 |
Many times, "complaint" sites prominently feature an image of a company's trademark logo, usually with the word "sucks" or other derogatory words. The presence of the derogatory comment may clear any potential customer confusion, so a traditional trademark infringement argument may fail. However, the Federal Anti-Dilution Act of 1996 (15 U.S.C. §1125) prohibits use of a name which harms the distinctiveness of "famous" marks, without regard to whether any likelihood of confusion exists, and regardless of the absence of competition. An exemption in the Act, however, §1125(c)(4) permits:
| (A) | | Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark. |
|
| (B) | | Noncommercial use of a mark. |
|
| (C) | | All forms of news reporting and commentary.46 |
|
Most "complaint" sites claim to be out of reach by trademark dilution laws because their activities supposedly constitute non-commercial consumer activism. Depending on the tone and content of the site, however, the "non-commercial" activity of a "complaint" site is quite often debatable. Two cases illustrate both ends of the spectrum, Bally Total Fitness Holding Corp. v. Faber47 and Jews for Jesus v. Brodsky.48
In Bally a California court held that defendant Faber, who had created a Web site named Bally Sucks, which he created "in a simmering rage after a Bally club in California didn't upgrade his membership as promised,"49 violated neither federal trademark infringement nor trademark dilution statutes because the site was merely a parody designed to voice consumer complaints and not commercially competitive with Bally in any way. The site was so clearly anti-Bally that it could not be construed as the company's handiwork. In Bally, the court noted that Faber "does not use Bally in his domain name" and that "even if Faber did use the mark as part of a larger domain name, such as 'ballysucks.com', this would not necessarily be a violation as a matter of law" because "no reasonably prudent Internet user would believe that 'Ballysucks.com' is the official Bally site or is sponsored by Bally. Finally, the court also cited congressional intent to exempt parody and other non-commercial imitation from the Act.50
A company considering legal action against a "complaint" site should consider the way in which it is depicted on the site. If the site clearly would not be confused as the company's own site (i.e., prominently visible slogans criticizing the company, obscene pictures) then a court following Bally may permit such criticism on the Web, provided that the "complaint" site is not engaged in commercial activity, but is merely criticism, commentary or parody. However, if the "complaint" site could lead a consumer to confuse it with the company's real site (i.e., similar domain names or similarities in overall graphical presentation of the site), then a court might be willing to intervene, as in the Jews for Jesus case below.
In Jews for Jesus, defendant Brodsky created a Web site called jewsforjesus.org which contained statements critical of an organization called Jews for Jesus. At one point, Brodsky was reported as starting that the "intent behind my bogus 'Jews for Jesus' site (www.jewsforjesus.org) is to intercept potential converts before they have a chance to see the obscene garbage on the real site."51 Users who reached Brodsky's site would be "invited to 'click here to learn more about how the Jews for Jesus cult is founded upon deceit and distortion of fact.' "52 Because of Brodsky's intent to divert users looking for the real Jews for Jesus site to his own by creating a Web site with a confusingly similar domain name, the court found that "[t]hese statements demonstrate the actions by the Defendant were wilful [sic] and undertaken in bad faith, with full knowledge of and the intent to cause confusion and to infringe on the rights of the Plaintiff Organization."53 The court held that the plaintiff had demonstrated a likelihood of success on its claim of federal and common law service mark infringement.54
The court also found that Brodsky's conduct was "commercial" for the purposes of substantiating plaintiff's trademark dilution claim for two reasons. First, although Brodsky's site did not solicit funds or sell products, it contained a hyperlink to the Outreach Judaism Organization Internet site, which did sell merchandise, making the jewsforjesus.org site a "conduit" to commercial activity, despite a disclaimer which disavowed any affiliation with Outreach Judaism.55 Second, the court considered Brodsky's conduct "commercial" because "it is designed to harm the Plaintiff Organization commercially by disparaging it and preventing the Plaintiff Organization from exploiting the Mark and the Name of the Plaintiff Organization. In addition, the Defendant Internet site has and will continue to inhibit the efforts of Internet users to locate the Plaintiff Organization Internet site."56
The court's finding of commercial use in Jews for Jesus is important because occasionally, a "complaint" site will plug books57 sell advertising space,58 solicit donations,59 or provide links to other commercial sites. The Jews for Jesus case seems to suggest that any commercial benefit derived from a "hate" site, or any commercial harm done to a company, would classify the site as commercial, thereby permitting a trademark dilution claim.
For example, in Planned Parenthood, the court held that defendant's use of a similar domain name was commercial conduct because:
(1)
defendant is engaged in the promotion of a book, (2) defendant
is, in essence, a non-profit political activist who solicits funds
for his activities, and (3) defendant's actions are designed to,
and do, harm plaintiff commercially.60
The court concluded that "[t]he conduct of the Defendant
also constitutes a commercial use of the mark and the Name of
the Plaintiff Organization because it is designed to harm the
Plaintiff Organization commercially be disparaging it and preventing
the Plaintiff Organization from exploiting the Mark and the Name
of the Plaintiff Organization."61
Any copyright claim will be subject to the defense of "fair
use" under 17 U.S.C. section 107. Federal law accepts
the "fair use" of copyrighted material without prior
consent of the copyright owner for "criticism, comment, news
reporting, teaching, scholarship, or research."62
Most "complaint" sites can probably be classified as
some form of criticism, comment or parody, all of which would
most likely fall under the fair use exception.
Lastly, a company considering legal action against a cybercomplainer
must consider the jurisdiction in which they bring suit.
For example, in March of 1998, U-Haul brought suit in Arizona
against John Osborne of Georgia for trademark infringement and
libel. Osborne ran the "U-Hell" Web site which
published visitors' U-Haul "horror" stories. Arizona
is U-Haul's home base, but the defendant filed a motion to dismiss
the case, arguing the defendant and witnesses are in Georgia,
not Arizona. The case was summarily dismissed,63
with U-Haul vowing to refile in Georgia.
| V. | NON-LITIGATION STRATEGIES FOR ADDRESSING COMPLAINT SITES |
In order to stem the proliferation of confusing "complaint"
driven domain names, many large companies (or their marketing/advertising
firms) are registering or buying domain names critical of the
company mark.64 Many companies will register
the following variations on complaint sites: [name]sucks.com,
[name]stinks.com, [name]blows.com, ihate[name].com, screw[name].com,
and boycott[name].com.65
In addition, a whole market has popped up for companies
that monitor the Internet for abuses of a company's trademark
or copyrighted material.66 A large list of such
companies is available on Yahoo!.
The price for such monitoring, however, is not cheap. Approximately
600 companies pay about $13,000 to one company that prowls Web
sites and helps with damage control when criticism hits the Internet.67
Less expensive techniques involve software that monitors who links
to a company's Web site.68
Finally some companies regularly monitor complaint Web site
and take a proactive approach to such complaint sites and customer
complaints.
For example, the most captive audience at dunkindonuts.org are
the executives of Dunkin' Donuts, who fastidiously monitor the
site and "occasionally send coupons and mollifying e-mail
to disgruntled consumers."69 Nike Inc. has
taken to a peaceful counteroffensive. In response to several
sites urging consumers to boycott Nike for underpaying Third World
workers, the sports clothing manufacturer has created a site separate
from the company's main Web page. It features photos of
a humble but clean-looking shoe manufacturing plant in China and
describes benefits offered to overseas workers."70
Other companies, including many computer vendors, provide at least
an e-mail link (or even a Web-based forum monitored by a customer
service representative who answers questions in real-time) so
that frustrated customers will hopefully blow their steam directly
at the company instead of complaining to the whole world.71
VI. CONCLUSION
When a company is confronted with a customer or employee "complaint
site," there are a number of legal strategies it may follow.
Whether the company pursues legal action or sets up an alternative
Web site, the company will need to follow a carefully thought
out strategy in order to minimize any disruption to the business
or any harm to the company trade name or trade marks.
If you would like to receive legal reports and updates more quickly, by e-mail, click here and fill out the mailing list form.
For more information about the issues covered in this report, please contact Ron Lopez in our San Francisco office at 415-369-7339 or at rflopez@thelen.com or contact your Thelen attorney. For more information about Thelen's Construction and Government Contracts Department, click here.
ENDNOTES
1 Robert Trigaux, Gripe.com, St. Petersburg (Florida) Times, January 31, 1999 at 1H.
2 See Mike France and Joann Muller, A Site for Soreheads, Business Week Online, Apr. 12, 1999 at http://www.businessweek.com/1999/99_15/b3624104.htm.
3 dir.yahoo.com/Society_and_Culture/
Issues_and_Causes/Consumer_Advocacy_and_Information/
Consumer_Opinion/
4 David Segal and Caroline E. Mayer, Site for Sore Consumers: Complaints About Companies Multiply on the Web, Washington. Post, Mar. 28, 1999 at A1.
5 Janelle Brown, Can AOL Silence its Critics?, Salon.com, July 1, 1999 at http://www.salon.com/tech/log/1999/07/01/
inside_aol.
6 Segal and Mayer, supra note 6.
7 See Victoria Colliver, Anti-corporate Crusader; Pinole Resident Has Made Starbucks-Bashing His Life's Work, San Francisco Examiner, June 11, 1999, at D1.
8 http://www.nervousinvestor.com/020299cs.shtml.
9 Patrick McKenna, Samsung Stung For $Millions By Internet Fraud, Newsbytes, August 11, 1997; See also, Martyn Williams, Samsung Issues Statement Regarding Spam, Newsbytes, August 15, 1997; Minda Zetlin, Disinformation: What Do You Do When You Get Dissed, Management Review, July 17, 1998, at 33.
10 Cal. Super. Ct., No. 98AS05067, Apr. 27, 1999.
11 Simon J. Nadel, Anti-Company Web Sites Often Legal, More Than a Minor Nuisance to Employers, 4 Electronic Commerce and Law (BNA) No. 26, at 579 (June 30, 1999).
12 See Trigaux, supra note 3.
13 Segal and Mayer, supra note 6.
14 Zetlin, supra note 19, at 87.
15 France and Muller, supra note 4; Colliver,
supra, note 14.
16 The Web site is apparently now offline, so no URL
is available.
17 France and Muller, supra note 4.
18 The Web site was at http://www.billsheehan.com
but no longer seems to be active. With respect to the company
attorneys, Sheehan announced on his Web site that "both these
guys are very unprofessional. They take things personal [sic]
and tend to anger easily. Could somebody PLEASE medicate these
guys?" 1998 U.S. Dist. Lexis 16862 at *3 (W.D. Wash. 1998).
19 France and Muller, supra note 4.
20 1998 U.S. Dist Lexis 16862 at *5.
21 Nadel, supra note 21.
22 Zetlin, supra note 18; Shane McLaughlin,
Barbed Wires, INC., Nov. 1998 at 24.
23 See Jerome and Taylor, Liar, Liar: Unscrupulous
Web Pages, PC/Computing, Dec. 1, 1998 at 89.
24 Now, however, the site merely contains a few quotes
about how Holker's case has no merit, along with a link to a page
featuring statistics on how often the expresssuccesssucks.com
Web site is visited.
25 Companies need to consider the ramifications when
they threaten legal action against "complaint" site
operators. See Phillip M. Perry, Don't Bad-Mouth Your Competition,
Chemtech, January, 1997 at http://pubs.acs.org/hotartcl/chemtech/97/jan/bad.html.
http://www.aolsucks.com. http://www.aolsucks.org/webcens/webmaster1.html.
http://www.aolsucks.org/webcens/chitow.html. As an example of
such attempts at public relations gone sour, the Webmaster of
America Online e-mailed the publisher of the AOL-Sucks Web page
threatening legal action for the "offensive and disturbing"
comments. When the "complaint" site creator began to
demand justification for the legal action, a vice-president at
AOL quickly apologized and retracted all threats.
26 See Segal and Mayer, supra note 6.
27 George B. Delta and Jeffrey H. Matsuura, Law of
the Internet §7.02 (1998) [hereinafter Law of the Internet].
See also, Restatement (Second) of Torts §558 (1997) which defines
the elements of defamation as: (a) a false and defamatory
statement concerning another; (b) an unprivileged publication
to a third party; (c) fault amounting to at least negligence on
the part of the publisher; and (d) either actionability of the
statement irrespective of special harm or the existence of special
harm caused by the publication.
28 See, Bose Corp. v. Consumers Union of United
States, Inc., 466 U.S. 485 (1984) (holding that in Consumer
Reports' criticism of Bose products in its product evaluation,
Bose is a public figure and therefore must prove by clear and
convincing evidence that Consumer Reports published its comments
with actual knowledge of falsity or reckless disregard of the
truth in order to bring a libel action).
29 Although a large group of people cannot be defamed
(i.e., "all employees of X Corp. are liars"), a smaller
group--of not more than twenty-five--has been held to have standing
to bring a defamation case where a reasonable reader can understand
the comment as applying to the plaintiff. See Law of the
Internet at §7.02[A][2].
30 See Law of the Internet §7.02[C][3] (discussing,
generally, the definition of "public figure" and "limited-purpose
public figure.").
31 Law of the Internet §7.02[C][1], citing New York
Times Co. v. Sullivan, 376 U.S. 254, 280 (1964).
32 See Law of the Internet §7.02[C][2].
33 Masson v. New Yorker Magazine, Inc., 501
U.S. 496, 516-17 (1991).
34 See Law of the Internet §7.02[B][1].
35 For example, Yahoo!/Geocities and AOL host
a wide-range of discussion groups. Furthermore, sites like grumbling.com
and gripenet.com provide Web-based bulletin boards for
a variety of consumer complaints and workplace grievances, but
the operators of these sites post no material themselves.
36 47 U.S.C.A. §230 (West, 1996).
37 H. R. Rep. No. 104-458, at 1130 (1996).
38 129 F.3d 327 (4th Cir. 1997).
39 For example, Yahoo!/Geocities, like most free-web hosts, prohibits the following, among other things, in its Terms of Service (TOS) and reserves the right to terminate its service "if Yahoo believes that you have violated or acted inconsistently with the letter or spirit of the TOS: (5)(a) upload, post or otherwise transmit any Content that is unlawful, harmful, threatening, abusive, harassing, tortious, defamatory, vulgar, obscene, libelous, invasive of another's privacy, hateful, or racially, ethnically or otherwise objectionable; (5)(f) upload, post or otherwise transmit any Content that infringes any patent, trademark, trade secret, copyright or other proprietary rights of any party." In addition, Yahoo!/Geocities provides a Content Violation Reporting Form at http://geocities.yahoo.com/main/contact/alert_form.html.
40 Raytheon Co. Won't Sue 21 Who Put Secrets on Internet, Boston Herald, May 21, 1999 at 14.
41 See, Yahoo! Privacy Policy http://docs.yahoo.com/info/privacy/.
42 About the Business & Finance Message Boards http://messages.yahoo.com/reminder.html.
43 Short Take: Raytheon Drops Suit Against Yahoo
Users, CNET News.Com, May 21, 1999 at http://www.news.com/News/Item/
Textonly/0,25,36919,00.html.
44 Todd Wallack, Message Nets VP an Exit, Boston
Herald, Mar. 31, 1999 at 35.
45 Trigaux, supra note 3.
46 15 U.S.C.A. §1125(c)(4)(A)-(C) (West, 1996).
47 29 F. Supp. 2d 1161 (D. C. Cal. 1998). See also,
Planned parenthood Federation of America, Inc. v. Bucci, 1997
U.S. Dist LEXIS 3338 (S.D. N.Y. 1997) (holding that defendant's
use of the domain name www.plannedparenthood.com was unfairly
competing with plaintiff's Web site at www.ppfa.org).
48 993 F. Supp. 282 (D. N.J. 1998).
49 Segal and Mayer, supra note 6.
50 Bally, 29 F. Supp. 2d at 1166-67.
51 Jews for Jesus, 993 F. Supp. at 291.
52 Id. at 291 n.15.
53 993 F. Supp. 304. By extension, it may also be
possible to apply Jews for Jesus to situations where the
graphic elements of a "complaint" site are designed
to look similar to the company's real Web site and perhaps even
to "complaint" sites which are likely to fall under
Bally but which are loaded with metatags to encourage Internet
search engines to place the "complaint" site above the
company's real site. The metatag issue with EPS Technologies,
discussed supra, would be a good case to test this theory.
54 Id. at 305.
55 Id. at 308.
56 Id.
57 See, Starbucked.com http://www.starbucked.com,
where Jeremy Dorosin criticizes Starbucks Coffee and also sells
his book, Balance at Middlefork, an autobiographical account
of Dorosin's view of "philosophical compatibility between
Eastern and Western values," and leads up to his highly-publicized
Starbucks incident. Not surprisingly, one of Dorosin's demands
to Starbucks was to make his book available for sale in the popular
coffee stores.
58 Both starbucked.com and chasebanksucks.com
provide links for potential advertisers to link advertisement
banners on their sites. Furthermore, bestbye.com already
has advertisements in place linking to, among other things, a
company called i-Level.com.
59 The untied.com site (anti-United Airlines)
seeks "token" contributions of $5 (or more) at http://www.untied.com/cgi-bin/token.pl.
60 Planned Parenthood, 1997 U.S. Dist. at *16.
61 Jews for Jesus, 993 F. Supp. at 308.
62 17 U.S.C.A. §107 (West, 1996).
63 See Andrew Marlatt, Companies Take Complaint
Sites to Court, Internet World, Nov. 16, 1998; David Segal
& Caroline E. Mayer, Sites for Sore Consumers: Complaints
About Companies Multiply on the Web, Washington Post, Mar.
28, 1999 at A1.
64 See Andrew Marlatt, Who's Owner of Chasesucks.com
And Chasestinks? Three Guesses, Internet World, June 15, 1998,
at http://www.iw.com/print/1998/06/15/industry/199806/15-antidomains.html.
65 Companies registering anti-domain names include,
Chase Manhattan Bank, Charles Schwab & Co., GE, Hyatt Resorts,
and CIT Group.
66 See, e.g., cyveillance.com, ewatch.com,
ir-watch.com, investorfacts.com, cycheck.com, cyberalert.com,
webclipping.com, utilittech.com, and wavephore.com.
67 Segal and Mayer, supra note 6.
68 For $20 a month, LinkAlarm, http://www.linkalarm.com,
provides the services of software robot that monitors who has
linked to a given site.
69 Id.
70 France and Muller, supra note 4.
71 Dell WebForum is a Web-based bulletin board for
Dell customers to ask questions and blow steam about various problems
with Dell Computers. See http://support.dell.com/support/delltalk.htm.
Dunkin' Donuts provides product and nutritional information, as
well as an e-mail link for comments and complaints. See http://www.dunkindonuts.com.
©1999 Thelen Reid Brown Raysman & Steiner LLP
|
