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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Utah Lighthouse Ministry v. Foundation For Apologetic Information and Research (FAIR), et al.

No. 07-4095 (10th Cir., May 29, 2008)

Affirming the decision of the district court below, the Tenth Circuit dismisses trademark infringement, unfair competition and cybersquatting claims brought by plaintiff Utah Lighthouse Ministry as a result of defendant Allen Wyatt’s operation of a non-commercial website at domains containing the names of both plaintiff and its principals, which website in turn linked to articles criticizing plaintiff’s principals found on defendant Fair’s website.  Plaintiff was created to criticize the Church of Jesus Christ of Latter-day Saints.  Fair is an organization that responds to criticisms of that Church.  Wyatt’s website was designed to look like that of the plaintiff, incorporating elements and content found thereon with slight alterations, and contained no disclaimer as to the site’s affiliation with the plaintiff. 

The Tenth Circuit affirmed the dismissal of plaintiff’s Lanham Act trademark infringement and unfair competition claims on the grounds that plaintiff had failed to establish that defendant had used its trademark in commerce.  In reaching this result, the Court held that links from Wyatt’s website to that of Fair, at which books were offered for sale, were too attenuated to constitute a commercial use because the links took the user to pages of that site containing criticism of plaintiff, and not to those pages of the site at which books were offered for sale.  The Court further held that the use of plaintiff’s trademark in the operation of a site that diverted consumers from plaintiff’s commercial site to a non-commercial site was not a commercial use sufficient to sustain a Lanham Act claim.  In reaching this result, the Court refused to follow a contrary decision of the Fourth Circuit. 

The Tenth Circuit also dismissed plaintiff’s trademark infringement claim on the ground that plaintiff failed to establish the requisite likelihood of consumer confusion arising out of defendant Wyatt’s operation of his site.  The Court relied both on its analysis of the traditional likelihood of confusion factors, as well as its determination that defendant’s site was a successful parody of that of the plaintiff.

Finally, the Tenth Circuit dismissed plaintiff’s cybersquatting claim, advanced under the Anticybersquatting Consumer Protection Act (“ACPA”), on the ground that the defendants lacked the requisite bad faith intent to profit from their use of plaintiff’s mark, given their site was non-commercial, and intended to criticize plaintiff.   The Tenth Circuit held that such claim also failed because defendant Wyatt fell within the protection of the ACPA’s safe-harbor provision, which precludes a finding of bad faith intent to profit if ‘the court determines that the [defendant] believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.’

Defendant Wyatt Operates Website Critical of Plaintiff and Its Founders That Looks Like Plaintiff’s Own Website

Plaintiff Utah Lighthouse Ministry was formed by Jerald and Sandra Tanner to offer criticism about the Church of Jesus Christ of Latter-day Saints (“Church”).  In support of these efforts, plaintiff sells books both at a brick and mortar store, and its website, operated at the domain  Plaintiff’s website features a lighthouse with black and white barbershop stripes, and a message that states “welcome to the official website of the Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner.”  The website contains criticism of the Church.

Defendant Foundation for Apologetic Information and Research (“FAIR”) responds to criticisms of the Church.  In support of its efforts, it operates a website at which it offers books for sale, some of which are also offered for sale at plaintiff’s website.  In addition, it contains articles critical of plaintiff’s founders.

Defendant Allen Wyatt (“Wyatt”) is the vice president of FAIR and webmaster of its website.  In November 2003, Wyatt created a separate website designed to criticize plaintiff.  Defendant’s website copied content found on plaintiff’s website, with slight alterations.  Plaintiff’s lighthouse appeared on defendant’s site, with the same barbershop stripes.  However, inserted in those stripes on defendant Wyatt’s website were the additional words “destroy, mislead and deceive.”  In addition, as explained by the Court: 

“prominent text on [defendant] Wyatt[’s] website consists of a slight modification of the language located in the same position on [plaintiff] UTLM[’s] website.  For example, the UTLM website states: ‘Welcome to the Official website of the Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner.’  In comparison, the Wyatt website states:  Welcome to an official website about the Utah Lighthouse Ministry, which was founded by Jerald and Sandra Tanner.’”

Wyatt’s site did not contain a disclaimer of affiliation with plaintiff.

Wyatt’s site did not offer products or services for sale.  It did, however, contain four links to the FAIR website.  Three of these links took the user to pages of the site containing articles critical of plaintiff’s founders.  The fourth took the user to the homepage of the FAIR website.  None took the user to the site’s book store.  Wyatt’s site contained additional links to the websites of both Brigham Young University and the Church itself. 

Wyatt also registered 10 domain names, containing combinations of Utah Lighthouse Ministry, the names of plaintiff’s founders, Jerald and Sandra Tanner, as well as ‘Gerald’ Tanner.  Each took the user to defendant Wyatt’s site.
Upset with defendants’ conduct, plaintiff commenced suit, asserting trademark infringement claims under the Lanham Act, as well as claims under the Anticybersquatting Consumer Protection Act (“ACPA”).  On defendants’ motion for summary judgment, the District Court dismissed the complaint.  The Tenth Circuit affirmed.

Trademark Infringement Claims Fails

To establish a claim for trademark infringement, the plaintiff must show it has a protectable mark, that defendant has used that mark in commerce, and that such use is likely to cause consumer confusion, or deceive as to the affiliation, connection or association between the parties.  The Tenth Circuit, affirming the district court below, held that plaintiff failed on each count. 

A Website’s ‘Hits’ Standing Alone Are Insufficient To Establish That A Mark Has Established Secondary Meaning Sufficient To Establish Trademark Rights

At the time it commenced suit, plaintiff had not registered is ‘Utah Lighthouse’ trademark.  As such, to be protectable, plaintiff had to show that it possessed common law trademark rights in this mark.  Plaintiff failed to argue below that it was entitled to such protection because its mark was arbitrary when used in connection with offering criticism of the Church.  As such, the Tenth Circuit refused to consider this argument on appeal. 

Instead, plaintiff argued below that it’s mark was protectable because it had developed secondary meaning – i.e. the public had come to associate the mark with plaintiff, and view products bearing the ‘Utah Lighthouse’ mark as coming from plaintiff.  In support, plaintiff offered evidence as to the number of ‘hits’ its website received from search engines such as Google and Yahoo, as well as websites associated with the Church.

The Tenth Circuit rejected this showing, hold that mere evidence of the number of hits a website received could not establish that the public had developed the requisite connection between the mark and plaintiff’s website.  What was required, instead, was a showing that these ‘hits’ came from the relevant market of consumers.  Said the Court:

The number of search engine hits, standing alone, is inadequate to demonstrate that consumers associate the mark with a particular product or producer, or perceive Utah Lighthouse as a distinctive mark. … [T]he number of search engine ‘hits’ would support UTLM’s claim of secondary meaning only if accompanied by some kind of evidence that the relevant market of consumers has visited the websites containing these hits.

No Use In Commerce

The Tenth Circuit further held that plaintiff had failed to establish that defendant had used plaintiff’s mark in commerce.  As stated above, defendant did not offer goods or services for sale at his site.  Instead, he offered criticism of plaintiff.  His site did, however, contain links to defendant Fair’s website, which offered books for sale that were also offered for sale on plaintiff’s site.  The Court held that, under the facts of this case, such links were too attenuated to establish the requisite use in commerce of plaintiff’s mark, because the links did not take the user directly to the pages of Fair’s website – its bookstore – at which such goods were offered for sale.  Instead, the links took the user to pages of Fair’s site on which they could find articles critical of plaintiff’s principal, or to the site’s homepage.  In reaching this result, the Tenth Circuit elected to follow the Ninth Circuit’s decision in Bosley Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir.  2005).  Said the Court:

The district court’s holding was consistent with the fact sensitive, case by case assessment that the Ninth Circuit utilized in Bosley, and that we believe is appropriate. …  The First and Ninth Circuits have emphasized that trademark rights cannot be used ‘to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view.’  Like in Bosley, Wyatt used UTLM’s trademark ‘not in connection with a sale of goods or services – but in connection with the expression of his opinion about UTLM’s goods and services.  In both Bosley and this case, the offending websites offered critical commentary about the trademark owner, and the use of the trademark was separated from any goods or services offered for sale.  The Wyatt website links to three articles on the Fair website and to the Fair homepage, but not directly to the Fair bookstore.  The Fair homepage is overwhelmingly noncommercial in nature, and contains only an inconspicuous link to the Fair online bookstore.  In a situation like this, the ‘roundabout path’ to the advertising or commercial use of others is simply ‘too attenuated.’

The Court rejected plaintiff’s argument that defendant’s use was an actionable commercial use of plaintiff’s mark because it prevented third parties from reaching plaintiff’s own site.  Said the Court:

UTLM’s second argument is that the Wyatt website prevents users from accessing … UTLM’s [website]. …  UTLM argues that the use of a trademark is within the scope of the Lanham Act if the use is in connection with the trademark owner’s sale of goods or services.  Such an interpretation eliminates the requirement of an economic competitor and is therefore inconsistent with the purpose of the Lanham Act ‘to protect the ability of consumers to distinguish among competing producers.’  The ‘interference theory’ has also been criticized on the ground that it would ‘place most critical otherwise protected consumer commentary under the restrictions of the Lanham Act.’  In  our view, the defendant in a trademark infringement and unfair competition case must use the mark in connection with the goods or services of a competing producer, not merely to make a comment on the trademark owner’s goods or services.

Consumers Not Likely To Be Confused Because Defendant’s Site Is A Parody

Finally, the Tenth Circuit held that plaintiff’s trademark infringement claim failed because consumers were not likely to be confused as to the source of defendant’s website, or believe that it was sponsored or affiliated with that of the plaintiff.  In reaching this result, the Court relied largely on its determination that Wyatt’s website was a successful parody of plaintiff’s site that was unlikely to confuse users as to its source or affiliation with plaintiff.  Said the Court:

The District Court determined that the Wyatt website was a parody because it would be immediately apparent to anyone visiting the Wyatt website that it was not the UTLM website due to the differences in content.  The district court did not commit error in making this finding … [T]he fact that the Wyatt website is a successful parody weighs heavily against a finding of likelihood of confusion.

As a result, the Tenth Circuit affirmed the District Court’s grant of summary judgment to defendants, dismissing plaintiff’s trademark infringement and unfair competition claims.

Anticybersquatting Consumer Protection Act Claims Fail Because Defendants Not Acting With Requisite Bad Faith Intent To Profit

The Tenth Circuit also affirmed the District Court’s dismissal of plaintiff’s Anticybersquatting Consumer Protection Act (“ACPA”) claim.  The Tenth Circuit found that this claim failed both because plaintiff failed to establish that defendant acted with the requisite bad faith intent to profit from its registration and use of plaintiff’s trademark, and because defendant was in any event protected by the safe harbor provisions of the ACPA, which bar ACPA claims against one who uses the mark of another with an actual and reasonable belief that such is a fair or lawful use thereof. 

The Court found that defendant did not have a bad faith intent to profit from the use of the mark.  In reaching this result, the Court relied on the fact that defendant’s use of the mark was a fair use designed to promote criticism of plaintiff’s founders, that defendant did not offer products or services for sale on its site, and that consumers were not likely to be confused as to the source of defendant’s site given it was  a parody.  Said the Court:

One factor is the domain name registrant’s ‘bona fide noncommercial or fair use of the mark in a site accessible under the domain name.’   The district court determined that Defendant’s use was entirely noncommercial, and a fair use parody, and therefore found that Defendants did not use the mark in bad faith.  This is consistent with the reasoning of several other courts that a website that critiques a product and uses the product’s trademark as the website’s domain name may be a fair use. …   Because Wyatt’s parody offers an indirect critique and lacks an overt commercial purpose, it is similar to these consumer commentaries, and under the circumstances of this case, constitutes fair use.

Defendants Protected By ACPA Safe Harbor Provisions

Lastly, the Court held that defendants also were entitled to the protections of the ACPA’s safe harbor provisions.  Said the Court:

[T]he ACPA contains a ‘safe harbor’ provision, which precludes a finding of bad faith intent if ‘the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.’  15 U.S.C. Section 1125(d)(1)(B)(ii).  The district court reasoned that because the Wyatt website was a parody, Defendants could have reasonably believed that use of the domain names was legal. …  We conclude upon de novo review that the safe harbor provision applies to Defendants’ use.

In reaching this result, the Court rejected plaintiff’s contention that the ‘safe harbor’ provision did not apply because defendant had not sought the advice of counsel as to the legality of his conduct.

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