Subject: Re: [NEXTEL-1] ACLU Goes To Battle With Nextel On Behalf of "NEXTELSUCKS.ORG"

From: [email-masked]
Date: Sun, 17 Aug 2003 11:10:29 EDT

This is actually an interesting (for those of us into this kind of thing) and 
exploding area of trademark law, involving a fairly significant number of 
trademarks for a variety of types of companies.  There have also been conflicting 
decisions made by a variety of courts, thus it may ultimately become a matter 
for the Supreme Court.

Alan T.

In a message dated 8/17/2003 2:50:56 AM Eastern Standard Time, 
[email-masked] writes:
ACLU Goes To Battle With Nextel On Behalf of "NEXTELSUCKS.ORG"

Here is the original letter from Nextel's attornty telling the website owner 
they
are infringing on Nextel's name-
http://www.nextelsucks.org/legalletter.htm

ACLU to Nextel-
------------------------------------------------------------------------------
--------------------------------------------------

>From Michael J. Steinberg Thu Jul 10 09:19:21 2003

Dear Ms. Blount.

We have been contacted by the person who owns the domain name and Website 
entitled
www.nextelsucks.org.  Apparently, you emailed her a letter on behalf of Nextel
demanding that she transfer the domain name to Nextel because use of the name
violates federal trademark laws, the anti-Cybersquatting Consumer Protection 
Act,
15 U.S.C. § 1125(d); federal anti-dilution laws, 15 U.S.C. § 1125(c); and 
federal
unfair competition laws, 15 U.S.C. § 1125(a).  (See copy of email reproduced
below).   Similar arguments about a website called taubmansucks.com were 
recently
rejected by the Sixth Circuit in Taubman Co. v. Webfeats, 319 F.3d 770 (6th 
Cir.
2003)(see copy of opinion attached).

The court held that the domain name was constitutionally protected speech: "We
find that the domain name is a type of public expression, no different in 
scope
than a billboard or a pulpit, and Mishkoff has a First Amendment right to 
express
his opinion about Taubman."  Id. At 778.  It appears to me that the owner of
nextelsucks.com, like the owner of taubmansucks.com, has a First Amendment 
right
to express herself through the domain name and that the Taubman Co. case is
controlling.   Please let me know if you disagree.

Michael J. Steinberg, Legal Director

American Civil Liberties Union of Michigan

60 West Hancock St.

Detroit, MI 48201

(313) 578-6814

fax (313) 578-6811

---

From: [email-masked]
Date: Sun, 17 Aug 2003 17:06:54 -0400

This VERY interesting......

The "Taubmansucks.com" site is similar to The "NEXTELSUCKS.ORG"  however the
original case pits the Lanham Act against the Constitution namely his First
Amendment right of Free Speech. Since the "NEXTELSUCKS.ORG" case is in the
"posturing" phase I can only assume ACLU would mount a similar defense to
represent Mr. Hither if he should become a defendant in any action by Nextel.

On The Other Hand-

This whole thing might be all about nothing. It could simply be Nextel's law firm
Trying to rack up some "Billiable"
hours to offset their large retainer and maintain the relationship with Nextel.
Some people would run and hide after receiving
a letter from an attorney making implying they are infringing rather than fight
it. There is no telling how many people Nextel
has intimidated using this "Scare" tactic-

Nextel "How Business Gets Done"
                                                              -We Intimidate you!

==================================================================================

I'm sure you have read The Taubman company v.Webfeats, for those who have
not........

United States Court of Appeals,
Sixth Circuit.

The TAUBMAN COMPANY, Plaintiff-Appellee,
v.
WEBFEATS, a Texas Company and Henry Mishkoff, an individual,
Defendants-Appellants.
Nos. 01-2648, 01-2725.
Argued:  Oct. 16, 2002.
Decided and Filed:  Feb. 7, 2003.

Shopping mall owner brought trademark infringement action against Internet domain
name registrant. The United States District Court for the Eastern District of
Michigan, Lawrence P. Zatkoff, Chief Judge, granted preliminary injunction, and
registrant appealed. The Court of Appeals, Suhrheinrich, Circuit Judge, held that:
(1) defendant's use of domain name was not commercial; (2) even if it was
commercial there was no risk of consumer confusion as to source; and (3)
defendant's other cybergriping sites created no potential for confusion as to
source.
Reversed.

OPINION
SUHRHEINRICH, Circuit Judge.

Defendant-Appellant Henry Mishkoff, d/b/a Webfeats, appeals from two preliminary
injunctions, respectively entered on October 11, 2001, and December 7, 2001, in
the United States District Court for the Eastern District of Michigan, together
granting Plaintiff-Appellee the Taubman Company's (Taubman) request to prevent
Mishkoff from using six internet domain names because they likely violate
Taubman's trademarks in the terms "Taubman," and "The Shops at Willow Bend."
Mishkoff claims two assignments of error.  First, he contends that the United
States District Court for the Eastern District *772 of Michigan lacked personal
jurisdiction over him.  Second, he claims that even if jurisdiction was proper,
Taubman is unlikely to succeed on the merits of its trademark claims because it
has not demonstrated that customers would likely be confused between the origin of
Taubman's and Mishkoff's products.

We reverse the decision of the district court and dissolve both injunctions.  We
find, first, that Mishkoff has waived any challenge he might have to the personal
jurisdiction of the district court in the Eastern District of Michigan.  Second,
Taubman had failed to demonstrate a likelihood of success on the merits because
Mishkoff's use was not "in connection with the sale or advertising of goods or
services," and there is no likelihood of confusion among consumers.
I. Facts

Mishkoff is a resident of Carrollton, Texas, and a web designer by trade.  Upon
hearing the news that Taubman, a Delaware corporation with its principal place of
business in Michigan, was building a shopping mall called "The Shops at Willow
Bend," in Plano, Texas, Mishkoff registered the domain name,
"shopsatwillowbend.com," and created an internet website with that address.
Mishkoff had no connection to the mall except for the fact that it was being built
near his home.
Mishkoff's website featured information about the mall, with a map and links to
individual websites of the tenant stores.  The site also contained a prominent
disclaimer, indicating that Mishkoff's site was unofficial, and a link to
Taubman's official site for the mall, found at the addresses
"theshopsatwillowbend.com," and "shopwillowbend.com."

Mishkoff describes his site as a "fan site," with no commercial purpose.  The site
did, however, contain a link to the website of a company run by Mishkoff's
girlfriend, Donna Hartley, where she sold custom-made shirts under the name
"shirtbiz.com;" and to Mishkoff's site for his web design business, "Webfeats."

When Taubman discovered that Mishkoff had created this site, it demanded he remove
it from the internet.  Taubman claimed that Mishkoff's use of the domain name
"shopsatwillowbend.com" infringed on its registered mark, "The Shops at Willow
Bend." Taubman filed a complaint on August 7, 2001, claiming, inter alia,
trademark infringement under the Lanham Act, 15 U.S.C. §  1114, asking for a
preliminary injunction, and demanding surrender of Mishkoff's domain name.
Mishkoff responsively registered five more domain names:  1) taubmansucks.com;  2)
shopsatwillowbendsucks.com;  3) theshopsatwillowbendsucks.com;  4)
willowbendmallsucks.com;  and 5) willowbendsucks.com. All five of these web names
link to the same site, which is a running editorial on Mishkoff's battle with
Taubman and its lawyers, and exhaustively documents his proceedings in both the
district court and this Court, both through visual scans of filed motions, as well
as a first person narrative from Mishkoff.  In internet parlance, a web name with
a "sucks.com" moniker attached to it is known as a "complaint name," and the
process of registering and using such names is known as "cybergriping."  [FN1]
See, e.g., Martha Kelley, Is *773Liabilty Just a  Link Away? Trademark Dilution by
Tarnishment Under the Federal Trademark Dilution Act of 1995 and Hyperlinks on the
World Wide Web, 9 J. Intell. Prop. L. 361, 375 (2002) (defining "cybergriping");
Ronald F. Lopez, Corporate Strategies for Addressing Internet "Complaint" Sites,
14 Int'l L. Practicum 101, 101-02 (Autumn 2001) (giving examples of different
types of "complaint" sites).

FN1. Since the issuance of the injunctions, Mishkoff has apparently created a
sixth "complaint site," "giffordkrassgrohsprinklesucks.com," referencing the law
firm representing Taubman on appeal.  This domain name was not a part of the
December 7, 2001 preliminary injunction order that enjoined Mishkoff from
maintaining the other "complaint names."

On October 11, 2001, the district court granted Taubman's motion for a preliminary
injunction, enjoining Mishkoff from using the first host name,
"shopsatwillowbend.com."  [FN2] On October 15, 2001, Taubman filed a motion to
amend the preliminary injunction to include the five "complaint names" used by
Mishkoff.  On December 7, 2001, the district court allowed the amendment and
enjoined Mishkoff from using the complaint names.

FN2. Taubman sought the injunction under other claims too, including violation of
the Anticybersquatting Act.  However, the district court granted the injunction
based only on the Lanham Act claim.  Accordingly, that is the only issue before
this Court.

On November 9, Mishkoff filed a notice of appeal from the October 11 injunction.
On December 10, Mishkoff filed a notice of appeal from the December 7 injunction.
Accordingly, each case is timely before this Court under Fed. R.App. P.
4(a)(1)(A).  The cases have been consolidated on appeal.
II. Personal Jurisdiction
Mishkoff first claims that the United States District Court for the Eastern
District of Michigan lacks personal jurisdiction over him.  He asserts that since
he is a resident of Texas, the websites were created in Texas, and the mall which
is the subject of the websites stands in Texas, a federal court in Michigan cannot
exercise jurisdiction over him as a defendant.
[1] Although Mishkoff raises serious doubts in our minds about whether the
district court properly held jurisdiction, his motion was ultimately untimely.
Although subject-matter jurisdiction can be challenged at any time, Fed.R.Civ.P.
12(h);  see also Ambrose v.
Welch, 729 F.2d 1084,
1085 (6th Cir.1984), even collaterally after disposition, see Fed. R.Civ. P.
60(b)(4), a challenge to personal jurisdiction must be raised in the first
responsive pleading or be waived.  Fed.R.Civ.P. 12(h)(1);  see, e.g., Reynolds v.
Int'l Amateur Athletic Fed'n, 23 F.3d 1110, 1120 (6th Cir.1994);
In Re Wolverine Radio Co., 930 F.2d 1132, 1137 n. 5 (6th Cir.1991).  Mishkoff did
not raise the issue of personal
jurisdiction in his original
answer.

[2] Mishkoff asks this court for leeway, in light of the fact that he was
originally litigating this case pro se.  Unfortunately, as the district court
stated, there is no legal basis for so doing.  This is not to say that this Court
will never grant leeway to a pro se party, but Mishkoff has not presented the kind
of extraordinary circumstances that would warrant such action.  Accordingly, we
find that Mishkoff has waived any challenge to personal jurisdiction.

III. Analysis

Mishkoff claims the injunctions preventing his use of the domain name
"shopsatwillowbend.com" and the five "complaint names" are inappropriate because
Taubman has not demonstrated a likelihood of success on the merits and because the
orders represent a prior restraint on his First Amendment right to speak.
*774 A. Standard of Review

[3] We review the district court's grant of a motion for a preliminary injunction
for abuse of discretion.  Marchwinski v.
Howard, 309 F.3d 330,
333 (6th Cir.2002);  Blue Cross &; Blue Shield Mut. of Ohio v. Blue Cross &; Blue
Shield Ass'n, 110 F.3d 318, 322 (6th Cir.1997).  "A district court abuses its
discretion when it relies on clearly erroneous findings of fact ... or when it
improperly applies the law or uses an erroneous legal standard.  Under this
standard, this court must review the district court's legal conclusions de novo
and its factual findings for clear error."
Owner-Operator Indep. Drivers Ass'n v. Bissell, 210 F.3d 595, 597 (6th Cir.2000).

[4] We have held that an injunction is proper in trademark cases where:
1) There is a likelihood of success on the merits;
2) There is the potential for irreparable harm;
3) There is the potential of adverse public impact;
4) Potential harm to the plaintiff outweighs the potential harm to the defendant.
See Rock and Roll Hall of Fame and Museum Inc. v. Gentile Prods., 134 F.3d 749,
753 (6th Cir.1998).  None of these factors, standing alone, is a prerequisite to
relief;  rather, they must be balanced.  Golden v. Kelsey- Hayes Co., 73 F.3d 648,
653 (6th Cir.1996); see also County Sec.
Agency v. Ohio Dep't of Commerce, 296 F.3d 477, 485 (6th Cir.2002).

B. Propriety of the Injunctions
1. Likelihood of Success on the Merits
The likelihood of success of Taubman's claim rests with the language of the Lanham
Act, 15 U.S.C. §  1114(1), which
imposes liability for
infringement of trademarks on:

Any person who shall, without the consent of the registrant
a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of
a registered mark in connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive ....

[5] Mishkoff proposes that, regardless of whether his use of Taubman's marks
violates the Lanham Act, any injunction prohibiting his use violates the
Constitution as a prior restraint on his First Amendment right of Free Speech.
Since Mishkoff has raised Free Speech concerns, we will first explain the
interrelation between the First Amendment and the Lanham Act. First, this Court
has held that the Lanham Act is constitutional.  Semco, Inc. v. Amcast, Inc., 52
F.3d 108, 111-12 (6th Cir.1995) (stating that reach of Lanham Act is limited so as
to be constitutional);  see also Seven-Up v. Coca-Cola Co., 86 F.3d 1379, 1383 n.
6 (5th Cir.1996).  The Lanham Act is constitutional because it only regulates
commercial speech, which is entitled to reduced protections under the First
Amendment.  Central Hudson Gas &;

Elec. Corp. v.
Public Serv. Comm'n of New York, 447 U.S. 557, 563, 100 S.Ct. 2343, 65 L.Ed.2d 341
(1980) (stating that regulation of commercial speech is subject only to
intermediate scrutiny).  Thus, we must first determine if Mishkoff's use is
commercial and therefore within the jurisdiction of the Lanham Act, worthy of
lesser First Amendment protections.

If Mishkoff's use is commercial, then, and only then, do we analyze his use for a
likelihood of confusion.  If Mishkoff's use is also confusing, then it is
misleading commercial speech, and outside the First *775 Amendment. See 134 Cong.
Rec. 31, 851 (Oct. 19, 1988) (statement of Rep. Kastenmeier) (stating that §  43
of the Lanham Act only affects misleading commercial speech);  cf.  Va. Bd. of
Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748, 771 &; n. 24, 96
S.Ct. 1817, 48 L.Ed.2d 346 (1976) (stating that misleading commercial speech is
not protected by the First Amendment); Bonito Boats, Inc. v. Thunder Craft Boats,
Inc., 489 U.S. 141, 157, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989)
(stating that a trademark owner has at best a quasi-property right in his mark,
and can only prevent its use so as to maintain a confusion-free purchasing public)
(quoting Crescent Tool Co. v. Kilborn &; Bishop Co., 247 F. 299, 301(2d Cir.1917)
(L.Hand, J.)).

Hence, as per the language of the Lanham Act, any expression embodying the use of
a mark not "in connection with the sale ... or advertising of any goods or
services," and not likely to cause confusion, is outside the jurisdiction of the
Lanham Act and necessarily protected by the First Amendment.  Accordingly, we need
not analyze Mishkoff's constitutional defenses independent of our Lanham Act
analysis.  With this backdrop in mind, we proceed to analyze the nature of the two
websites.
a. November 9 Injunction--The "shopsatwillowbend" Website

In regard to the first website, "shopsatwillowbend.com," Mishkoff argues that his
use is completely non-commercial and not confusing, and therefore speech entitled
to the full protections of the First Amendment.  Taubman offers three arguments
that Mishkoff is using its name commercially to sell or advertise goods or
services.  First, Mishkoff had a link to a site owned by Hartley's blouse company,
"shirtbiz.com."

Second, he had a link to his own site for his web design company, Webfeats.
Third, Mishkoff had accepted a $1000 offer to relinquish the name to Taubman.

[6] Although Mishkoff claims his intention in creating his website was non-
commercial, the proper inquiry is not one of intent.  Daddy's Junky Music Stores,
Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 287 (6th Cir.1997).  In
that sense, the Lanham Act is a strict liability statute.  See éHard Rock Caf
Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1152 n. 6 (7th
Cir.1992).  If consumers are confused by an infringing mark, the offender's
motives are largely irrelevant.  Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1188 (6th
Cir.1988) (citing Lois Sportswear, U.S.A., Inc. v. Levi Strauss &; Co., 799 F.2d
867, 875 (2d Cir.1986)).  We believe the advertisements on Mishkoff's site, though
extremely minimal, constituted his use of Taubman's mark "in connection with the
advertising" of the goods sold by the advertisers.  This is precisely what the
Lanham Act prohibits.

[7][8] However, Mishkoff had at least removed the shirtbiz.com link prior to the
injunction.  A preliminary injunction is proper only to prevent an on-going
violation.  See, e.g. Hecht Co. v. Bowles, 321 U.S. 321, 329-30, 64 S.Ct. 587, 88
L.Ed. 754 (1944) (recounting the historical role of courts of equity and stating
that purpose of injunctive relief is "to deter, not to punish").  As long as
Mishkoff has no commercial links on either of his websites, including links to
shirtbiz.com, Webfeats, or any other business, we find no use "in connection with
the advertising" of goods and services to enjoin, and the Lanham Act cannot be
properly invoked. [FN3]

FN3. Mishkoff sent a letter to Taubaman's attorneys on August 10, 2001,
referencing the removal of the shirtbiz.com link, and declaring that Mishkoff
"will not place any advertising of any kind on the site in the future."  It is
unclear whether Mishkoff also removed the Webfeats link at this time.  To be
clear, we also find the Webfeats link to be "use in connection with the
advertising of goods and services" which likewise must remain removed to avoid a
finding of commerciality.

*776 [9] Taubman's assertion that its offer to buy the domain name
"shopsatwillowbend.com" from Mishkoff qualifies Mishkoff's use of the mark as "in
connection with the sale of goods" is meritless.  Although other courts have held
that a so-called cybersquatter, who registers domain names with the intent to sell
the name to the trademark holder, uses the mark "in connection with the sale of
goods," they have also limited their holdings to such instances where the
defendant had made a habit and a business of such practices.  See, e.g., E &; J
Gallo Winery v. Spider Webs Ltd., 286 F.3d 270, 270 (5th Cir.2002) (noting that
defendant had made a business practice of selling domain names on eBay for no less
than $10,000);  Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir.1998).

In Panavision, the defendant, Toeppen, purchased and offered to sell the name
"panavision.com" to Panavision for $13,000.  Id. at 1318.

Evidence showed that Toeppen had attempted similar deals with a myriad of other
companies, ranging from Delta Airlines to Eddie Bauer.  Id. at 1319.  The Ninth
Circuit found Toeppen's intent to sell the domain name relevant in determining
that his creation of the site was a commercial use of Panavision's mark.  Id. at
1325.  In contrast, not only has Mishkoff not made a practice of registering and
selling domain names, but he did not even initiate the bargaining process here.
Although Taubman's counsel intimated at oral argument that Mishkoff had in fact
initiated the negotiation process, correspondence in the record supports the
opposite conclusion, and shows that Taubman first offered Mishkoff $1000 to
relinquish the site on August 16, 2001, and Mishkoff initially accepted it under
threat of litigation.  Hence, this case is distinguishable from Panavision.  There
is no evidence that Mishkoff's initial motive in selecting Taubman's mark was to
re-sell the name.  Therefore, we hold his use of the name "shopsatwillowbend.com"
is not "in connection with the sale of goods."

[10] Even if Mishkoff's use is commercial speech, i.e., "in connection with the
sale ... or advertising of any goods or services," and within the jurisdiction of
the Lanham Act, there is a violation only if his use also creates a likelihood of
confusion among customers.
15 U.S.C. §  1114(1).
Moreover, the only important question is whether there is a likelihood of
confusion between the parties' goods or services.
Bird v. Parsons,
289 F.3d 865, 877 (6th Cir.2002).  Under Lanham Act jurisprudence, it is
irrelevant whether customers would be confused as to the origin of the websites,
unless there is confusion as to the origin of the respective products.  See also
Daddy's Junky Music Stores, 109 F.3d at 280.
Since its inception, Mishkoff had always maintained a disclaimer on the website,
indicating that his was not the official website.  In Holiday Inns, Inc. v. 800
Reservation, Inc., 86 F.3d 619 (6th Cir.1996), we found the existence of a
disclaimer very informative, and held that there was no likelihood of confusion,
partly on that basis.
In Holiday Inns, the plaintiff hotel chain used the phone number 1- 800-HOLIDAY
for its guest room reservation hotline.  Holiday Inns claimed a Lanham Act
violation when the defendant company, a business that profited by taking
reservations *777 for several hotel chains, used the phone number 1- 800-H0LIDAY
(with a zero instead of an "O") in order to take advantage of any calls misdialed
by customers seeking Holiday Inns' hotline.  We found no Lanham Act violation,
partly because the defendant played an unmistakable disclaimer upon answering each
call, explaining that it was unaffiliated with Holiday Inns, and providing
customers with Holiday Inns' correct phone number.  Id.  at 621.  We found that
the defendant was, in fact, directing business to Holiday Inns that otherwise
would have been lost, and although some callers chose to do business with the
defendant, others hung up and called Holiday Inns. Had it not been for defendants'
service, Holiday Inns would likely never have recovered many customers who had
misdialed.  Id. at 625.
We find the analysis here indistinguishable from the disclaimer analysis in
Holiday Inns. [FN4] Mishkoff has placed a conspicuous disclaimer informing
customers that they had not reached Taubman's official mall site. Furthermore,
Mishkoff placed a hyperlink to Taubman's site within the disclaimer.  We find this
measure goes beyond even what was done by the defendant in Holiday Inns. There, a
customer who reached the defendant's hotline in error had to hang up and redial
the correct Holiday Inns number. Id. Here, a misplaced customer simply has to
click his mouse to be redirected to Taubman's site.  Moreover, like Holiday Inns,
the customers who stumble upon Mishkoff's site would otherwise have reached a dead
address. They would have received an error message upon typing
"shopsatwillowbend.com," simply stating that the name was not a proper domain
name, with no message relating how to arrive at the official site.  Hence,
Mishkoff's website and its disclaimer actually serve to re-direct lost customers
to Taubman's site that might otherwise be lost.  Accordingly, we find no
likelihood that a customer would be confused as to the source of Taubman's and
Mishkoff's respective goods.

FN4. In Holiday Inns, the defendant did not actually use the plaintiff's
trademark, "Holiday," but used the most common "misspelling" of it.  Accordingly,
we also found no infringement in Holiday Inns because there was no "use" of the
plaintiff's mark.

b. December 7 Injunction--The "sucks" Site

[11] In regard to Mishkoff's "complaint site," Taubman claims that Mishkoff's use
is necessarily "in connection with the sale of goods" because his intent behind
the use of the names "taubmansucks.com," et al., is to harm Taubman economically.
In Planned Parenthood Fed'n of Amer., Inc. v. Bucci, No. 97 Civ. 0629, 1997 WL
133313 (S.D.N.Y. March 24, 1997), aff'd, No. 97-7492, 1998 WL 336163 (2d Cir.
Feb.9, 1998), the defendant usurped the domain name "plannedparenthood.com" and
created a website displaying anti-abortion pictures and pro-life messages in clear
contradiction of the plaintiff's stated mission.  Id. at *1. The court there found
that, although not selling or advertising any goods, the defendant's use of
Planned Parenthood's mark was commercial because he had used plaintiff's mark and
attempted to cause economic harm.  Id. at *4. (noting that Lanham Act is
applicable because "defendant's action in appropriating plaintiff's mark has a
connection to plaintiff's distribution of its services").

Following Planned Parenthood, Taubman argues that all cybergriping sites are per
se commercial and "in connection with the sale of goods."However, Planned
Parenthood, as an unpublished district court opinion, is not binding on this
Court, and is nonetheless distinguishable. Even if Mishkoff's use is commercial,
it must *778 still lead to a likelihood of confusion to be violative of the Lanham
Act.

15 U.S.C. §  1114(1).

In Planned Parenthood, the defendant used the plaintiff's trade name as a domain
name, without the qualifying moniker "sucks," or any other such addendum to
indicate that the plaintiff was not the proprietor of the website.  In contrast,
"taubmansucks.com" removes any confusion as to source.  We find no possibility of
confusion and no Lanham Act violation.
We find that Mishkoff's use of Taubman's mark in the domain name
"taubmansucks.com" is purely an exhibition of Free Speech, and the Lanham Act is
not invoked.  And although economic damage might be an intended effect of
Mishkoff's expression, the First Amendment protects critical commentary when there
is no confusion as to source, even when it involves the criticism of a business.
Such use is not subject to scrutiny under the Lanham Act. In fact, Taubman
concedes that Mishkoff is "free to shout 'Taubman Sucks!' from the rooftops...."
Brief for Respondent, at 58.  Essentially, this is what he has done in his domain
name.  The rooftops of our past have evolved into the internet domain names of our
present.  We find that the domain name is a type of public expression, no
different in scope than a billboard or a pulpit, and Mishkoff has a First
Amendment right to express his opinion about Taubman, and as long as his speech is
not commercially misleading, the Lanham Act cannot be summoned to prevent it.

2. The Remaining Injunctive Factors

When, as here, a preliminary injunction would infringe upon a constitutional
right, the likelihood of success on the merits is often the determinative factor.
Detroit Free Press v. Ashcroft, 303 F.3d 681, 710 (6th Cir.2002);   Connection
Distrib. Co. v.
Reno, 154 F.3d 281, 288 (6th Cir.1998).  Even so, the other three factors also
suggest that a preliminary injunction is not proper.  Because Mishkoff is not
using Taubman's mark to peddle competing goods, and because any damages would be
economic in nature and fully compensable monetarily, we find no potential for
irreparable harm to Taubman that should lead us to uphold the injunctions.  See
Overstreet v. Lexington-Fayette Urban County Gov't, 305 F.3d 566, 578 (6th
Cir.2002) (citing Basicomputer Corp. v. Scott, 973 F.2d 507, 511 (6th Cir.1992)).
Moreover, absent a likelihood of confusion, we find no negative impact on the
public interest caused by Mishkoff's use.  In fact, due to the Free Speech
concerns present, we find the potential for irreparable harm to Mishkoff more
likely, and that the public would be negatively impacted, should we not dissolve
the injunctions.  See Overstreet, 305 F.3d at 578 (stating that the potential for
irreparable harm is present when it is constitutional rights that are being
enjoined);  see also Connection Distrib. Co., 154 F.3d at 288 (stating that the
loss of constitutional rights for even a minimal amount of time constitutes
irreparable harm).

Lastly, although no economic harm will accrue to Mishkoff should he be prevented
from maintaining his sites, there is little potential harm to Taubman, or any
other party, as well, because Mishkoff is not a competitor in the marketplace.
Accordingly, upon a balancing of the factors for injunctive relief, we dissolve
both injunctions.

3. The Safe Distance Rule

[12] Lastly, Taubman argues that the Safe Distance Rule, a little used tenet which
pre-dates the Lanham Act by nearly twenty years, applies to bar Mishkoff's use of
Taubman's mark on his "complaint site."  The Safe Distance Rule was created to
prevent known infringers from using *779 trademarks whose use by non-infringers
would not necessarily be actionable.  See Broderick &; Bascom Rope Co.  v. Manoff,
41 F.2d 353 (6th Cir.1930).  Taubman insists that since Mishkoff has infringed its
mark on his "shopsatwillowbend.com" site, the Safe Distance rule can be invoked to
curtail his use of "taubmansucks.com," even if use of "taubmansucks.com" would not
be infringing otherwise.

In Broderick, Judge Denison stated the Safe Distance Rule as follows:

[The defendants] had organized and built up a business based upon a fraudulent
appropriation of what belonged to the plaintiff.  To permit them to continue
without interruption, and to the full scope of identity permitted to an honest
competitor, would be to preserve for them a good will acquired through fraud.  The
due protection of trade-mark and similar rights requires that a competitive
business, once convicted of unfair competition in a given particular, should
thereafter be required to keep a safe distance away from the margin line-even if
that requirement involves a handicap as compared with those who have not
disqualified themselves.  Id. at 354. [FN5]  So, in spite of Taubman's assertions
otherwise, the Safe Distance Rule is likewise founded on a likelihood of confusion
standard. The rule simply notes that once an infringer has confused the public,
that confusion is not magically remedied by a name change.

Instead, the confusion lingers, creating the need for the infringer not only to
secure a new non- infringing name (or other infringing characteristic) for his
product, but one so far removed from any characteristic of the plaintiff so as to
put the public on notice that the two are not related.

FN5. The rule has its roots even before Broderick.  In Coca Cola Co. v. Gay-Ola
Co., 200 F. 720 (6th Cir.1912), though not referring to the Safe Distance Rule as
such, we held that a soft drink manufacturer, once found to be infringing on
Coca-Cola's trademarks, could no longer continue to use any mark which might be
found to resemble Coca-Cola--namely unmarked red barrels.  This was so even though
red barrels in and of themselves would not constitute infringement of a trademark,
either in 1912 or under the Lanham Act today.  But continued use of the barrels
after being found to be an infringer, would have permitted the defendant to
continue to capitalize from confusion garnered from the earlier infringement.  Id.
at 723.

We need not find whether the Safe Distance Rule has survived the enactment of the
Lanham Act, because even if it is still good law, it does not apply here. First,
the Safe Distance Rule has only been applied in settings where the second use was
merely a slight deviation of the first use and was also commercial.  See
Broderick, 41 F.2d at 353-54 (developing Safe Distance Rule in instance when
infringer attempted to change offending use from "au-tow-line" to
"auto-tow-line");  Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1156 (7th
Cir.1994) (applying Safe Distance Rule to prevent infringer from changing
infringing logo in trivial ways, because such changes would force relitigation of
essentially the same issue).  The Safe Distance Rule has never been applied when
the second use is a non-commercial critical commentary, but only where the second
use is a different name for the same product.  See, e.g., Tamko Roofing Prods.,
Inc. v. Ideal Roofing Co., Ltd., 282 F.3d 23, 40 (1st Cir.2002) (applying Safe
Distance Rule where infringer simply tried to escape liability by changing
infringing "Heritage Series" to "H-Series"); Broderick, 41 F.2d at 353-54.  As
stated above, the First Amendment protects Mishkoff's commentary and criticism,
and negates the Safe Distance Rule to any extent it might otherwise have applied.

Second, the Safe Distance Rule was meant to be applied only against proven *780
infringers.  See Broderick, 41 F.2d at 354 (referring only to persons "once
convicted of unfair competition");  see also, Tamko Roofing Products, 282 F.3d at
30 (applying Safe Distance Rule only after defendant had been found in contempt of
an injunction);  cf.  Prince of Peace Enters. v. Kwok Shing Import-Export Inc.,
No. C 94-04183, 1997 WL 475699 at *5 (July 8, 1997 N.D.Cal.) (stating that the
Safe Distance Rule does not apply where "one was not 'caught' infringing a
trademark").  Mishkoff has not previously been found liable of infringement, nor
in contempt of either injunction.  Accordingly, our finding above that Taubman is
not likely to succeed on the merits of the "shopsatwillowbend.com" claim precludes
any further discussion of the Safe Distance Rule.

IV. Conclusion

For the foregoing reasons, we REVERSE the decision of the district court and
dissolve both preliminary injunctions preventing Mishkoff from using the domain
name, "shopsatwillowbend.com," and the five "complaint names" listed above.
319 F.3d 770, 54 Fed.R.Serv.3d 1026, 65 U.S.P.Q.2d 1834, 2003 Fed.App. 0043P

[email-masked] wrote:

> trademarks for a variety of types of companies.  There have also been
> conflicting decisions made by a variety of courts, thus it may ultimately become
> a matter for the Supreme Court. Alan T. In a message dated 8/17/2003 2:50:56 AM
> Eastern Standard Time, [email-masked] writes:
>
>      Here is the original letter from Nextel's attornty telling the website
>      owner they
>      -------------------------------------------------------------------------------------------------------------------------------
>
>      We have been contacted by the person who owns the domain name and
>      Website entitled
>      violates federal trademark laws, the anti-Cybersquatting Consumer
>      Protection Act,
>      15 U.S.C. § 1125(d); federal anti-dilution laws, 15 U.S.C. §
>      1125(c); and federal
>      below).   Similar arguments about a website called taubmansucks.com
>      were recently
>      rejected by the Sixth Circuit in Taubman Co. v. Webfeats, 319 F.3d 770
>      (6th Cir.
>      find that the domain name is a type of public expression, no different
>      in scope
>      than a billboard or a pulpit, and Mishkoff has a First Amendment right
>      to express
>      nextelsucks.com, like the owner of taubmansucks.com, has a First
>      Amendment right
>                    Yahoo! Groups Sponsor
                        ADVERTISEMENT
                         [click here]

>
> Your use of Yahoo! Groups is subject to the Yahoo! Terms of Service.

--
    "NEXTEL-1 IT'S NOT JUST NEXTEL"
  Note The New address
Subscribe to Nextel-1: http://www.groups.yahoo.com/subscribe/NEXTEL-1

  "NEXTEL2 FOR iDEN SOFTWARE DEVELOPERS"
Subscribe to Nextel2: http://www.groups.yahoo.com/subscribe/NEXTEL2

  "WIRELESS FORUM HOMELAND SECURITY GROUP"
     The Complete Resource for Wireless Homeland Security.
Subscribe to WFHSG:  http://www.groups.yahoo.com/subscribe/WFHSG

------------------------ Yahoo! Groups Sponsor ---------------------~-->
Buy Ink Cartridges or Refill Kits for Your HP, Epson, Canon or Lexmark
Printer at Myinks.com. Free s/h on orders $50 or more to the US & Canada. http://www.c1tracking.com/l.asp?cid=5511
http://us.click.yahoo.com/l.m7sD/LIdGAA/qnsNAA/61FxlB/TM
---------------------------------------------------------------------~->

Your use of Yahoo! Groups is subject to http://docs.yahoo.com/info/terms/