UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
|THE TAUBMAN COMPANY
| LIMITED PARTNERSHIP,
||Nos. 01-2648 and 01-2725
|WEBFEATS and HENRY MISHKOFF
REPLY BRIEF IN SUPPORT OF
MOTION FOR STAY PENDING APPEAL
Appellants Henry Mishkoff and his sole proprietorship have sought a stay pending appeal of the
preliminary injunction barring him from "using websites on the Internet with [specified] domain
names," and ordering him to "remove [those] websites from the Internet." In his moving papers,
Mishkoff argued that the district court violated well-established First Amendment principles by
issuing a prior restraint without any compelling interest. Mishkoff also showed that a trademark
violation can be found only when viewers are likely to be confused about "source," that no viewer is
likely to believe that a web site labeled "Taubman Sucks" is sponsored by Taubman, and that every
court that has considered such a site in the past has ruled against the trademark plaintiff. Mishkoff
also pointed out that, despite the general rule that a preliminary injunction is reviewed on an abuse
of discretion standard, errors of law are reviewed de novo and factual findings in free speech cases
are subject to de novo review under Bose Corp. v. Consumers Union, 466 U.S. 485, 499 (1984).
Rather than address these arguments specifically, appellant has chosen to rest largely on the
general proposition that arguments were made to the district judge about likelihood of confusion and
prior restraint, that because he both issued the preliminary injunction and denied a stay, he must
have considered all these points and rejected them, and that these explicit or implicit findings and
conclusions should receive appellate deference. With only a few exceptions, addressed below, Taubman
does not attempt to explain the findings or conclusions below, or to counter Mishkoff's legal
analysis, which therefore stands unrebutted.
For example, Taubman invokes the district court's indirect response to the argument that enjoining
the "sucks" site would constitute a prior restraint, stating that the First Amendment does not apply
once a defendant has been found in violation of the Lanham Act. Opp. 5. Taubman does not cite any
cases to support this argument; instead, it notes that the district court cited this Court's decision
in Semco v. Amcast, 52 F.3d 108 (6th Cir. 1995). However, as we showed in our opening brief,
not only does Semco not stand for the proposition that a Lanham Act injunction can avoid all
scrutiny under the prior restraint doctrine (nor does it support the district court's analysis of the
commercial speech doctrine in deciding that the Lanham Act applies here), Mem. 8-9, but several courts
of appeals, following Supreme Court guidance, have held that the First Amendment does require narrowly
tailored injunctions in the Lanham Act context specifically, and in commercial speech cases generally.
Mem. 13-14. Taubman makes no effort to rebut these arguments.
Taubman also argues that the preliminary injunction against the "sucks" site is not a prior
restraint "inasmuch as the injunction purports to limit only Defendants' use of domain names
incorporating Plaintiffs trademarks; the injunction does not proscribe or in any way restrain speech
of any kind." Opp. 5-6. We disagree with the proposition that an injunction against the domain name
"Taubmansucks.com" "does not proscribe speech in any way"; the courts have recognized that domain
names are speech protected by the First Amendment, and, as we explained in our opening brief, the
injunction is tantamount to an order barring the erection of a large highway sign next to the mall
stating, "Taubman Sucks." The order is an impermissible prior restraint for that reason alone.
But appellee errs in arguing that the order under appeal bars only the "sucks" domain names. The
injunction both forbids "using websites on the Internet with the following domain names,"
Order, page 1, and orders defendants to "remove the websites with the following domain
names... from the Internet." Id. pages 1-2. These two portions of the injunction would be
duplicative if they both did no more than prevent Mishkoff from using certain domain names; rather,
the second part of the injunction requires the removal of certain websites from the Internet, using
the domain names at which they were posted to identify the material that was to be removed. Moreover,
this two-part injunction was precisely what plaintiff had requested, on the theory that the "sucks"
website contained defamatory statements and confidential information and hence was subject to being
enjoined independent of the domain name issue. Indeed, plaintiff explained in the court below that it
had crafted a proposed order not just to restrict use of the domain names, but also "to expressly
require that these additional websites be shut down," Docket Item No. 10, at page 3. What's more, far
from narrowing its preliminary injunction when Mishkoff noted its breadth in moving for a stay, the
district court attempted to justify enjoining the site itself by mentioning, in a footnote, that it
was "by no means implausible" that an Internet viewer could be confused about whether the contents of
the home page were sponsored by Taubman (we address that point below). The injunction thus cannot be
defended on the theory that it is limited to the domain names.
Nor, indeed, does the creation of a new web site coupling the name of plaintiff's firm with a
derogatory word show that Mishkoff remains free of prior restraint. Because the injunction forbade
Mishkoff from leaving his previous "sucks" website posted on the Internet, Mishkoff was unable to post
the materials previously posted at Taubmansucks.com using the new GiffordKrassGrohSprinkleSucks.com
domain name. Nor did he have the time to create a whole set of new text explaining in detail the
abuses to which he was subject throughout the litigation. Instead, the new "sucks" site begins the
account of the litigation where the enjoined site left of, and the prior restraint continues to
prevent him from posting on the Internet the hundreds of printed pages that appear in the district
court record at Docket Item 42, and on the CD submitted with the motion for a stay.
Note: Moreover, if the district court's theory of this case is upheld, the new "sucks" site could also
be enjoined. After all, plaintiff's law firm undoubtedly has at least a common law trademark claim in
Taubman also asserts that court below "specifically... ruled that Plaintiff will suffer without an
injunction." Opp. 6. Taubman does not provide a citation for this point, for good reason. The court's
opinion on the preliminary injunction discusses the supposed harm to plaintiff from Mishkoff's first
web site, but its only mention of harm to the plaintiff from the "sucks" site is the judge's concern
that Mishkoff's criticism represented an effort "to inflict further economic harm," and as our opening
brief showed (without any response by Taubman), that is not a sufficient basis for a prior restraint.
Mem. 7-8. There was no mention of "harm to the plaintiff" in the order denying a stay pending appeal.
Consequently, there are no findings on this issue to which any deference can be given.
Taubman also relies on the "findings" in the order below denying a stay pending appeal, and the
district court's "careful" analysis and "well-considered, thoroughly written order...." Opp. 3. We
take particular issue with district court's contention it is "by no means implausible" that Internet
viewers might be confused because the district court entered the phrase "shops at willow bend" into a
search engine and obtained a search result that contained the clause, "the irony is that I do not
believe that the Shops at Willow Bend (an impressive new shopping mall in Piano, Texas)...." Stay
Denial Order at 3 n.1. Based on this evidence, the district judge suggested that these search results
might bring Internet viewers to the "sucks" site out of confusion about whether, because this
clause (and the page itself) contains a favorable reference to the mall, Taubman is the sponsor of the
site. Id. As we showed in our moving papers, to which the entire home page of the web site is
appended, there is no way that a person visiting this page could possibly believe that Taubman
sponsored a page which discusses Taubman's "sucky" lawyers and concludes that, although Taubman has
created a nice mall, it "sucks indirectly" because it is responsible for its lawyers' abuses.
The plaintiff did not offer this search as evidence, and regrettably, the district court failed to
place this basis for its ruling in the record. However, Mishkoff has replicated the Google search on
which the district court relied, and those results are attached to his affidavit. The "sucks" site
shows up at search result number 32 (out of a total of more than 3000 "hits") on the seventh printed
page and the fourth screenful of listings of search results. Among the earlier search results are
numerous links to the official "shopwillowbend.com" web site, to the portion of the Taubman.com web
site that is devoted to Shops at Willow Bend, and to other web sites on which Taubman appears to be
advertising its mall. Thus, a viewer would not find the search results that concerned the district
court until after he or she had reviewed literally dozens of other sites that are sponsored by Taubman
itself and which, presumably, did not satisfy the viewer by providing the desired information. This is
not evidence of likelihood of confusion about source but quite the opposite.
Regrettably, Mishkoff was not given notice that this evidence was before the court below, and so he
had no opportunity to rebut the inferences that the court seems to have drawn from it.
Note: Recognizing that search results are dynamic over time, because the exact listing of results
changes as the search engine's database of pages downloaded from the web changes over time, Mishkoff
Affidavit, ¶5, Mishkoff is filing a motion in the district court asking the judge to place his
own search results into the record for this Court's review.
Indeed, it was wholly inappropriate for the district court to conduct its own search in this
fashion, outside the presence of the parties and without giving the parties notice of its activities.
Cf. United States v. Walls, 443 F.2d 1220, 1223 (6th Cir. 1971) (reversible error to view
premises without opportunity for defendant to be present). The very process reflected by the mention
of this evidence shows that the district court was not considering the evidence in a dispassionate
manner that warrants deference. To the contrary, this was a court that was determined to find a way to
justify a completely unsupportable prior restraint, even to the point of basing its decision on
evidence of its own creation that was not shared with the defendant.
The Court should grant the motion to stay that prior restraint. Because a briefing schedule has
recently been issued, the portion of our motion seeking an expedited schedule in this Court has been
rendered moot in part; however, oral argument should be scheduled promptly after the briefs in the
case have been submitted.
Paul Alan Levy
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
Attorneys for Appellants
January 30, 2002