Fourth Circuit Holds That Gripe Site Does Not Violate Federal Trademark Laws

Case: Lamparello v. Falwell (4th Cir. 8/24/05)

The One Sentence Summary: Plaintiff who operated a so called "gripe site" (http://www.fallwell.com/) to take issue with the Rev. Falwell's positions on homosexuality was not infringing on the Reverend's trademark rights or violating the anti-cybersquatting laws because the website was not operated for profit but rather for political commentary.

What They Were Fighting About: On February 11, 1999, after hearing an interview in which the Reverend Falwell expressed opinions about homosexuality that plaintiff/appellee Lamparello found offensive, he created a website to respond to what he believed were untruths about gay people. The name of the site was http://www.fallwell.com/. Believing that Lamparello's website was confusingly similar to the Rev. Falwell's own website (http://www.falwell.com/), the Rev. sent Lamparello cease and desist letters. Lamparello filed a complaint for declaratory relief in the district court to obtain a declaration that he was not infringing on Falwell's common law marks (i.e., "Jerry Falwell" or "Falwell") or registered trade mark (i.e., "Listen America with Jerry Falwell"). Falwell counterclaimed for trademark infringement, false designation of origin and violations of the anti-cybersquatting act. The district court entered summary judgment in favor of the Rev. Falwell and enjoined Lamparello from using the Reverend's name. The district court also required Lamparello to transfer his domain name ( http://www.fallwell.com/) to the Reverend. The district court denied Falwell's request for statutory damages or attorney fees, however, reasoning that the "primary motive" of Lamparello's website was to put forth opinions that were contrary to Rev. Falwell's positions -- not to take away monies or to profit from the website. This was true even though Lamparello's website contained a link to amazon.com where a book contrary to Rev. Falwell's views could be purchased, however the profit for same would go to Amazon -- not plaintiff/appellee Lamparello. Both sides appealed.

Fourth Circuit Holdings: The Fourth Circuit reversed the order of summary judgment in favor of the Rev. Fallwell on the following grounds:

• First, the website operated by Lamparello was not likely to cause confusion. The Fourth circuit believed it would be highly unlikely for a consumer to visit http://www.fallwell.com/ where Rev. Falwell's views were severely criticized and somehow believe that the Rev. Falwell was affiliated with or sponsored that site. In addition, the anecdotal evidence indicated that Rev. Falwell's followers knew immediately that the site was not sponsored by him, which is why they contacted his office immediately to let him know that the website existed that was critical of his views. In so ruling, the 4th Circuit declined to adopt Lamparello's contention that Sections 32 and 43(a) of the Lanham Act applied only to commercial speech, preferring to rest its position on the analysis that there was no likelihood of confusion. Therefore the court left open the question of whether the 4th Circuit will eventually follow the 9th circuit (in Bosley Med. Ins., Inc. v. Kremer, 403 F. 3d 672, 674 (9th Cir. 2005)) and the 6th Circuit in holding that Lanham Act must be restricted to commercial speech to prevent trademark law from becoming a "tool for unconstitutional censorship."
• Second, the 4th Circuit also declined to adopt Rev. Falwell's analysis that there was a risk of initial interest confusion caused by operation of Lamparello's site. The 4th Circuit found it significant that Lamparello had not attempted to profit from his use of the site. "Profiting financially from initial interest confusion is...a key element for imposition of liability under this theory." The 4th Circuit also declined to expressly endorse the initial interest confusion doctrine, referencing precedent in 1992 and 2004 where it had adopted a different test requiring courts to determine whether a likelihood of confusion exists by "examin[ing] the allegedly infringing use in the context in which it is seen by the ordinary consumer." [citations omitted.]
• Third, the 4th circuit rejected Falwell's claim that Lamparello's use violated that Anti-Cybersquatting Protection Act, because there was no evidence that Lamparello had "a bad faith intent to profit from using [www.fallwell.com] domain name." The court noted that the ACPA 15 USC Section 1125(d)(1)(B)(i)(IV) counsels against finding a bad faith intent to profit in circumstances such as those involved in the case because "use of a domain name for purposes of comment, [and] criticisms..[.constitutes] a bona fide noncommercial or fair use."