Journal of the Patent and Trademark Office Society
*628 COMMENT: COMMERICAL SPEECH AND FAN WEBSITES--SEARCHING FOR A METHOD TO
Jeff Royer [FNa1]
Copyright © 2004 by the Patent and Trademark Office Society; Jeff Royer
In early 2001 Henry Mishkoff set off a firestorm of controversy and litigation when his "unofficial" fan website for the shopping mall that was a few miles from his house was discovered by the owners of the mall. [FN1] For four years a battle raged in the courts of Michigan with accusations of trademark infringement, First Amendment violations, cybersquatting, and consumer confusion hurled back and forth. [FN2] When the smoke cleared it became evident that two main issues had emerged. The first was whether or not Mishkoff had the right to use the mall's trademarked name "Shops at Willow Bend" as the domain name for his website. The second issue was raised when subsequent to suit being filed on the first issue, Mishkoff registered five additional domain names all ending with "sucks.com" and using various versions of the mall's trademark as well as those of its parent company, Taubman. [FN3] Taubman, clearly not amused, filed suit to enjoin Mishkoff from using the "taubmansucks.com" names claiming he intended to use them to harm Taubman economically. [FN4] Mishkoff argued that his sites were not *629 commercial speech and therefore should be afforded protection under the First Amendment. [FN5]
Determining if speech should be afforded full protection under the First Amendment or otherwise regulated by the government is an important distinction. A finding that speech is commercial in nature opens the floodgates of government regulation, and allows the imposing hand of the government to rule on the "who, what, where, when, and how" of the speech. It was with this in mind that the 6th Circuit Court of Appeals set out to determine whether or not Mishkoff's websites were commercial speech and could therefore be regulated by the Lanham Act, or were instead venues of non-commercial speech where Mishkoff was free to "speak his mind" under the First Amendment.
In the end, the 6th Circuit found for Mishkoff and allowed him to continue to use the domain names. [FN6] The Court based its ruling on the fact that Mishkoff's speech was not commercial speech because it was not "in connection with the sale...or advertising of any goods or services" and even if it had been, there was no likelihood of confusion among the customers. [FN7] But was the Court correct in the test it applied to determine whether Mishkoff's site was commercial speech? Should a site that appears not to be in connection with the sale or advertising of goods or services automatically be determined non-commercial speech? What exactly would a website have to do or say to be in connection with sales or goods?
This article will explore whether or not websites such as the one created by Mishkoff should be considered commercial speech. Part II of this paper will provide background on the commercial speech doctrine and discuss how slow it has been in responding to the challenges of the Internet. Part III will critically examine the Court's rationale in, and the ramifications of, its decision in the Taubman case. Part IV will suggest how the commercial speech doctrine should be applied to speech involving trademarks on the Internet (specifically for fan sites.)
II. BACKGROUND OF COMMERCIAL SPEECH DOCTRINE
As judge Alex Kozinski makes clear in his 1990 Virginia Law Review article the commercial speech doctrine had quite an auspicious beginning. [FN8] It was created in 1942 out of nothing more than thin air and *630 the opinion of Justice Roberts. [FN9] There was no precedent, no legal authority, no rhyme or reason to the decision. In fact, in only one sentence, Justice Roberts made it quite clear that commercial speech was afforded no protection under the first amendment. [FN10]
Fast-forward thirty years and the commercial speech doctrine began to change. In the 1976 case of Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Counsel, Inc., the Supreme Court held that maybe, just maybe, commercial speech does fall under the First Amendment. [FN11] Sort of. The Court was unsure, however, exactly how much protection commercial speech should receive. [FN12] "Clearly," the Court opined, "commonsense differences between [commercial and noncommercial speech] suggest that a different degree of protection is necessary. [FN13] Deciding that it was not yet ready to determine what those various degrees of protection might be, the Court simply avoided the issue and moved on to bigger and better things.
It was not until four years later that the Court finally made an effort to determine when commercial speech deserved protection under the First Amendment. In Central Hudson the Court laid out a four-part test for when the government could regulate commercial speech. [FN14] What the Court failed to do in any of these cases, however, was lay out a clear test for determining what constituted commercial speech as opposed to noncommercial speech or explain why commercial speech should be afforded less protection. This has left a huge gray area that courts have had trouble navigating their way though. Recently some in the judicial and academic setting have begun to argue that it is irrelevant to make a distinction between commercial and non-commercial speech. [FN15] Some have even gone far enough to suggest that all speech, regardless of its commercial nature, be afforded First Amendment protection. [FN16] One only *631 need read the Taubman case to see the issues and challenges faced by the courts in determining not only whether speech is commercial or not, but also figuring out what kind of protection applies.
III. THE TAUBMAN CASE AND COMMERCIAL V. NON-COMMERCIAL SPEECH
The Taubman case is unique because it is the first time that an appeals court has had to determine whether or not a private individual has the right to use the registered trademark of another in the domain name of a fan site. The issue itself seems reasonable enough, as does the conclusion reached by the Court; it is the area in between that is the cause for concern. This paper is focusing primarily on the analysis used by the Court to determine the original fan site was non-commercial speech, though one should be aware that this case involved a similar question concerning the "sucks.com" sites. The "sucks.com" decision was reached using different reasoning not applicable to this discussion.
It is understandable that when this case reached the chambers of the judges sitting on the bench of the 6th Circuit they might have felt a little uneasy. Cases involving commercial speech have proven themselves to be difficult enough over the past 70 years without having to deal with the added baggage of domain names and trademark rights. Never before had a court this high up on the judicial food chain decided a case involving the rights of a trademark holder attempting to protect his mark and a website operator attempting to exercise free speech by using the mark in the domain name of his site. The Court determined that the first (and probably easiest) step was to determine whether or not Mishkoff's speech was commercial, and therefore subject to the Lanham Act, or non commercial, and thereby entitled to the full protections of the First Amendment. [FN17] Simple enough, right? Wrong. The Court soon learned the horror of trying to intermingle a 60-year-old doctrine with no discernable beginnings with the technological complexity of the Internet.
To begin, one should have a clear idea of what Mishkoff's website was and why Taubman became so distraught. Mishkoff's site (shopsatwillowbend.com) was designed as an informational site that contained a map of the mall as well as links to the individual stores' websites. [FN18] Mishkoff claimed he had created the site, and other websites similar to it, as a service to the community. [FN19] The top of the site had a *632 prominent disclaimer informing web surfers, "This is an unofficial site. It is not sponsored by, affiliated with, or related to The Shops at Willow Bend in any way. The official site is located at www.ShopWillowBend.com." [FN20] Mishkoff's site also contained links to a custom shirt printing business run by Mishkoff's girlfriend and to Mishkoff's web design business. [FN21]
Two years after his site first hit the net, Mishkoff received a letter from Taubman's law firm demanding that he immediately cease and desist using "theshopsatwillowbend" domain name and that he transfer ownership of the domain name to Taubman. [FN22] Taubman's contention was that Mishkoff's site was violating the AntiCyberSquating Consumer Protection Act, as well as creating a likelihood of confusion under federal and state trademark rights. [FN23] When Mishkoff refused to relinquish control of the site, Taubman responded by filing suit in District Court for the Eastern District of Michigan seeking to enjoin Mishkoff from using the Taubman name on his sites and to force Mishkoff to surrender the domain name. [FN24]
As soon as Mishkoff received the complaint he removed the links to both his girlfriend's business as well as his own, but refused to heed any of Taubman's other demands. [FN25] It was also at this point in time that Mishkoff registered the complaint sites with the moniker of "sucks.com." Taubman's next step, while waiting for its complaint to be heard, was to make Mishkoff a settlement offer of $1,000. In return, Mishkoff would surrender the domain names and websites as well as not use any of Taubman's trademarks on any of his websites. Mishkoff initially accepted the offer, but later reneged when Taubman attempted to impose new conditions not previously agreed on by the parties. [FN26] With the offer off the table, the suit began.
Taubman was successful in its District Court case and won an injunction, forcing Mishkoff to cease using the original domain names as well as the complaint names. It is important to note that Taubman won its injunction based only on its Lanham Act claims; the Court did not deal with their AntiCybersquatting claims. [FN27] Mishkoff promptly *633 filed an appeal to the 6th Circuit Court of Appeals, which is when the real fun began.
Up to this point in time no appeals court had ever dealt with the issue of using a trademark in the domain name of a fan site. Suits against owners of fan sites were uncommon, and those that were brought were usually allegations of copyright infringement against fan site owners who "borrowed" pictures, logos, sound bites, and movie clips from their favorite subjects (such as the Simpsons or Austin Powers) and posted them on their own sites. [FN28] Once an offending site was identified, the copyright owners' lawyers sent out threatening letters and the site owner, wanting to avoid any kind of legal trouble, took down the copyrighted material. [FN29] Trademark issues rarely arose on fan sites in part thanks to free speech that allowed fans to freely extol the virtues or failures of their favorite subjects.
Domain name issues on fan sites are even more rare. The vast majority of fan sites are created after the original subject has already become popular. It didn't take long for most of these subjects to have their own websites, owned and created by the rights holder, usually with the domain name of the trademarked item. This meant your average fan could not register www.thesimpsons.com because it already existed. [FN30] Therefore most fans were relegated to using modified domain names or domain names that had little to do with the subject matter. [FN31] Exceptions to this general principle do exist but they are few and far between, and are usually addressed under the AntiCyberSquatting Consumer Protection Act, something the 6th Circuit Court in Taubman was unable to do.
The Taubman Court recognized that it must begin its analysis by determining whether or not Mishkoff's speech was commercial in nature and thereby subject to the Lanham Act. [FN32] The inconsistency of the tests used by previous courts show how murky this area of the law is. Just two years prior to this case the 6th Circuit claimed that, "the test for identifying commercial speech involves determining whether a regulation relates to a "commercial transaction."" [FN33] A search on Lexis or Westlaw for a test for determining commercial speech brings up at least 7 variations on the quoted language from Fox. To further muddy already *634 murky waters, in Bolger the Supreme Court suggested a 3-pronged factor approach for determining whether speech was commercial: (1) whether the communication is an advertisement; (2) whether it refers to a specific product or service; and (3) whether the speaker has an economic motivation for the speech. [FN34] The Court went on to note that when all three factors are present there is strong support that the speech is commercial. [FN35] In 1999 the 8th Circuit joined the fray by stating, "a communication was an advertisement because it proposed a commercial transaction. [FN36] Seemingly, there is no method to the madness.
So the question on the minds of the millions of people reading this article is, "which one of these murky, unclear, non-specific tests did the 6th Circuit use?" You'll of course not be surprised when you learn they used none of them. What the 6th Circuit did was to create a separate test to determine whether or not speech involving trademarks is commercial. Because the Lanham Act only regulates commercial speech the Court reasoned that if Mishkoff's speech didn't fall under one of the provisions of the act, then it must not be commercial. The Court focused on whether or not Taubman's mark was used "in connection with the sale...or advertising of any goods or services." [FN37] For the Court this came down to a simple yes or no answer. They applied no factors or elements of other tests and asked no other questions. They simply looked at Mishkoff's site and asked the question above. Once Mishkoff had taken down the links to the t-shirt and web design business websites, the Court could see no reason to hold that Mishkoff's site was being used in connection with the advertising or sale of goods, and therefore the Lanham Act could not apply. [FN38] No Lanham Act meant no commercial speech.
But is the decision really that simple? Is speech that doesn't fall under the rule of the Lanham Act automatically non-commercial speech? The Court used language from § 1114 of the Act to determine whether or not Mishkoff's speech fell under the Act and therefore was commercial speech. [FN39] The Lanham Act does not define commercial speech in any *635 section, nor does it lay out any factors for determining the nature of the speech. The purpose of § 1114 is not to inform as to make this determination; it is to give one a cause of action for infringement if another's actions meet the requirements. The Court pulled language from this section and attempted to manipulate and formulate it into an easy to use test for determining commercial speech. Using a single factor test as the Court did in this case is an invitation for trouble.
Other courts when engaging in this type of inquiry first ask if the speech is commercial, independent of any other regulation. Only then if the speech is found to be commercial using one of the other tests, will the court being to apply said regulation. A good example of how this is done is contained in one of the few other cases that show a similarity to the Taubman case. In Wehrenberg v. Moviefone, [FN40] the Court had to determine if the speech in question was commercial and if Moviefone could therefore be found liable under the § 1125 of the Lanham Act. [FN41] Though slightly different on the facts, the Court in Moviefone was faced with a similar issue as the Taubman Court, and yet its analysis differed greatly from the 6th Circuit. Understanding that the commercial speech doctrine was difficult to apply, the Moviefone Court took a much more detailed approach and yet still failed to apply the test in a logical and consistent manner.
Most people know Moviefone as a service providing movie locations and show time to customers who call Moviefone's hotline or log onto their website. A customer wishing to find the movie schedule for the local theater simply logs onto the website, inputs their zip code, and the show times for the nearest movie theaters are brought up on the screen. The Plaintiff in this case was the owner and operator of various movie theaters in the St. Louis metropolitan area, as well as his own automated phone and website service which provided listing and ticket information for his theaters. The plaintiff filed numerous claims against the defendant for actions related to defendant's business, though the only one of concern for this paper is the alleged violation of the Lanham Act.
Fred Wehrenberg sued Moviefone for engaging in false advertising under § 1125 of the Lanham Act, by mistakenly or inaccurately publishing plaintiff's movie schedules. The crux of Wehrenberg's *636 argument was that the errors in scheduling would be attributed to his theaters and would reflect poorly on their goodwill and reputation, as well as the quality of the his company's services. The District Court recognized that a claim under the Lanham act was only actionable if the speech in question was commercial. [FN42] To make this determination the Court followed the three-pronged factor test used in Porous Media, (1) whether the communication is an advertisement; (2) whether it refers to a specific product; and (3) whether the speaker has an economic motivation for the speech. [FN43] The 8th Circuit in Porous Media had also defined an advertisement as "a communication that proposes a commercial transaction." [FN44] Additionally, the District Court took note that the 5th Circuit had previously stated that a communication must be seen by relevant consumers within the industry to be actionable under the Lanham Act. [FN45]
With a clear test laid out before it, the District Court began analyzing the facts. It first looked at whether or not the communication in question was an advertisement. On both the website and the phone system, Moviefone provided advertising opportunities for movie studios and other entities but did not advertise its own services. The Court found that these advertisements did not constitute commercial speech because they did not reference the plaintiff's service directly. [FN46] The Court cites no language or precedent in making the determination that the advertisements placed on the website and phone system must reference the plaintiff's services for the speech to be considered commercial. Because those wishing to support the service place the advertisements on Moviefone, it is absurd to argue that the only way Moviefone's service is commercial speech is if Wehrenberg bought advertising time! The Court dismisses this objection simply by saying, "These types of advertising above cannot be the subject of plaintiff's claim because these ads either do not address plaintiff's services or if they do, defendant is not responsible for them." [FN47] Again, the Court ignored the fact that these ads were NOT the subject of the claim but were simply being used to show the commercial nature of the speech in question. The plaintiff in the case *637 was not complaining about the ads, it is complaining about the contents of the website and phone systems themselves.
The Court tried to bolster its argument by stating that the defendant was not proposing a commercial transaction (the definition of an advertisement) by listing the plaintiff's movie schedules because the defendant did not sell tickets to the plaintiff's movie theaters. Further ignoring logic the Court stated, "Even if defendant lists the information incorrectly, defendant is not by doing so attempting to persuade its audience to purchase movie tickets from defendant instead of from plaintiff." [FN48] This is an illogical argument because it ignores the fact that more than two parties are involved in selling tickets and showing movies in the St. Louis area. The defendant's actions may not have persuaded ticket buyers to buy tickets from them instead of from plaintiff, but they dissuaded moviegoers from buying tickets and attending shows at movie theaters owned by plaintiff.
Ignoring that the three-pronged factor test is just that, a factor test, the Court seemed content that it proved its point simply by dismissing the first prong. It never asked if the speech referred to a product or service specifically or whether the speaker has an economic motive for the speech. It seems as though these factors were more easily met than the first factor, yet the Court simply ignored their existence. Both Moviefone's website and phone system referred to the plaintiff's theaters specifically, regarding movie listing and show times. It would be pointless to give a customer the time a movie is playing without mentioning the theater it is playing in. It seems evident that this second prong would have been met easily. But did Moviefone have an economic motivation for engaging in the speech? It is hard to imagine they would stay in business very long if they did not in fact have an economic motivation for listing movies and show times. Moviefone had a clear economic motivation in that they wanted customers to call their service or log onto their website when searching for movies. This in turn would allow them to charge more money for advertisers to advertise on their various services. It seems as though Moviefone had a clear and logical economic motivation for the speech they were engaging in.
So why ignore these two prongs of the test if they give a seemingly strong argument to finding that Moviefone was in fact engaging in commercial speech? It could be that the courts are confused about how to analyze these types of cases and do not wish to get bogged down in *638 the details. It could also be that their sense of logic tells them that these websites are not engaged in commercial activity and therefore should not have their speech restricted under the Lanham Act. For whatever reason the courts seem to have made up their minds before ever going through the proper analysis.
Under the 6th Circuit's "Lanham Act" test, Mishkoff's site (with no links to other businesses) is not commercial speech. But what happens when his site is analyzed using the 3-pronged factor test laid out in Bolger and further developed by the 8th Circuit in Porous Media. The first question is whether or not the communication is an advertisement. The 8th Circuit, quoting the US Supreme Court case of Cincinnati v. Discovery Network, defined an advertisement as a "proposal for a commercial transaction." [FN49] It would be very debatable as to whether Mishkoff's site is in any way proposing a commercial transaction. A feasible argument would be that his stated purpose for building the site was "to provide a community service" and inform others of the wonderful mall in their community. Mishkoff's goal was to encourage users to visit his site, find out information about the mall, and then go visit it personally. Mishkoff, it could be argued, was proposing a commercial transaction, though not between himself and consumers, but between the mall (and the stores) and consumers. This may be the weakest prong, however a feasible argument can be made.
The second prong of the test is determining whether the speech refers to a specific product or service. This prong is possibly met as the entire website was devoted to The Shops at Willow Bend. The service is providing consumers with a single place to find all of their shopping information. Mishkoff also provided links to the individual stores, which provide the service of selling goods to consumers. People viewing Mishkoff's site are very clear about what service and/or product is the featured content.
The third and final factor to be considered under this test is whether the speaker has an economic motivation for the speech. Like the first factor this one is highly debatable. Common sense seems to indicate that this factor is trying to determine if the speech is being used to economically harm someone other than the speaker. This may be accurate but it is not completely correct. This factor makes no distinction between causing economic harm and causing economic prosperity to either the speaker or the target of his speech. The only *639 question asked is whether the speaker has an economic motivation for the speech. In Planned Parenthood Fed'n of Amer., Inc v. Bucci, the District Court found the Lanham Act applicable because "defendant's action in appropriating plaintiff's mark has a connection to plaintiff's distribution of its services." [FN50] Regardless of the disclaimer on his site it is feasible to think that many people will, either advertently or inadvertently, come to Mishkoff's website because of its domain name. Seeing the contents of the Mishkoff's site one would reasonably assume that many people would believe the information on the site to be true. However, if Mishkoff were to post an inaccurate or incomplete list of the stores located in the mall, many people would simply visit another mall to find the store the originally sought out. A consumer looking for the closest "Gap" could find Mishkoff's website, see no "Gap" listed (even though one may be there) and decide to try another mall. This would have a direct impact on the plaintiff's distribution of its services to the consuming public. Though this is not the reasoning Mishkoff gives, someone else may create a site just like his out of protest against the local mall. What better way to "get back" at them then to drive away their customers? Clearly it could be argued that Mishkoff, in this case, or another web designer in a similar case would have an economic motivation for the speech they are using.
So using the three-pronged test it is debatable whether or not Mishkoff's speech would be found commercial. What is evident however is that the test applied in this case takes much more into account than whether or not you can find an applicable section of the Lanham Act to fit a certain type of speech. It requires the court to engage in a detailed analysis and make certain decisions concerning the speech in question, something the 6th Circuit Court was not interested in doing.
It is curious if the Appeals Court had been hearing this case under § 1125 or any other section of the Lanham Act, if it would have used the same "test" to determine the nature of the speech. The Court appears to have selected the language for its test only because that was the section of the Lanham Act being argued in front of them. If this case had been argued under § 1125, and the Lanham Act can only apply when the speech in question is commercial, the Court clearly would not have been able to use the test it chose in this case. It would have had to pluck some language from the applicable section in order to make its decision. But what language could it have chosen? § 1125(d)'s main focus is bad faith *640 intent. Using the logic of the 6th Circuit, the test to determine whether the speech was commercial, would be to find out if the speaker had a bad faith intent to profit from the mark. If there was no bad faith then this section of the Lanham Act would not apply and therefore the speech in question would not be commercial. What about an analysis under § 1125 (b) for dilution? Could a court simply say that because the speech at issue wouldn't be actionable under 1125(b) then the speech is not commercial? It is impossible and impractical to determine the commerciality of the speech based on a test that has nothing to do with commercial speech.
Using the Taubman case as a guide, it is questionable how the 6th Circuit Court of Appeals would have decided the Moviefone case had it been brought before them. Following the Court's own language it seems likely that the Court would have found against Moviefone. Using the language of the Lanham Act, Moviefone's site would have to be examined to determine if it was using the trademark of Wehrenberg's theaters "in connection with the sale or advertising of ANY goods or services." By having advertisements and links to other business on both their phone and website systems, Moviefone is using the plaintiff's mark in connection with the advertising of other goods and services. The 6th Circuit leaves little question that this type of activity would qualify as commercial speech when stating in the Taubman case, "As long as Mishkoff has no commercial links on either of his websites, including links to shirtbiz.com, Webfeats, or any other business, we find no use in connection with the advertising of goods and services to enjoin." [FN51] It seems as though Moviefone would quite easily meet the first part of the 6th Circuit's commercial speech test.
Though the Moviefone website was not a typical fan site, it operated in much the same way that a fan site would. It was set up to promote not only it's own service but to promote the services of others, namely the local movie theaters. Mishkoff's website, though unique in its own way, was more of a typical fan website. It was meant to show his enthusiasm and support for a local mall in his community. It was seemingly harmless in nature. But should websites like Mishkoff's and Moviefone's always be considered non-commercial speech simply because of their design?
*641 SECTION IV -- PROBLEM & SOLUTION
It should be clear from reading the four scenarios above (two real hearings and two hypothetical ones) that there is no easy solution to determining the commercial nature of speech contained on fan websites. This becomes more problematic due to the influx of informational websites such as Moviefone.com, Vehix.com, and Rottentomatoes.com. These sites are not typical fan websites, but instead fall somewhere in between Mishkoff's site and a full-blown commercial website. With no clear test to apply, courts are forced to apply whatever analysis they see as a best fit to the situation. This causes enormous disparity among cases and provides little guidance to site owners and operators who wish to have a reasonable estimation of their own liability.
Of course, as shown in Moviefone, even when a clearer test is available there is no guarantee that the court will apply it properly. Due to lack of cases dealing with this subject matter, courts are forced to make their own interpretation of how the limited rules they do have should be applied. When reading through a case like Moviefone or Taubman, you see long blocks of text, containing no citations or references, in which the court is attempting to create some sort of logical set of rules to rationalize its decision. This can lead to often illogical conclusions. One prime example is towards the end of Moviefone when the Court explains, "the plaintiff must demonstrate that defendant's communications which involve or reference plaintiff are, in fact, commercial speech." [FN52] Out of context this quote is accurate, but the Court is using it to explain why, regardless of the numerous commercial advertisements and links on defendant's website, the actual contents of the site (the movie listings) are not commercial speech. This is an illogical and foolish conclusion for the Court to draw. The Court examined only part of the speech contained on the website, not the contents of the entire site itself. An accurate decision cannot be reached unless all of the speech is analyzed. This is only one example of courts grabbing at straws when trying to solve issues it does not fully understand. This is why a clearer rule must be established and courts must learn how to apply it properly.
In the search for a better rule we can immediately throw out the analysis done by the 6th Circuit. No logical or precedential reason exists *642 for looking to a specific section of the Lanham Act to determine if speech is commercial. The Lanham Act was not designed to be a test for commercial speech and to use it in that manner is wrong. Perhaps if the Act defined commercial speech then the Act itself could be used to make that determination. Anyone who took the LSAT's should fondly remember a section titled Logic Games. Inevitably, there was always the question along the lines of, "Bob visits his local car dealership to search for a new car. Upon arriving at the dealership he is told that (1) All Ford's are blue and (2) All Ford hatchbacks have sunroofs. Bob picks out a blue hatchback with a sunroof. Is it definitely a Ford?" The answer of course is no. A number of other cars on the lot could be blue hatchbacks with sunroofs. A similar type of question was asked to the 6th Circuit. Apparently they do not remember how to play logic games. The 6th Circuit's logic was that "The Lanham Act only applies to commercial speech. Non-commercial speech does not fall under the Lanham Act. Defendant's speech does not fall under the Lanham Act. Therefore, defendant's speech is not commercial." Like the question about the blue Ford's this should immediately be seen as an incorrect conclusion. There is plenty of commercial speech that exists that would not fall under this or any other section of the Lanham Act. If I post an ad on the school bulletin board informing students that I am selling my generic stapler for $5, I would be engaging in commercial speech (regardless of which "test" you use). I am proposing a commercial transaction, for a specific product, for economic motivation. Though my speech is commercial it would most likely not fall under any section of the Lanham Act. To say that my advertisement is non-commercial speech because it does not fall under the Lanham act would be wrong. It is because of this fallacy of logic that we can discard the 6th Circuit's test in our search for a proper analysis.
With few other options available the best place to begin piecing together our new rule is the Moviefone case. Let me begin by stating that the Court in this case created a solid framework for which to analyze website cases involving questions of commercial speech and the Lanham Act. Where this Court erred was in its application of that framework. I believe with a little bit of tweaking and some logical instructions, the Moviefone rule would be the best rule to apply in these types of cases.
When a case comes before the court presenting issues such as the ones found in Taubman or Moviefone, the court must immediately recognize that for the communication to be actionable under the Lanham Act it must be commercial speech. This analysis should be done without regard to the section of the Lanham Act the claim is being brought under, *643 for no section of the Lanham Act will apply if the speech is non commercial. The next step is to apply the three-pronged factor test from Bolger and Porous Meidia. This is where the Moviefone Court went astray. Because this is a factor test, all three must be scrutinized, as no one factor is dispositive.
The first factor, whether the communication is an advertisement, has been defined to mean, "proposing a commercial transaction." [FN53] To ensure a proper balance remains between protecting the interests of trademark owners and protecting the right to free speech, courts must be cautious when making this analysis. With that being said though, a court must not examine the speech in question out of context. In Moviefone the speech in question was surrounded by advertisements for various movie related products and services. Though it is debatable whether or not the movie listings for plaintiff's theater was a proposal for a commercial transaction, there is no question that the ads surrounding it were. Taken in context with the ads, the defendant's website should be viewed as making a proposal for a commercial transaction. The site itself cannot be separated into various parts because that is not how a consumer would view it. The consumer would view it as one complete item. This is one area where the 6th Circuit got it right and the District Court got it wrong; when ads and links to other sites are placed on a website, the communication should be deemed commercial speech a vast majority of the time.
The second factor asks whether or not the speech refers to a specific product or service. Courts have not dealt with this question in any in-depth manor, but instead look simply to see if any product or service has been mentioned specifically. In Moviefone, specific movie schedules for the plaintiff's theater were mentioned, as well as other services provided by movie studios and production companies. In Taubman, Mishkoff's website specifically mentioned the various stores and services contained within the new Shops at Willow Bend. This factor has not been well defined by any court to this point and it is possible that it may be more narrowly construed in the future.
The third factor concerns whether or not the speaker has an economic motivation for the speech. Again, this is a factor that courts have not explored in depth but seem content to answer on its face. This question simply concerns finding some sort of financial concern for making the speech in question. In Moviefone the economic motivation *644 was to increase use of the Moviefone service, which in turn would allow Moviefone to generate more advertising revenue. Where the court will run into trouble trying to answer this question is when a case like Taubman comes along. By having no precedent to help define "economic motivation" the Court will have to come to its own conclusion concerning the motives of someone like Mishkoff.
The final step in determining whether the Lanham Act would apply to the speech is to decide if the speech in question is false and misleading and would create a likelihood of confusion among consumers. This is a decision the courts must make on a case-by-case basis, as the analysis is very fact specific. Once all of these factors are analyzed, then, and only then, can a court make an informed determination as to the commercial nature of the speech in question.
Without a proper test in place, courts have no guidance on how to deal with cases of this nature. As an example, on March 5, 2004, the 6th Circuit Court of Appeals heard a case concerning a woman who had experienced poor service while visiting the local landscaping facility. [FN54] To ensure that her complaints were heard by as many people as possible she set up a website with the domain name of "lucasnursery.com", which happened to be the name of the nursery. The nursery filed suit under the AntiCyberSquatting Consumer Protection Act to enjoin the woman from operating the website. Consistent with it's decision in Taubman the Court stated, "Although there is some dispute between the parties as to whether the ACPA covers non-commercial activity, we see no reason to consider these arguments, as the statute directs a reviewing court to consider only a defendant's bad faith intent to profit from the use of a mark held by another party." [FN55] In this case the Court barely gave lip service to the concern that the speech in question was not commercial and therefore would not fall under the auspicious hand of the Lanham Act. Without a clear test for the courts to follow, judges who disregard the importance of determining whether or not the speech in question is commercial could continue to decide cases incorrectly.
[FNa1]. A second year law student at Franklin Pierce Law Center in Concord, New Hampshire. I am submitting this article for publication in your journal. The article was created with the assistance of Professor Susan Richey.
[FN1]. See Hank Mishkoff, Taubman Sucks http:// www.taubmansucks.com/index.html> (accessed Feb. 3, 2004). This is the site Mishkoff created after the controversy with Taubman began. On it he posted updates concerning his interactions with Taubman and their law firm. Mishkoff also scanned most of the original letters, pleadings, motions, and memoranda onto the page.
[FN2]. Mishkoff, <http://taubmansucks.com/Act2.html>
[FN3]. Mishkoff, <http://taubmansucks.com/Act7.html>
[FN4]. Mishkoff, <http://taubmansucks.com/Act12.html>
[FN5]. Mishkoff, <http://taubmansucks.com/Act13a.html>
[FN8]. Alex Kozinski and Stuart Banner, Who's Afraid of Commercial Speech, 76 Va. L. Rev. 627, (1990).
[FN10]. See Valentine v. Chrestensen, 316 U.S. 52, 54 (1942). In the opinion for the Court, Justice Roberts writes, "We are clear that the Constitution imposes no restraint on government as respects purely commercial advertising."
[FN14]. Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n, 447 U.S. 557, 563-567 (1980). The Central Hudson test is applied only when commercial speech concerns lawful activity and is not misleading. Once that burden is met, the government may only regulate the speech if: (1) the asserted government interest is substantial; (2) the regulation directly advances the asserted government interest; and (3) the regulation is no more extensive than necessary.
[FN15]. Caren Schmulen Sweetland, The Demise of a Workable Commercial Speech Doctrine: Dangers of Extending First Amendment Protection to Commercial Disclosure Requirements, 76 Tex. L. Rev. 471, (2001).
[FN18]. Hank Mishkoff, <http://taubmansucks.com/Act1.html>
[FN22]. Hank Mishkoff, <http://taubmansucks.com/Act2.html>
[FN24]. Hank Mishkoff, <http://taubmansucks.com/Act6a.html>
[FN26]. Hank Mishkoff, <http://taubmansucks.com/Act10.html>
[FN27]. Taubman, F.3d 773, n.2
[FN28]. See <http://www.vidiot.com/foxwbwar.html>
[FN30]. Fox Broadcasting, <http://www.thesimpsons.com>
[FN31]. See e.g. <http://simpsoncrazy.com> and <http://www.lardlad.com>
[FN39]. 15 U.S.C. § 1114 imposes liability for infringement of trademarks on: Any person who shall, without consent of the registrant, (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertisement of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive...
[FN41]. 15 U.S.C. § 1125(a)(1)(B) holds a person liable who in connection with any goods or services, "uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which in commercial advertisement or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services or commercial activities.
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