Intellectual Property Law

Parody Web Site That Criticized Critics of the LDS Church Did Not Infringe Trademarks or Constitute Cyber-Squatting

The One Sentence Summary: The panel affirmed summary judgment in favor of parody web site and domain names that used the mark of UTAH LIGHTHOUSE, a site criticizing the LDS Mormon church, to direct internet users to sites with opposing views.

Tenth Circuit Holdings:

• Evidence of search rankings was not sufficient evidence of secondary meaning:

  A mark acquires a secondary meaning if the words ?have been used so long and so exclusively by one producer with reference to his goods or articles that, in that trade and to that branch of the purchasing public, the word or phrase [has] come to mean that the article is his product.? Educ. Dev. Corp. v. Econ. Co., 562 F.2d 26, 29?30 (10th Cir. 1977) (internal quotation marks omitted) (modification in original). The number of search engine hits, standing alone, is inadequate to demonstrate that consumers associate the mark with a particular product or producer, or perceive UTAH LIGHTHOUSE as a distinctive mark.



• Links on accused infringer's site to commercial sites via roundabout paths did not render the defendants' use of the trademark a use in commerce.
• Mere interference with sales on the plaintiff's site due to diversion in traffic was not a use in commerce under the Lanham Act.
• The court declined to hold that any use of a trademark on the internet was use ?in connection with goods or services.?
• District court correctly concluded that parody web site did not create a likelihood of confusion.
• Registration of a domain name identical to trademark was not a violation of anti-cybersquatting act in absence of evidence of distinctiveness of mark or bad faith intent to profit from mark. Parody of mark was not an attempt to profit.
• Safe harbor under ACPA applied. Provision of ACPA precludes a finding of bad faith intent if ?the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.? 15 U.S.C. § 1125(d)(1)(B)(ii). Defendant's belief that this was a parody precluded a finding of bad faith attempt to profit.

Full post as published by IP Law Observer on June 03, 2008 (boomark / email).