Media Law
BULLETIN
October 2005
Pray It’s Not Just Another
Complaint, But A
Legitimate E-Gripe
We’ve all reached a point in our
lives when we wanted to gripe about
something, or in this case someone.
Sometimes you just have to appeal to
the right audience before you can get
heard. For Christopher Lamparello,
the right audience was the Fourth
Circuit Court of Appeals in the case
entitled Lamparello v. Falwell.1
Reverend Jerry Falwell a “nationally
known minister” and owner of <www.
Falwell.com> and of the common
law trademarks “Jerry Falwell” and
“Falwell,” gave an interview “in
which he expressed opinions about
gay people and homosexuality” that
offended Lamparello.2 On February
1, 1999, Lamparello responded by
registering the domain name <www.
fallwell.com>, and implementing his
own website where he could voice his
opinions of Falwell’s “untruths about
gay people.”3 Lamparello’s website
did not sell any goods or services and
it also contained a disclaimer on the
homepage indicating the website was
not affiliated with Falwell.4
Although Lamparello’s e-gripe site
had “no measurable impact” on the
amount of attendees of Reverend
Falwell’s e-church, Falwell sent
Lamparello two letters demanding that
Lamparello cease and desist using
any variation of “Falwell” as a domain
name.5 Lamparello filed a declaratory
relief action against Falwell and
his ministries in the U.S. District
Court for the Eastern District of
Virginia. Falwell filed a counter-claim
[ Highlighting legal issues affecting the
media and entertainment industries ]
alleging trademark infringement,6
false designation of origin,7 state
and federal unfair competition,
and cybersquatting under the AntiCybersquatting Consumer Protection
Act8 (“ACPA”).9
The district court sided with Falwell
on summary judgment, and enjoined
Lamparello from using Falwell’s mark.
The court also ordered Lamparello to
transfer the domain name to Falwell.10
Lamparello took the matter up with
the Fourth Circuit and filed a timely
appeal. The Fourth Circuit reversed,
finding the district court’s opinion
unsupportable.11
The Fourth Circuit stated that to
prevail under either the Lanham Act
claim or the false designation of origin
claim, Falwell had to establish that: 1)
he possessed a mark; 2) Lamparello
used the mark; 3) Lamparello’s use
of the mark occurred “in commerce”;
4) Lamparello’s use of the mark was
“in connection with the sale, offering
for sale, distribution or advertising” of
goods or services; and 5) Lamparello
used the mark in a manner likely to
confuse consumers.12
Lamparello argued that the Fourth
Circuit should follow the Sixth
and Ninth Circuit’s views that the
Lanham Act should only be applied
to commercial speech to prevent
unconstitutional censorship.13
However, the Fourth Circuit did
not address this issue and decided
instead that Falwell could not
establish a likelihood of confusion.14
The Court noted that Lamparello
could not be liable unless his use
of the mark caused a likelihood
of confusion as to the source of
Lamparello’s website. The Court
stated that seven factors were helpful
in determining whether a likelihood
of confusion exists: 1) strength of
Falwell’s mark; 2) similarity of the
marks; 3) similarity of the goods/
services the marks identify; 4)
similarity of the facilities used by the
parties; 5) similarity of the advertising
used by the parties; 6) Lamparello’s
intent; and 7) actual confusion.15
In applying the factors, the Court held
that Falwell’s mark is distinctive and
that Lamparello’s website closely
resembled the mark. However, the
Court noted that the two websites
did not bear any resemblance to
each other. The Court also placed
substantial weight on the fact that
Falwell and Lamparello did not offer
similar goods or services.16 While
Falwell’s site offered spiritual and
political views, Lamparello’s site
criticized those views. The Court cited
to the Ninth Circuit for the principal
that “[n]o one would believe that
Reverend Falwell sponsored a site
criticizing himself, his positions, and
his interpretation of the bible.”17
Furthermore, the Court found that
the people visiting Lamparello’s
website “quickly realized” that Falwell
was not the source of the content
therein.18 As a result, the Court
found that there was no likelihood of
confusion between Lamparello’s and
Falwell’s websites.19
[ 2 ] October 2005 Media Law Bulletin Sedgwick, Detert, Moran & Arnold LLP
San Francisco
Zurich
[ www.sdma.com ]
© 2005 Sedgwick, Detert, Moran & Arnold LLP
Paris
Media Law Bulletin is published by
Sedgwick, Detert, Moran & Arnold
LLP and affiliated entities. For copies
of the cited cases, or any other assistance, please contact James J.S.
Holmes, Esq. or John F. Stephens,
Esq. at (213) 426-6900 or send an
E-mail to james.holmes@sdma.com
or john.stephens@sdma.com.
Orange County
Lamparello v. Falwell, 2005 U.S. App.
LEXIS 18156 (4th Cir. 2005).
2
Id. at 2.
3
Id. at 2-3.
4
Id. at 3-4.
5
Id. at 4.
6
15 U.S.C. § 1114 (200)
7
15 U.S.C. § 1125(a).
8
15 U.S.C. § 1125(d).
9
Falwell, 2005 U.S. App. LEXIS
18156 at 4.
Newark
1
This communication is published as
an information service for clients and
friends of the firm and is made available with the understanding that it does
not constitute the rendering of legal
advice or other professional service.
New York
Footnotes
Media Law Bulletin
Los Angeles
The Court then discussed Falwell’s
cybersquatting claim, stating that
to prevail Falwell had to establish
that Lamparello: 1) had a bad faith
intent to profit from using the domain
name; and 2) the domain name was
identical or confusingly similar to
Falwell’s distinctive mark or dilutive
of Falwell’s famous mark.25 The Court
noted that the ACPA was primarily
enacted to prevent cybersquatters
from registering numerous domain
The Court concluded that Lamparello
had created a gripe site, and in
following both the Fifth and Sixth
Circuits, held that a gripe site
criticizing a mark holder is not a
violation of the ACPA.30 So even
though all of our complaints may not
receive such favorable treatment from
the legal system, the Fourth Circuit
has firmly established we are at least
entitled to gripe about it.
—By Aaron P. Rudin
Sedgwick, Los Angeles
Id. at 5.
Id. at 2.
12
Id. at 6-7 (quoting People for the Ethical
Treatment of Animals v. Doughney, 263
F.3d 359, 364 (4th Cir. 2001).
13
Id. at 8; see also Taubman Co. v.
Webfeats, 319 F.3d 770, 774 (6th Cir.
2003); Bosley Med. Inst., Inc., v. Kremer,
403 F.3d 672 (9th Cir. 2005).
14
Falwell, 2005 U.S. App. LEXIS 18156 at
9-12.
15
Id. at 12-13.
16
Id. at 13-14.
17
Id. at 14 (citing New Kids on the Block
v. News Am. Publ’g, Inc., 971 F.2d 302,
308-09 (9th Cir. 1992).
18
Id. at 15.
19
Id.
20
Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94
F.3d 376, 382 (9th Cir. 1996).
21
Id.
22
Falwell, 2005 U.S. App. LEXIS 18156 at
16.
23
Id. at 18 (citation omitted).
24
Id. at 19-21.
25
Id. at 23 (citations omitted).
26
Id. at 24.
27
Falwell, 2005 U.S. App. LEXIS 18156 at
27-34.
28
Id. at 28.
29
Id. at 30-32.
30
Id. at 34 (citing TMI, inc. v. Maxwell, 368
F.3d 433, 434-45 (5th Cir. 2005) and
Lucas Nursery & Landscaping, Inc. v.
Grosse, 359 F.3d 806, 810 (6th Cir.
2004)).
11
London
Nevertheless, the Court noted that
even if it were persuaded to adopt
the initial interest confusion theory,
the theory was inapplicable because
it required that Lamparello’s use of
Falwell’s mark was for financial gain.24
Since Lamparello’s use of the mark
was strictly for gripe and criticism, the
Court rejected Falwell’s “initial interest
confusion” argument.
The Court discussed nine factors
that help distinguish wrongful domain
name registrations from legitimate
ones. After careful consideration
of each factor, the Court held
that Falwell could not show that
Lamparello had a bad faith intent
to profit from using the domain
name.27 The Court emphasized that
Lamparello’s use of the domain name
was only to criticize Falwell’s views
and not for profit.28 Additionally, the
Court noted that Lamparello had not
engaged in conduct that would create
a likelihood of confusion as to the
source of the website and had made
no attempt to sell the domain name to
Falwell for financial gain or to register
multiple domain names containing
Falwell’s name.29
10
Dallas
The Fourth Circuit stated that it had
never adopted the “initial interest
confusion” doctrine but generally
determined whether a likelihood of
confusion exists by “examining the
allegedly infringing use in the context
in which it is seen by the ordinary
consumer.”22 The Court reiterated that
likelihood of confusion should not be
determined based on “how closely a
fragment” of a use duplicates a mark,
but rather should be determined
based on the entirety of the use.23
names in an effort to sell them to the
legitimate owners of the mark and not
to prevent “noncommercial uses of a
mark, such as for comment, criticism,
parody, news reporting, etc.”26
Chicago
Falwell also argued that he was
entitled to prevail under the “initial
interest confusion” doctrine
established by the Ninth Circuit.20
The doctrine prevents a “competitor
from luring potential customers away
from a producer by initially passing off
its goods as those of the producer’s,
even if confusion as to the source of
the goods is dispelled by the time any
sales are consummated.”21 However,
this argument failed to persuade the
Fourth Circuit.