The official Falwell site appears to be here: http://www.falwell.com/ ******* 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. Thanks 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 demand 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 names jerryfallwell.com and jerryfalwell.com, that parodies your client, Jerry Falwell. The parody both reminds the public of your client's hateful remarks about the causes of the September 11 terrorist attack on the United States, and evokes his criticism of the hypocritical attitudes that some Christians display toward compliance with biblical dictates, by suggesting that he himself ignores a significant biblical dictate. This is a completely non-commercial web site, which exists for the sole purpose of expressing, through a parody, my opinion 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 invoking 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 known" for the very characteristics that are parodied on my web site. He is a public 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 parodied 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 kitchen. Your letter claims that my use of your client's name creates a likelihood of confusion about the source and origin of my web site. Now I will confess that your client preys upon gullible people; but it is impossible to believe 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 failure 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 Cybersquatting 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 federal court. Let me point out to you that if you file a lawsuit against me, that 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 lawyers" who were trying to use the courts to "stretch laws in their favor" to overturn 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 client isn't above using radical lawyers of his own stripe to advance his own social agenda by trying to find conservative judges who may cater to him by suppressing the democratic rights of other people. Finally, if your client sues me as threatened, his lawsuit will be entirely 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 undertaking. Sincerely yours, Gary William Cohn --- MIDLEN LAW CENTER 7618 LYNN CHEVY CHASE, MD 20815-6043 301-656-3000 FAX: 301-656-8262 johnat_private http://www.midlen.com 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 Gentlemen: 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 yours, John H. Midlen, Jr. Cc: garyat_private and garyat_private ------------------------------------------------------------------------- POLITECH -- Declan McCullagh's politics and technology mailing list You may redistribute this message freely if you include this notice. Declan McCullagh's photographs are at http://www.mccullagh.org/ To subscribe to Politech: http://www.politechbot.com/info/subscribe.html This message is archived at http://www.politechbot.com/ -------------------------------------------------------------------------
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