Tenth Circuit: No trademark infringement, unfair competition, or cybersquatting by parody sitesJune 2, 2008

In a decision last week, the Tenth Circuit affirmed a district court's grant of summary judgment finding no trademark infringement, no unfair competition, and no cybersquatting.

The district court held, and the Tenth Circuit affirmed, that none of the three elements of a trademark infringement action was proven, namely that the mark was not protectable, the defendant's use was not in connection with goods or serivces, and that the successful parody showed there was no likely confusion. On the cybersquatting claim, the district court held, and the Tenth Circuit also affirmed, that the mark was not shown to be protectable (as with the trademark claim), and there was no bad faith. As a result, the district court's summary judgment was affirmed in all respects.

More detail on Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research after the jump.

The plaintiff, Utah Lighthouse Ministry (UTLM), is an organization that was founded to critique the Church of Jesus Christ of Latter-day Saints (LDS) (also commonly known as the Mormon Church). UTLM's efforts are supported through the sale of books, some of these sales come through their website. The defendant, The Foundation for Apologetic Information and Research (FAIR) is a volunteer organization that responds to criticisms of the LDS Church. In 2003, an individual working at FAIR created various websites parodying the UTLM website which were "similar in appearance" but featured "different, though suggestively similar content."

After becoming aware of the "parody" websites, UTLM filed a 6 count lawsuit alleging, among other things, trademark infringement, unfair competition, and cybersquatting. The district court granted summary judgment for FAIR on all six counts. UTLM appealed the grant of summary judgment on the trademark infringement, unfair competition, and cybersquatting counts.

The court addressed the unfair competition and trademark infringement claims together. The court noted that UTLM's failure to register the mark at the time of the allegedly infringing use meant that UTLM had to establish that the mark is protectable, that the mark was used in connection with any goods and services, and that defendant's use of the mark was likely to cause confusion or deceive consumers as to the origin of the goods. The court affirmed the district court's determination that UTLM failed on all three elements.

Regarding the protectability of the mark, the court noted the mark was registered, but not until after the lawsuit was filed. As a result, there was no presumption of validity upon which UTLM could rely. While UTLM attempted to assert its mark was inherently distinctive on appeal, the court refused to consider the argument as it was not raised before the district court. Turning to the only remaining way to show protectability, secondary meaning, the court found UTLM's evidence insufficient. The primary evidence of secondary meaning was data showing the number of search "hits" of the website generated by major search engines. The court determined that this data alone, with no evidence linking the searchers to the UTLM's customers, was not sufficient to establish secondary meaning. Based on this analysis, the court affirmed the district court's holding that UTLM has not raised a genuine issue of fact regarding the protectability of its mark.

The court then turned to whether FAIR's use of the mark was "in connection with any goods or services." The parody websites had several links, some of which went to the FAIR homepage, which in turn linked to the FAIR bookstore. The court found this was too attenuated to be considered "commercial," analogizing to the Bosley Medical case. The court further noted that "trademark rights cannot be sued to quash an unauthorized use of the mark by another who is communicating ideas of expressing points of view." Based on this understanding of trademark law, the court determined that "the defendant in a trademark infringement and unfair competition case must use the mark in connection with the goods or services of a competing producer, not merely to make a comment on the trademark owner's goods or services." Finally, the court rejected UTML's argument that any website was inherently commercial in nature. As a result, UTLM also failed to raise a genuine issue of fact on the second element.

Finally, the court applied a standard six-factor analysis to determine whether there was a likelihood of confusion. However, the court noted that the fact that FAIR's website was an effective parody put some of the factors in a different light. Specifically, the use on parody reduced the impact of copying the original mark, and it also negates the intent of the party that created the parody. Weighing the six factors in light of the parody nature of the site, the court affirmed the finding there was no genuine issue of fact regarding likelihood of confusion.

Having affirmed the district court's decision on all three elements of UTLM's trademark infringement and unfair competition claims, the court affirmed the district court's grant of summary judgment on those claims.

The court next turned to the cybersquatting claim. In order to prevail, UTLM had to show that the mark was distinctive at the time the domain name was registered, that the domain names are confusingly similar, and that the domain names were registered with a bad faith intent to profit. Relying on the previous analysis, the court found that the mark was not protectable at the time of registration. The court also affirmed there was no bad faith intent to profit. As a result, the court affirmed the district court's finding of no cybersquatting.

In large part, UTLM suffered greatly from failing to register their mark before filing suit. This removed the statutory presumption that the mark was valid, and UTLM did not argue before the district court that its mark was inherently distinctive. Additionally, the fact that FAIR's site was designed to provide critique and commentary of UTLM's site also weighed heavily against UTLM, showing the difficulty that can arise when trying to prove a parody is actually an infringement (such as in the Haute Diggity Dog case).

To read the full decision in Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, click here.

Update (6/3): Vegas Trademark Attorney provides this summary of the case.