[Politech] Court OKs trademark in domain name of critical website [fs]

From: Declan McCullagh (declan@private)
Date: Tue Apr 27 2004 - 09:32:08 PDT

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    -------- Original Message --------
    Subject: Another decision upholding non-commercial website domain name 
    that incorporates trademark
    Date: Thu, 22 Apr 2004 14:03:36 -0400
    From: Paul Levy <plevy@private>
    To: <declan@private>
    There are now several different courts of appeals that have upheld the
    right of individuals to post a non-commercial web site using the domain
    name www.company.com, and there are as yet NO appellate decisions that
    forbid such web sites outside the context of the serial cybersquatter
    who tries to erect a so-called gripe site as a CYA measure after being
    sued.  In fact, it seems to me that we are getting close to the point
    where companies that sue over such web sites have to consider seriously
    the possibility that they will not only lose the suit, but face a
    malicious prosecution action or other counter-measure from the consumer
    critic seeking damages for having been sued.
    We will be looking for a good test case.
    Paul Alan Levy
    Public Citizen Litigation Group
    1600 - 20th Street, N.W.
    Washington, D.C. 20009
    (202) 588-1000
    >>> Angela Bradbery 04/22/04 12:20PM >>>
    For Immediate Release:	
    Paul Alan Levy (202) 588-1000April 22, 2004		
    Shannon Little (202) 588-7742
    Appeals Court Decision Protects Right to Air Gripes Online
    	WASHINGTON, D.C. - In a victory for free speech on the Internet,
    the U.S. Court of Appeals for the Fifth Circuit today reversed a
    district court decision restricting the ability of a homebuilding
    company's customer to air his dissatisfaction on a gripe Web site. The
    appeals court decision agreed with arguments made by Public Citizen,
    which represented the customer.
    	The case involves Joseph Maxwell, a Houston-area software
    engineer who was unhappy about his dealings with an agent of TMI Inc., a
    company that builds houses under the trademark TrendMaker Homes. Maxwell
    created a non-commercial Internet gripe site at www.trendmakerhome.com
    (soon to move to www.trendmakerhome.info). He chose not to add "sucks"
    to the domain name because he felt that TMI was basically a good company
    with quality products, but he had a complaint about one aspect of its
    business practices - a salesperson's misleading statements about what
    home models were available.
    	TMI alleged that Maxwell's site violated the Lanham Act, which
    governs commercial speech, by violating its trademark and potentially
    confusing users who were looking for TMI's actual site -
    www.trendmakerhomes.com. It also alleged that he violated the
    Anti-cybersquatting Consumer Protection Act (ACPA) and state trademark
    law. In February 2003, a Texas district court barred Maxwell from using
    10 different TMI trademarks and ordered him to pay $80,000 in statutory
    damages and attorney fees.
    	The appeals court agreed with Public Citizen that Maxwell's site
    was entirely non-commercial and therefore the Lanham Act does not apply.
    Further, because Maxwell had no "bad faith" intent to profit from the
    site, TMI's argument regarding the ACPA was also unsupportable.
    	"We are gratified that this court has joined other courts across
    the country in recognizing the value of unfettered non-commercial speech
    on the Web," said Paul Alan Levy, an attorney with Public Citizen who
    represented Maxwell. "The rule that non-commercial gripe sites are
    protected speech is becoming so clear that companies run a serious risk
    of facing monetary penalties for suing over such Web sites' domain
    	To read the appeals court decision, go to
    To read Public Citizen's brief, please visit
    Public Citizen is a nonprofit consumer advocacy organization with a
    history of defending free speech on the Internet. It is based in
    Washington, D.C. For more information, please visit www.citizen.org.
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