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The Appeals Hearing:
Paul Levy's Argument

[Paul Levy] Hank Mishkoff is a resident of Dallas, Texas, who was pleased when Taubman decided to build a shopping mall near his home, and to express his pleasure and his approval he erected a website about this impending mall. When Taubman sued him for his trouble, he set up a second website to denounce the litigation, and Taubman, and the lawyers, and everybody involved. Mishkoff identified both websites with domain names that included portions of Taubman's trademarks, each of which described accurately the contents of the site to which it pertained. The favorable site about the mall was called "ShopsAtWillowBend.com." The unfavorable site about the litigation coupled those words in variations, and the word "Taubman," with the word "sucks." And the central question on this appeal is whether Taubman properly invoked the federal trademark laws to suppress these websites. Given the limited time and what we think is an adequate briefing on the subject, I'm not going to discuss the issue of personal jurisdiction unless the Court has questions about it.

In order to show a trademark violation, Taubman had to prove both likelihood of confusion and use in commerce. I'd like to address those two elements in that order.

Under the trademark laws, Taubman cannot prevent Mishkoff from using the words "Shops at Willow Bend" in a non-confusing way to describe its product, its mall, or its company. It may only bar him from using those words to misidentify himself as the owner of that mall, or his product as being Taubman's. And whether you term that as no likelihood of confusion, or fair use, or nominative fair use, it's a basic principle of trademark law. Trademark law protects only against confusion as to source and on the part of those who care about source.

Now the web page itself is not confusing, and I would refer the Court to the home page, which is what the viewer sees when they first open ShopsAtWillowBend.com. The page makes clear that it is not Taubman's site, because there's a notice in the brightly green-colored green box at the top, which tells any user who comes to the site, having wanted to go to Taubman's site, that this is not Taubman's site.

So the real question in this case, we submit, is: What means are permissible to communicate truthful information about the content of websites, to tell Internet users that Mishkoff has a website that has information in which they may be interested? Are domain names a fair way to do that? Are they like the title of a book? Are they like the title or subject cards in a card catalogue in the library? Are domain names key finding devices, key ways for site operators to communicate to potential Internet viewers the content of their website and not necessarily to identify the authors of the site? We think that they are, and that so long as domain names, in combination with the sites themselves, accurately portray the content, and are not confusing about being from the trademark-holder - in this case the Taubman Company - there ought not to be a violation -

[Judge Boggs] Is the - with respect to the - we'll call it the Willow Bend site, the first one - is the disclaimer crucial in the sense that the title alone doesn't have the pejorative that the others do, so when you say it accurately describes the site, that's a better argument with respect to the "sucks" sites than it is with respect to the first?

[Paul Levy] I think it is an accurate description of the site, which is solely about the Willow Bend Mall. Now, we do think, and we certainly advise clients in the - we don't advise companies, we advise individuals - that if you're going to try to use a domain name which exactly parrots or comes close to parroting the trademark, you'd better make it really clear up front that yours is not the official site, so that anybody who really only wants the official site will go elsewhere. So yes, we think the disclaimer is quite important, and we rely on it heavily.

[Judge Boggs] Are you familiar with the Holiday Inns versus 800 Reservation case from this circuit?

[Paul Levy] Yes, I am.

[Judge Boggs] And in that case, at least by the end of that litigation, the disclaimer was pretty crucial in that decision, wasn't it?

[Paul Levy] I think that's right, and we have a very prominent disclaimer.

It seems to us that Taubman's arguments and the District Court's decision below are built on two fundamentally bad assumptions about domain names. First of all: That domain names necessarily designate source. Now, there are many examples of domain names that don't designate source: www.apples.com, for example. And there is no reason why a name that has a trademark cannot indicate subject as well.

Now, it's true, there are lots and lots of cases cited by the plaintiff in this case that say domain names indicate source but, by and large, those are cases in which the distinction between subject of site and source of site was unimportant. Brookfield Communications, for example. When West Coast Entertainment sets up a website about its own product and uses the term "movie buff" to describe that product, its product is the subject of the site, and it is implicitly identifying itself as the source of that product, and thus of the website. And that case is about: Which of the two parties - is it West Coast Entertainment or is it Brookfield - that is entitled to use the term "movie buff" to denominate its product, and therefore the site? There was no claim in that case - there was no claim in the Data Concepts versus Digital Consulting case, similarly - that West Coast was using "movie buff" to describe Brookfield's product.

[Judge Boggs] Are there any cases where a book title has been directly used as a domain name? I was thinking you can clearly write a book called "Murder at the Plaza," even if you don't own the Plaza Hotel, right?

[Paul Levy] Right.

[Judge Boggs] Then if you have a website called "MurderAtThePlaza.com," I just didn't know if that had ever come up, and if you're familiar with it -

[Paul Levy] No. But to take book titles, one could write a book and call it "Thomas Jefferson," and one could have a website, www.ThomasJefferson.com, and not be Thomas Jefferson or one of his heirs.

[Judge Boggs] Well, that's a little different. At least it's not directly - not directly commercialized. If it's Britney Spears, we might have a different question.

[Paul Levy] In the modern cases, when the underlying page isn't confusing and where the name fairly identifies the subject of the page, the Court finds no violation. Northfield - Northland Insurance versus Blaylock was such a case. And a very recent case cited in our Rule 28(j) letter, the decision by Judge Posner just about a week ago in the BargainBeanies.com case is similar. The defendant in that case was allowed to use the trademarked term "Beanie," referring to Beanie Babies, in her domain name. And it was allowed - she was allowed to do it because it didn't identify the site as one sponsored by Ty, Incorporated, which was the owner of the trademark. It identified her site as one to which one could go to get information about how to get Beanie Babies, namely from her. Similarly, Mishkoff, who has an entitlement to use the words "Shops at Willow Bend," so long as not in a confusing way, is allowed to use it as a domain name to indicate that his site is about Taubman's mall.

[Judge Clay] Counsel, the only thing before us is the preliminary injunction - whether the preliminary injunction was properly granted.

[Paul Levy] The two preliminary injunctions. The preliminary injunction -

[Judge Clay] Exactly, two of them. If we don't think that there was adequate findings of fact and conclusions of law to support the granting of the preliminary injunction because there was not a balancing of equities by the District Court - or at least not a sufficient balancing of the equities - then we don't really have to get into these issues that you're talking about, do we?

[Paul Levy] It's true that you could rule on that basis. We would like a broader ruling and we argue for a broader ruling.

[Judge Clay] Well, you may want that, but if the District Court hasn't done its job in the first place, it's kind of hard to uphold the preliminary injunction just as a threshold matter, don't you think?

[Paul Levy] That is certainly true. On the other hand, this is a de novo review, and therefore we think the Court could go beyond simply overturning both preliminary injunctions based on lack of findings. Obviously, that's at the discretion of the Court.

[Judge Clay] We have to have something to review in terms of what the District Court did before we can say if the preliminary injunctions were properly granted, is what I'm asking.

[Paul Levy] I certainly agree with you that the Court could do that.

[Judge Clay] Let me ask you this. Are you waiving the - or are you persisting in your argument about the jurisdictional issue in terms of whether there was a personal jurisdiction?

[Paul Levy] Mr. Mishkoff would much rather defend himself in Texas. We think the - or if the Court has questions, I would be glad to address them.

[Judge Clay] Well, no, it's your case. I'm just asking you if you want to make the argument on that or -

[Paul Levy] We do.

[Judge Clay] Excuse me.

[Paul Levy] Sorry.

[Judge Clay] Or whether you're waiving that, or what's your position? Is that still an argument you want to pursue or not? That's really what I want to know from you.

[Paul Levy] It is an argument we want to pursue, and I rest on my briefs on that argument unless the Court has questions about it. I think we've made a compelling case for the lack of personal jurisdiction in our briefs.

[Judge Boggs] With respect to the disposition, though, here, if we were to say, "Well, the judge just didn't make adequate findings," then presumably, you'd be right back in his Court and could easily have the same injunction reissued with more findings.

[Paul Levy] That is correct, and Mr. Mishkoff would much rather face a Texas jury in this case than one in Detroit, which is very expensive for him to -

[Judge Boggs] I take it you'd also rather face us on the merits today, rather than facing us another year and a half down the road.

[Paul Levy] That is true. I have to say, I believe that - The summary judgment record isn't before you, I don't think it's very different from the record that's before you today. Now obviously, there are facts in addition, but I think the basic legal issues in this case are the same, and I think this is basically a law case and not a fact case.

[Judge Boggs] And when you say "the summary judgment record," that simply has not been ruled on yet, is that correct?

[Paul Levy] That is correct. The cross motions for summary judgment have been pending for some time.

The second bad assumption in the decision below is that it assumes Internet users are easily distracted and easily fooled by domain names, that if they're going looking for a company and they find a different website, they won't persist. The recent cases -

[Judge Clay] You just made these statements. Nobody is giving us any empirical evidence on any of this. Both parties are making all kinds of statements like that and there's nothing you're giving us to support it.

[Paul Levy] Well, I think it's generally - It's true that the courts make these statements without evidence, both in the cases that go his way, and in the cases that go mine, based on their impressions. I would say that in the record on appeal is a Google search that the District Judge himself did, which - and it's at pages 201 to 208 of the Joint Appendix - it shows that somebody who got to Mishkoff's page, wanted Taubman's page, was confused, if they'd done a Google search the top two hits and four of the top ten hits would have been Taubman's page, A. And B, going back to the green box, they don't even have to go to a search engine, because Mr. Mishkoff gives them the URL and gives them a clickable link.

[Judge Boggs] I was just about to ask if he gave a click link.

[Paul Levy] He gave a clickable link, and if you -

[Judge Boggs] So that's even better than in 1-800, where you have to hang up and redial the right number.

[Paul Levy] That is correct. If you go to the CD that's in the record and if you're online - of course, if you're not online you'll just go nowhere - but if you're online at the same time that you're using the CD, you will go right to Taubman's website.

[Judge Boggs] That page you were showing, is that in the Joint Appendix? What's the page number?

[Paul Levy] Well, it's not in color in the Joint Appendix.

[Judge Boggs] Okay.

[Paul Levy] It's on the CD in the Joint Appendix.

[Judge Boggs] Alright. But what's the page in black and white in the Joint Appendix?

[Paul Levy] The page in the Joint Appendix in black and white was attached to the motion for a preliminary injunction at page - going very quickly -

[Judge Boggs] If you can't find it, you can give it to us later.

[Paul Levy] It's at page 38.

[Judge Boggs] Okay, thank you, counsel.

[Paul Levy] Still another reason - I see my time is up. So - I would like to discuss the issue of commerciality, but my time has expired.

[Judge Boggs] Alright. You'll have your time for rebuttal.

Next: Doug Sprinkle's Response

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