BRIEF IN SUPPORT OF
DEFENDANT'S MEMORANDUM IN OPPOSITION TO
PLAINTIFF'S MOTION FOR
II. DIRECT RESPONSE TO PLAINTIFF'S BRIEF
In this section, I will respond to some of the more egregious portions of Plaintiff's brief. I hope that the Court will understand that the fact that I may not respond to a particular section does not mean that I believe it to have merit; I simply lack the time, resources, and expertise to respond as thoroughly as I would like to. However, I am confident that the responses that I do make will amply demonstrate the weakness of Plaintiff's arguments.
A. "Incorrect" Information?
In Section I, Plaintiff says that my website "purports to provide information about the Mall" (emphasis mine). This is a condensation of statements in Section 9 of Plaintiff's original complaint, which said "Defendants promote Plaintiff's shopping mall and purport to disseminate factual information about Plaintiff's shopping mall. In fact, this information is incorrect." Although Plaintiff has removed the direct assertion that I am disseminating inaccurate information, their use of the loaded word "purport" clearly continues to imply that I am doing so. This, however, is not the case.
Plaintiff has not provided the Court with even one example of incorrect information being disseminated at my website, despite the obvious benefit to them of providing the Court with such information, and despite the ease with which they could do so if there were any truth to their remark. The reason that Plaintiff has not provided such evidence is because none exists - Plaintiff's claim that I am disseminating inaccurate information is itself inaccurate.
The facts are:
Much of the information that appears on my website was garnered from Plaintiff's own public press releases.
My listing of the stores in the mall was actually more accurate and complete than the listing at Plaintiff's own website at the time that the mall opened, which I verified for myself at the mall on opening day.
My list of links to the stores' own websites was (and probably still is) considerably more complete than the links at Plaintiff's website, as Plaintiff relies on the stores to provide the links, while I engaged in extensive research to find those links for myself.
(I should point out that, ever since Plaintiff initiated legal proceedings against me, my motivation to actively maintain the website has been more than a little subdued, so the site may not be 100% up-to-date at this time. However, if Plaintiff withdraws from these proceedings, I intend to once again make every effort to ensure that all of the information at my website is timely, accurate, and complete.)
B. "Complaint" Websites
Also in Section I, Plaintiff states that, rather than complying with their demand that I shut down my website and turn my domain name over to Plaintiff, I "subsequently proceeded to register additional domain names" (referring to the "complaint" domain names that I registered). Plaintiff conveniently neglects to mention that I registered the complaint domains only after they had initiated these legal proceedings against me, and as a direct response to the initiation of these proceedings.
Plaintiff goes on to state that I have been "using this collection of domain names" (emphasis mine), which is blatantly (and verifiably) false: As of this writing I have not used any of the "complaint" domain names (although I may have started to use them by the time you read this). I can easily prove that I could not possibly have been using these domain names at the time that Plaintiff filed their brief, but I do not want to take the time to do so right now. (I will compile and produce the proof only if Plaintiff continues to falsely claim that I was using the domain names in question at the time that they claimed that I was doing so.)
Then, Plaintiff further states that registering and "using" the complaint domain names is "revealing of Defendants' scheme to attempt to profit in some measure from its antics." This statement is totally incomprehensible. What profit? What scheme? How do I expect to profit from my actions? And if I do, how will these complaint websites help me to achieve my insidious goal? I am astounded that Plaintiff would stoop to inventing these outrageously spurious charges out of thin air - not only without any proof, not only without a shred of evidence, but without even any the slightest attempt to explain what they're talking about. These insulting statements by Plaintiff are beneath contempt, and are worthy of censure.
Finally, Plaintiff adds that "this Court has the authority to put an end to the entire scheme." If the Court can determine exactly what "scheme" Plaintiff is talking about, I'd appreciate it if the Court would share that information with me, because I haven't a clue.
C. "Complaint" Websites: Relevance and Free Speech
To digress from my direct response to Plaintiff's brief for a moment, I feel a need to say a few words about "complaint" websites.
First of all, I feel that the existence of the complaint websites is totally irrelevant to these proceedings, and is simply a red herring that Plaintiff has thrown into the mix in an apparent attempt to confuse the Court. The courts have recognized that complaint websites represent free speech issues, rather than trademark issues. That being the case, I urge the Court to ignore all references to these "complaint" sites in Plaintiff's brief. However, recognizing that the Court may not accept my recommendation, I will continue to address issues relating to the complaint websites as they arise.
"Complaint" websites are also known as "sucks.com" websites because the domain names are often created by starting with the name or trademark of the organization being complained about, to which "sucks.com" is added. This is the exact technique I followed in registering my five "complaint" domain names (WillowBendSucks.com, WillowBendMallSucks.com, ShopsAtWillowBendSucks.com, TheShopsAtWillowBendSucks.com, and TaubmanSucks.com).
According to former FCC Commissioner (and current teacher at the University of Iowa College of Law) Nicholas Johnson: "To date, there have been two 'sucks.com' cases decided under the Lanham Act." (Much of the material in this paragraph and in the remainder of this section was written by Mr. Johnson and is quoted from the "Cyberlaw" section of the University of Iowa website.) In Bally Total Fitness Holding Corp. v. Faber, "the Court immediately concluded that there was no likelihood of confusion between Bally and Ballysucks.com because they are not 'related goods' and dismissed the infringement claim."
Specifically, the Court's findings included:
"Bally argued that the marks are identical or that adding 'sucks' on the end of 'Bally' is a minor change. The court found that 'sucks' is such a loaded and negative word that the attachment of it to another word cannot be considered a minor change."
"Bally presented no evidence of actual confusion. Bally argued that the confusion would be patently obvious due to the similarity of the marks. The court, however, found that a reasonably prudent user would not mistake Faber's site and the official Bally's site" (emphasis mine).
"The court found, and Bally agreed to some extent, that in the context of consumer commentary, Faber was entitled to use Bally's mark. In fact, he had to use Bally's mark in some way to identify what he was criticizing."
"In concluding its discussion of likelihood of confusion, the court stated that 'applying Bally's argument would extend trademark protection to eclipse First Amendment rights. The courts, however, have rejected this approach by holding that trademark rights may be limited by First Amendment concerns.'"
(By the way, in Lucent Technologies, Inc. v. Lucentsucks.com, the other "sucks.com" case under the Lanham Act, "the court did not get beyond the jurisdictional issues to reach the merits. However, the court acknowledged in dicta that had the case reached the merits, the court probably would have reached a decision similar to the one reached in Bally.")
Again, my purpose in providing the preceding explanation is to ask the Court to ignore all of Plaintiff's references to "complaint" sites and to separate them from any ruling that the Court might issue. Although I don't believe there is any merit to their position, Plaintiff's attempt to obtain the domain name "ShopsAtWillowBend.com" from me is, at least, a reasonably legitimate trademark issue. However, Plaintiff's attempts to obtain the "complaint" domain names from me, and Plaintiff's attempts to cite my supposed use of those domain names as vague evidence of some kind of scheme on my part, are not legitimate trademark issues at all.
D. The Lanham Act
Almost exactly half of Plaintiff's brief is devoted to an attempt to use various sections of (and rulings under) the Lanham Act to convince the Court of the likelihood of success based on the merits of their action. However, Plaintiff committed a basic error that invalidates this entire section of the brief, which should disqualify it from consideration by the Court.
Quoting Plaintiff's Section II.A.1, section 1114 of the Lanham Act provides liability for:
"Any person who shall, without the consent of registrant -
"(a) use in commerce (emphasis mine) 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."
Also, Plaintiff relies on section 1125(a), which prohibits:
"the use in commerce (emphasis mine) of any word, term, symbol, etc. which is likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection or association of the user with the senior user"
Neither of these sections has even the slightest applicability to the issue before this Court. I am in no way engaged in commerce at the website in question. I am not buying anything. I am not selling anything. I am not conducting business of any kind. There is nothing that bears even the slightest resemblance to commercial activity taking place on my website. And since both of these sections were quite explicitly designed to regulate commerce, they have no bearing on my website whatsoever.
I am not trying to make some kind of pedantic distinction here, this goes to the heart of the very underpinnings of the body of common law that forms the basis for trademark law. The root concept of a trademark is an attempt to prevent anyone from trying to fool the public into believing that his goods and/or services are those of someone else, thus taking dramatically unfair advantage of someone else's hard work. The Lanham Act is a detailed embodiment of that principle. It is not an accident that both of the sections cited by Plaintiff include the key words "in commerce" - in fact, this phrase is the very heart and soul of the Lanham Act.
Again, I am not engaged in any kind of commercial activity at this website. The Lanham Act simply does not apply to this situation. The half of Plaintiff's brief that is filled with a discussion of the Lanham Act can and should be entirely disregarded by the Court.
Having said that, I would still like to respond to some of the more flagrant misrepresentations that Plaintiff committed in this section of the brief.
1. Likelihood of Confusion
In Section II.A.1.a, Plaintiff has missed the entire point of this test. The "confusion" under discussion here is commercial confusion - that is, the confusion of my goods and services with Plaintiff's goods and services. Since I have no goods or services, no possibility of confusion exists.
Might someone viewing my website "confusedly" believe, despite my disclaimer, that they're viewing Plaintiff's website? It's unlikely - but yes, it might conceivably happen. But this use of the word "confusion" refers to the viewer's befuddled mental state, and is not the "confusion" addressed in this test! This test relies on a more concrete meaning of the word "confusion," which does not involve someone being muddled, but rather involves someone mistaking ("confusing") one person's goods or services for those of another. Again, my goods and services cannot be confused with those of Plaintiff, because I don't have any.
Plaintiff admits that "this case is unusual in that Defendants are promoting Plaintiff's own Mark, for Plaintiff's own Mall." That being the case, there is no possibility of confusion as it applies to this test, because the law is not concerned with the possibility that a viewer might confuse Plaintiff's Mall with itself.
a. Relatedness of Goods and Services
Again, in Section II.A.1.a.2, Plaintiff is experiencing semantic difficulties surrounding the word "confusion." According to Plaintiff, "Plaintiff and Defendants both promote and advertise not only malls but the exact same mall." The emphasis is Plaintiff's - and I would like to further emphasize that in only the most tortured use of the English language could you possibly conclude that it was even possible to confuse the exact same mall with itself.
b. Similarity of the Marks
In Section II.A.1.a.3, Plaintiff states that "Defendants' other websites, such as www.willowbendmallsucks.com, are, in the eyes of federal law of trademarks and unfair competition, infringing. This element weighs strongly in Plaintiff's favor in determining whether a likelihood of confusion exists."
In light of the patent falsity of Plaintiff's premise, I'd have to question their conclusion. The fact is that Plaintiff has not presented a shred of evidence that supports their contention that "sucks.com" websites raise trademark issues. And that's because, as I've explained earlier, the only "sucks.com" trademark case that has been decided under the Lanham Act has been decided in favor of the sucks.com site.
c. Marketing Channels Used
In their discussion of this test in Section II.A.1.a.5, Plaintiff conveniently neglects to mention the word "marketing" and substitutes the word "promoting" instead. I'm sure that this is because I'm not marketing anything at my website, which would have made it difficult for Plaintiff to argue that we were using the same marketing channels. Notwithstanding Plaintiff's attempt to discuss an entirely different subject, "marketing" is a key element of this test; Plaintiff's failure to address the issue is a tacit recognition of the weakness of their position.
d. Defendants' Intent in Selecting the Mark
In Section II.A.1.a.7, Plaintiff sinks to new lows by libelously accusing me of attempted extortion, a vile and thoroughly scurrilous charge for which I would like (but for which I hardly expect) an apology from Plaintiff. It is incredibly tempting for me to respond in kind, but I do not wish to sully myself by sinking to their level, so I will confine my remarks to a rebuttal of Plaintiff's statements.
Plaintiff states, "There is no mystery surrounding Defendants' intentions in selecting its mark. It targeted this mark with full knowledge that it belongs to Plaintiff, and proceeded to secure numerous other domain names with Plaintiff's marks, as well, in an apparent scheme to profit from its actions."
At the risk of being repetitive, I must point out that (a) my acquisition of the "other" domain names (the "complaint" domain names) is irrelevant to these proceedings, and has been characterized as a free speech issue rather than a trademark issue in the only "sucks.com" case decided under the Lanham Act. More to the point, Plaintiff persists in alluding to some scheme of mine to profit from these websites, without providing even a hint of how I might be expecting to do that. I can only assume that Plaintiff believes that someone will believe this ridiculous assertion if they repeat it enough times, but it would have been nice if Plaintiff would have provided some inkling of what they were talking about.
Finally, Plaintiff has the stunning temerity to add that "Defendants are engaged in bad faith, and are attempting to extort something of value from Plaintiff in exchange for an agreement to discontinue the infringing use of Plaintiff's Mark and personal names." I am amazed that Plaintiff has the audacity to display such breathtaking disregard for the truth in a brief filed with this Court. (Perhaps I'm naive, but I had no idea that Officers of the Court were allowed to conduct themselves in such a shameful manner without fear of censure. It is precisely because of actions like this that lawyers are held in such low regard by such a large percentage of the American population. I should add that I'm not one of those who paints all lawyers with the disdain that is so richly deserved by Plaintiff's representatives - in fact, my father is attorney, and my sister is married to an attorney as well. Sorry for the digression, but I'm not accustomed to being viciously libeled, and I'm more than a little upset.)
Let me briefly summarize the events that led up to Plaintiff's extortion charge:
I created a website promoting Plaintiff's mall (Exhibits A and B), maintaining the website for two years while making absolutely no attempt whatsoever to contact Plaintiff in any way.
Plaintiff contacted me and demanded that I relinquish the domain name (Exhibit E). I twice asked them to explain exactly why I was legally required to do that (Exhibits F and H). Plaintiff ignored my requests (Exhibits G and J).
Plaintiff instigated legal proceedings against me (Exhibit J).
I registered several "complaint" domain names, and notified Plaintiff that I would use those domain names to explain the situation to the public if Plaintiff proceeded with litigation against me (Exhibit K).
Plaintiff offered me $1,000 to relinquish the original domain name and the complaint domain names (Exhibit L). Even Plaintiff does not suggest that this offer was prompted by any suggestion or even a hint from me. This offer was freely made by Plaintiff, who was not under duress of any kind.
I accepted Plaintiff's offer, thereby finalizing the contract between us (Exhibit M).
Plaintiff insisted that I agree to additional conditions that they sought to impose despite the fact that we had already reached an agreement (Exhibit N). I refused (Exhibit P).
Plaintiff proceeded with litigation - and now has the colossal arrogance to accuse me of attempted extortion!
If I were a suspicious person, I might be tempted to conclude that I have been "set up" by Plaintiff, that they offered me money simply so that they could then accuse me of attempted extortion if I accepted their offer - which they had no intention of honoring in the first place. That's not an unreasonable explanation for the series of events I've outlined above - and although it's not necessarily a conclusion to which I subscribe, neither can I reject it out of hand.
E. The Anti-Cybersquatting Law
In Section II.A.2 of Plaintiff's brief, Plaintiff attempts to demonstrate that my actions put me in violation of the Anti-Cybersquatting Law. According to Plaintiff, a person is liable under that law if that person uses a trademark belonging to another party, and if that person:
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that -
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark...
Plaintiff goes on to state that "the statute requires a showing of both bad faith, and use of a domain name containing the mark of another person," which is a serious misrepresentation of the section of the law that they reference. Contrary to Plaintiff's assertion, the statute does not require "a showing of... bad faith," it requires a showing of "a bad faith intent to profit" (emphasis mine).
As I have never had any intent to profit from this situation (despite the vague and wholly unsubstantiated hints of profit motive sprinkled throughout Plaintiff's brief), a critical element of liability under the Anti-Cybersquatting Law is missing, and the law simply does not apply. The portion of Plaintiff's brief that is devoted to a discussion of the Anti-Cybersquatting Law can and should be entirely disregarded by the Court.
Having said that, I would still like to respond to several of Plaintiff's misrepresentations that are contained in this section of the brief.
1. Bad Faith
Even while ignoring the requirement that they demonstrate that I have an intent to profit from my alleged use of their mark, Plaintiff attempts to show in Section II.A.2.a that I have exhibited bad faith, citing several factors mentioned by the statute itself.
a. Attempt To Divert
Plaintiff cites this prohibition from the statute to establish my intent to divert viewers from their website:
"...the intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark..."
Since I seek no commercial gain and have no intent to tarnish or disparage their mark, Plaintiff has no recourse under this section of the law.
Plaintiff adds that "the risk of such disparagement is underscored by Defendants' bad faith motives, evidenced by their operation of the other sites, such as www.shopsatwillowbendsucks.com." Not only is this statement factually incorrect (I have never operated a website at that address, although I may do so shortly), it is yet another attempt by Plaintiff to confuse the trademark issue by referring to the "sucks.com" domain names that I have registered, a clearly protected free speech activity.
Furthermore, my website's home page prominently features a link to Plaintiff's site. I not attempting to divert consumers away from Plaintiff's website, I am attempting to send consumers to Plaintiff's website! Because of the nature of the Web, I am unable to determine the exact number of viewers who have followed the link from my website to Plaintiff's website, but I suspect that I send hundreds (and perhaps thousands) of consumers to their website every week. (Although a technical explanation of this point is beyond the scope of this brief, Plaintiff could easily determine the exact number of viewers that I have sent to them - but, of course, they have chosen not to include that information in their brief.) The point is that, far from diverting viewers from Plaintiff's website, I am actually generating traffic for them.
b. Multiple Domain Names
Plaintiff makes the surprising assertion that "Defendants' ownership of an entire portfolio of domain names incorporating Plaintiff's marks, and even names, with the insertion of the word 'sucks' is the classic pattern of bad faith under this new law." I could not help but notice that Plaintiff cites no authority for this assertion - and that is because the assertion is based on nothing more than Plaintiff's imagination. Not only are the "sucks.com" domain names irrelevant to these proceedings, I have provided authoritative references in this brief that clearly demonstrate that they represent an exercise of my free speech rights, not a pattern of bad faith (classic or otherwise) as Plaintiff maintains.
F. Irreparable Harm
In Section II.B of their brief, Plaintiff makes the following claim:
"Plaintiff can establish that it will suffer, and is suffering actual irreparable injury as a result of the ongoing confusion, as well as the control by Defendants of the numerous additional websites incorporating Plaintiff's Mark and name, with the derogatory suffix 'sucks.' As the purchasing public continues to be exposed to Defendants' use of the various websites, Plaintiff's reputation remains subject to Defendants' control, in complete violation of the most basic trademark rights afforded to Plaintiff, and in violation of the policy behind the Anti-Cybersquatting law."
In addition to the irrelevancy of Plaintiff's discussion of the "sucks.com" domain names, this passage contains several serious factual errors:
Plaintiff emphasizes that they are suffering actual injury because of my "sucks.com" websites - but those websites have never existed! I am looking forward to learning from Plaintiff exactly how they plan to establish that they are suffering actual injury (in fact, actual irreparable injury) from websites that do not exist and have never existed.
Plaintiff claims that the public "continues" to be exposed to my use of the various websites - but as those websites do not exist (and have never existed), I fail to understand how the public has managed to be exposed to them at all.
Finally, Plaintiff correctly surmises that their reputation may suffer if I actually use the "sucks.com" websites. (More accurately, they state that their reputation has already suffered from my use of those sites, which is impossible, as I have not yet created them.) My plan for the "sucks.com" websites is to use them to document this situation, to expose to the world Plaintiff's bullying tactics, libelous accusations, failure to honor agreements, scant regard for the truth, and general bad faith in their dealings with me. If Plaintiff's reputation suffers as a result of my dissemination of the truth, so be it, they should have considered the consequences before they embarked on such an unsavory course of action.
It's important to note that, if I do actually create any of the "sucks.com" websites, any damage done to Plaintiff's reputation will in no way constitute any kind of trademark infringement. Rather, it will be entirely as a result of the exercise of my right of free speech - and as such, has no relevance to these proceedings.