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Planned Parenthood Federation of America, Inc. v. Richard Bucci, d/b/a Catholic Radio

In this case, the Southern District enjoined defendant from continuing to utilize plaintiff’s service mark Planned Parenthood in its domain name, at which was found a web site featuring references to a book espousing anti-abortion positions.  Such use was held to violate the Lanham Act and not to be protected by First Amendment.

Plaintiff Planned Parenthood Federation of America (“Planned Parenthood”) is a not-for-profit organization that, among other things, offers information to the public about contraceptives and abortions.  Plaintiff is the owner of the service mark “Planned Parenthood” and operates a web site at www.ppfa.org.  Defendant is an individual who hosts the Catholic Radio radio program, and is an anti-abortion advocate.  Defendant registered the domain name www.plannedparenthood.com at which he ran a web site.  When a user reached the site, she was greeted by the heading “Welcome to the Planned Parenthood Home Page.”  The site also featured the cover of a book titled “The Cost of Abortion” and information about its author, as well as excerpts from the book and various accolades it had received.  The site urged readers to purchase the book.  Defendant conceded that he selected the name for his site in an attempt to reach an audience for his message that he might not otherwise reach — to wit, those seeking information from Planned Parenthood.

The court found that such conduct ran afoul of sections 1114, 1125(a) and 1125(c) of the Lanham Act, and was likely to cause confusion among users of the Internet.

Of greatest import to those using the Internet generally was the court’s discussion of the “in commerce” requirements of the Lanham Act.  Each of the cited sections requires that the allegedly offending use be in commerce.  The court held that defendant’s conduct fell within the ambit of the statute for two reasons.

First, defendant’s actions affect plaintiff’s ability to offer plaintiff’s services, which, as health and information services offered in forty-eight states and over the Internet, are surely “in commerce.”  Thus, even assuming, arguendo, that defendant’s activities are not in interstate commerce for Lanham Act purposes, the effect of those activities on plaintiff’s interstate commerce activities would place defendant within the reach of the Lanham Act.  Second, Internet users constitute a national, even international audience, who must use interstate telephone lines to access defendant’s web site on the Internet.  The nature of the Internet indicates that establishing a typical home page on the Internet for access to all users, would satisfy the Lanham Act’s “in commerce” requirement.  (citations omitted).

The court held that defendant violated § 1114 of the Act, which prohibits use of a mark to distribute or advertise goods and services, because (a) defendant used plaintiff’s mark to plug the book “The Cost of Abortion” (even though defendant derived no money from the sale) (b) defendant’s home page is part of his efforts to espouse the anti-abortion cause, for which he raises funds and (c) defendant’s use prevented some Internet users from reaching plaintiff’s web site.  For the same reasons, the court held that defendant’s use of planned parenthood in its domain name was a commercial use of plaintiff’s famous service mark which would cause dilution thereof in violation of § 1125(c) of the Act.

The court also held that defendant’s conduct was not protected by the First Amendment because the mark was used to identify defendant’s site, and not as part of a communicative message about plaintiff or its organization.

By using the mark as a domain name and home page address and by welcoming Internet users to the home page with the message “welcome to the Planned Parenthood Home Page!” defendant identifies the web site and home page as being the product, or forum, of plaintiff.  I therefore determine that, because defendant’s use of the term “planned parenthood” is not part of a communicative message, his infringement on plaintiff’s mark is not protected by the First Amendment.