FC: Part 2/2: Jerry Falwell demands to own jerryfalwell.com parody site

From: Declan McCullagh (declanat_private)
Date: Mon Nov 05 2001 - 20:56:19 PST

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    The official Falwell site appears to be here:
    Date: Mon, 5 Nov 2001 14:48:34 -0800
    From: "Gary Cohn" <garyat_private>
    To: declanat_private
    Subject: [Fwd: Jerry Falwell - trademark infringement]
    Hi Declan,
    Here is a letter sent to me, and my response.
    Please call me if you have any questions.
    Gary Cohn
    November 1, 2001
        John H. Midlen, Jr.
        7618 Lynn
        Chevy Chase, Maryland 20815-6043
                            Re:     Cyberbullying
        Dear Mr. Midlen:
             I am writing for the twin purpose of acknowledging receipt of two 
        letters, dated October 26, 2001, that you sent to me by overnight delivery
        service, and to reject the demands made in those letters.
             I am the author of a web site, which as you note uses the domain 
        jerryfallwell.com and jerryfalwell.com,  that parodies your client, Jerry
        Falwell.  The parody both reminds the public of your client's hateful 
        about the causes of the September 11 terrorist attack on the United 
    States, and
        evokes his criticism of the hypocritical attitudes that some Christians 
        toward compliance with biblical dictates, by suggesting that he himself 
        a significant biblical dictate.  This is a completely non-commercial 
    web site,
        which exists for the sole purpose of expressing, through a parody, my 
        that your client is a jerk.
             Confirming my opinion about your apparently humorless client is 
    the letter
        that you have sent me on his behalf, trying to suppress my criticism by 
        completely spurious claims under the trademark, cybersquatting and 
    privacy laws.
         Let us be clear.  Your client is, as you say, a "world famous television
        evangelist", although personally I think infamous or notorious would be 
    a better
        way to say it.  He is "nationally known . . . and . . . internationally 
        for the very characteristics that are parodied on my web site.  He is a 
        figure, and as the Supreme Court reminded him the last time he tried to 
    sue over
        a parody, he cannot succeed in a claim based on a publication that 
    makes fun of
        him unless he proves both falsity and actual malice, under the 
    standards of the
        New York Times v. Sullivan standard.  You do not assert that anything 
    on my web
        site is false.  If your client's feelings are hurt as a result of being 
        on my site, that is something he is going to have to learn to live 
    with.  As
        Harry Truman used to say, if you can't stand the heat, get out of the 
             Your letter claims that my use of your client's name creates a 
        of confusion about the source and origin of my web site.  Now I will 
        that your client preys upon gullible people; but it is impossible to 
        that even your client's devoted followers would believe, upon reaching 
    my parody
        site that it represents anything other than a parody of your client.
             Moreover, it is well established that the use of a domain name 
    denoting the
        subject of non-commercial criticism, even if that name is trademarked, 
    is a
        completely fair use of the name and is not actionable under the 
    trademark laws,
        under the new cybersquatting law, or under the common law of 
    Illinois.  I would
        call your attention to the case of Northland Insurance Company v. 
    Blaylock, in
        which an insurance company sued a disgruntled consumer who used the 
    domain name
        northlandinsurance.com as the address to post his complaints about the 
        of the company to pay him what he felt he was owed on a claim for a 
    loss on his
        boat.  Northland had registered northland.com, which it used the name 
    for its
        web site, much as your client registered falwell.com more than three 
    years ago
        and has used it to promote his business, which consists of making money 
    from his
        religion.  The United States District Court made short work of Northland's
        argument that Blaylock had violated either the Lanham Act or the 
        Act.  Moreover, a number of courts have recognized the First Amendment
        implications of the use of trademark law to try to quash criticism of 
    the holder
        of a trademark.
             In short, the domain names are not for sale, they have never been 
    for sale,
        and I have no interest in selling them to you or to anybody else.  I 
    have no
        obligation to give them to you, and I do not intend to give them to you.
             Your letter threatens both to invoke the Uniform Dispute 
    Resolution Policy
        before the World Intellectual Property Organization, and to sue me in a 
        court.  Let me point out to you that if you file a lawsuit against me, 
        action alone could preclude the UDRP procedure from going forward, under
        paragraph 18 of the procedure.  And speaking of hypocrisy, wasn't it Jerry
        Falwell who was complaining just last November about the "legions of 
        who were trying to use the courts to "stretch laws in their favor" to 
        the supposed democratic mandate of the people in Florida?  And wasn't 
    it Jerry
        Falwell who has been complaining about "radical homosexual lawyers" 
    trying to
        find "liberal judges" to advance their personal agendas?  It seems your 
        isn't above using radical lawyers of his own stripe to advance his own 
        agenda by trying to find conservative judges who may cater to him by 
        the democratic rights of other people.
             Finally, if your client sues me as threatened, his lawsuit will be 
        frivolous and I intend to ask my attorney to seek an award of attorney 
    fees both
        against your client and against his lawyer.  I also reserve the right 
    to sue
        your client and his lawyer for malicious prosecution.  Because I live 
    and work
        in Illinois, and there is nothing about my web site that would justify 
    you suing
        me anywhere else, I assume that lawyer will be somebody other than 
    yourself, but
        I would ask you to advise your successor of the risk that he is 
                                                          Sincerely yours,
                                                          Gary William Cohn
    7618 LYNN
    CHEVY CHASE, MD 20815-6043
    FAX: 301-656-8262
    October 26, 2001
    Via DHL Worldwide Express and e-mail
    Mr. Gary Cohn
    Mr. Gary Williams
    1954 First Street
    Highland Park, IL  60035
    Telephone: [Phone number deleted. --DBM]
                             Re:     Jerry Falwell
                                     Infringement of Trademarks and Service Marks
             This firm is Intellectual Property Counsel to Liberty University, 
    Liberty Alliance, Liberty Broadcasting Network, Inc., Old Time Gospel Hour, 
    Thomas Road Baptist Church, Jerry Falwell Ministries and Dr. Jerry 
    Falwell.  Dr. Falwell is the world famous television evangelist and is a 
    founding principal in each of the other listed entities, all of which are 
    corporations organized under the laws of the Commonwealth of Virginia or 
    the District of Columbia, except for Thomas Road Baptist Church, which is 
    an unincorporated religious body, and all of which operate under his guidance.
             Dr. Falwell is the owner of the following marks:  "Jerry Falwell" 
    and "Falwell"
             Liberty Alliance, as licensee, is the owner of the following 
    mark:  "falwell.com"
    Since at least the early 1960s, Dr. Falwell has been a nationally known 
    member of the clergy and since at least the mid-1970s he has been 
    internationally known in that same role.  He and the organizations he has 
    founded have expended a great deal of time and money in establishing 
    consumer recognition of, and confidence in, him and the services offered 
    under his trademarks and service marks.
             It has come to the attention of our clients (referred to herein 
    collectively as Dr. Falwell) that you are using their marks, or confusingly 
    similar marks, in connection with two or more web sites.  Specifically, Mr. 
    Cohn is the registrant of record and administrative contact for the domain 
    name jerryfalwell.com and Mr. Williams is the administrative contact for 
    the fictitiously registered domain name jerryfallwell.com.  There is no 
    distinction in law between "Jerry Falwell" and your dot com domain names 
    with top level suffixes, whether spelled identically or misspelled 
    confusingly similarly.  Your continued use of Dr. Falwell's marks is 
    unauthorized by him and is unauthorized by any of the organizations 
    associated with him.  Moreover, your conduct in using these marks creates a 
    likelihood of confusion in the marketplace concerning the source and origin 
    of the web sites you offer under the marks and does and will diminish his 
    reputation and good will.
             In view of Dr. Falwell's well-known and established reputation in 
    his marks, and the harm presented by your unauthorized use of them, your 
    conduct constitutes an infringement and violation of Dr. Falwell's 
    proprietary rights in his marks, unfair competition, false designation of 
    origin and dilution of the distinctive quality of his marks in violation of 
    applicable state laws and the Lanham Act (as recently amended by the 
    Anticybersquatting Consumer Protection Act and the Federal Trademark 
    Dilution Act). This unauthorized and unlawful conduct has caused and will 
    continue to cause damage and irreparable injury to Dr. Falwell and the 
    organizations associated with him, and diminishes the valuable good will 
    associated with his marks.
             Dr. Falwell therefore demands that you immediately cease and 
    desist from marketing, selling, or promoting any services or goods under 
    his proprietary marks, or any confusingly similar name or mark, and that 
    you cease use of the marks in all materials, including but not limited to 
    the following: web sites and marketing literature.  Moreover, Dr. Falwell 
    demands either the immediate delivery or the destruction of all materials 
    bearing the infringing designations.  Should any materials be outside your 
    direct control, Dr. Falwell requires the name, address and other 
    indentifying information of the parties in whose custody any infringing 
    materials may be.  Failure to comply with the terms of this letter may 
    subject you to the payment of damages for trademark/service mark 
    infringement (which may be trebled by the court), as well as attorneys' 
    fees and costs incurred by him in protecting his marks and enjoining your 
    unlawful use of his proprietary marks.
             Your infringing domain names are, of course, registered with 
    VeriSign, successor to Network Solutions, Inc.  Dr. Falwell demands that 
    "jerryfalwell.com" and "jerryfallwell.com" be transferred through VeriSign 
    to Liberty Alliance pursuant to VeriSign's Private Transaction Request, the 
    form for which is on the web at 
    www.greatdomains.com/services/escrow/escrowrequest.asp .  The transaction 
    fee charged by VeriSign is $500.00 per domain name, which Dr. Falwell 
    agrees to pay.  Moreover, for any costs you may have incurred which are 
    reasonable and which you can document, Dr. Falwell will reimburse you.  You 
    must also certify that you are not the owner or representative of any other 
    domain names that arguably might infringe on Dr. Falwell's marks and you 
    must agree not to register any such infringements in the future.  Failure 
    to agree to the foregoing will result in Dr. Falwell seeking compulsory 
    transfer of the infringing domain names through the World Intellectual 
    Property Organization in Geneva, Switzerland.  If your concurrence in 
    resolving this matter is not received by the undersigned by the close of 
    business, November 12, 2001, a Complaint will be lodged forthwith in 
    Geneva, as well as and in addition to the filing of a civil action in 
    federal court in the United States.
             Finally, in addition to the rights of Dr. Falwell in his marks, 
    you should be aware that many jurisdictions recognize common law rights of 
    privacy.  To the extent that Dr. Falwell's name or image appears on your 
    web site(s), there may be a common law action against you for the 
    infringement of his right to privacy on the basis of your appropriation of 
    his name and/or image for your own purposes.
             If you have any questions, I will be happy to discuss this matter 
    with you.  If you seek legal counsel, I will be happy to discuss this 
    matter with your attorney(ies).  In any event, we anticipate your timely reply.
                                                                     Very truly 
                                                                     John H. 
    Midlen, Jr.
    Cc:  garyat_private  and  garyat_private
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