his list of organizations refered to as "controversial groups, some called 'cults," which included organizations such as the Aryan Brotherhood and Al-Qaeda.

Visitors to Ross's sites posted various anonymous "visitor comments" critical of Landmark that allegedly gave the impression that Landmark's programs are cult-like and present risks of physical or mental harm to participants. Other comments accused Landmark of "hypnotizing" and "braninwashing" participants, attempting "cult recruitment" and "mind control." Others indicated that the Landmark Forum "used bright fluorescent lighting with no windows, didn't allow food or drink in the room, and required such long hours," and that participants in the Landmark Forum who wanted to leave were met with "guilt, manipulation and implied threats" and those who did leave were "harassed" by Landmark representatives seeking to convince them to return. The sites contained a disclaimer displayed at the bottom of the visitor comments pages indicating that "the Rick Ross Institute, its Advsiory Board and/or Rick Ross do not necessarily endorse or support any of the views expressed within the documents, articles, reports, and testimonies archivied within this website, with the exception of those specifically so attributed."

Ross's sites also posted anonymously authored "personal stories" detailing unpleasant experiences that befell the authors or someone close to them during their participation in one of Landmark's programs. Some of these personal stories had provacative titles, including "This cannot be healthy emotionally" and "Landmark Education destroyed my life -- from the Forum to the psych ward." These personal stories included statements to the effect that Landmark's programs make a "deliberate assault on your mind," are a "form of mind control," and have "cult attributes."

The websites also hosted a number of articles by third-party authors concerning Landmark, with titles like "Brain Wash," "Mindbreakers," and "Microsoft Paid for Culty Clinics," which had been previously published in other publications.

Additionally, visitors to the websites' forum sections, writing under psuedonyms, posted a number of critical comments accusing Landmark of mind control, brainwashing, and the like. The websites posted rules relating to the forums, stating "the moderators of this forum will attempt to keep all objectionable messages off this forum, but it is impossible to review every message. All messages express the views of the author, and neither the owners of this forum, Cult Education.com, Rick Ross.com and/or developers of bulletin software, will be held responsible for the content of any message."

Ross's websites also included links to other websites containing negative content relating to Landmark. The links were accompanied by a disclaimer: "The Rick A. Ross Institute, its Advisory Board and/or Rick Ross do not necessarily endorse or support any of the views expressed within the linked websites listed at the Links page of this website."

At the time of the lawsuit, apparently a search for "Landmark Education" on Google produced Ross's websites on the results list.

Ross also allegedly made several statements to the news media radio shows, indicating that certain of Landmark's methods were "cult-like" and that participants of Landmark's programs had suffered negative mental health effects.

In June 2004, Landmark sued Ross and the Ross Institute in United States District Court for the District of New Jersey, asserting claims of product disparagement, tortious interference with ongoing and propspective business relations, trademark disparagement under the Lanham Act, consumer fraud and unfair competition under New Jersey law, and prima facie tort.

Ross and the Institute filed an answer in September 2004 without moving to dismiss. In it, they asserted various defenses, including that the statements were statements of opinion, the fair comment privilege, and lack of actual malice.

The details are not clear, but Landmark appears to have voluntarily dismissed the case in December 2005.

Two brothers from New Jersey, Mark and Matthew D'Avella, spent the summer working for the A&P supermarket in Califon, New Jersey. They made the best of what could have been a boring situation by creating parodic rap songs with supermarket themes under the name "Fresh Beets" (here's their myspace page). Their songs including gems like "Always Low Prices" and (their masterpiece) "Produce Paradise," which is a nod to Coolio's 1995 "Gangsta's Paradise," which in turn drew on Stevie Wonder's venerable "Pastime Paradise." Mark and Matthew made a video of "Produce Paradise" in the A&P store (after hours) and posted it to YouTube and their website, fakelaugh.com, along with some blog commentary.

A&P's parent company, The Great Atlantic and Pacific Tea Company, Inc., filed a lawsuit against the brothers in New Jersey Superior Court seeking $1 million in damages. The complaint, filed August 24, 2007, included counts for defamation, business and product disparagement, and federal trademark infringement and dilution. It alleged that "Produce Paradise" depicted the brothers "performing their rap song in various recognizable areas of the Califon A&P, including the fresh produce department, the corner bakery, the stock room and the employee bathroom," and that "at least one defendant is wearing a hat with a recognizable A&P logo [during the video]."

The complaint cited the brothers' "disparaging and disgusting lyrics pertaining to produce and groceries, and the store in general" and their "doing various disparaging and disgusting things to produce and groceries, and [sic] in and around the produce and grocery areas." None of the statements identified in the complaint, however, mention A&P. To support its claim that the video has injured its reputation, A&P alleged that "at least one customer," having recognized the store and Mark and Matthew as employees, complained to A&P about the video, stating that she was "disgusted and distressed by the scenes depicted in the video," and that she "would not be shopping in [A&P's] stores in the future owing to the repulsive acts depicted and performed by defendants in the Rap Video."

A&P also raised a trademark infringement and dilution claim, alleging (remarkably) that Mark and Matthew are "using the A&P logo in commerce, in connection with the promotion of their Rap Video" and that this use of its mark "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of defendants with A&P, such that a viewer of the Rap Video would surmise that A&P condoned, or sponsored or approved the use of the A&P Logo and/or the Califon A&P premises in the Rap Video." Somewhat (but only marginally) more realistically, the complaint claims that the defendants' use of the A&P logo dilutes the value of the mark.

Update: In May 2008, the Courier News reported that the parties had settled. The precise terms of the settlement are confidential, but it looks like the brothers have removed the video from the Internet.