SEPTEMBER 2, 2005
Jerry Falwell Unable to Use Trademark Law to Shut Down
“Gripe Site”
In a decision issued in late August 2005, the United States Court of Appeals for the Fourth
Circuit ruled that the Lanham Act could not prevent Christopher Lamparello from operating
a web site critical of Reverend Jerry Falwell at the URL fallwell.com. The district court had
reached a different conclusion, concluding that Lamparello’s web site was likely to cause
Internet users to believe that his web site shared a “common affiliation or sponsorship” with
Reverend Falwell’s web site, in violation of Sections 32 and 43(c) of the Lanham Act. The
district court had also determined that Lamparello’s use of fallwell.com constituted
cybersquatting, in violation of Section 43(d) of the Lanham Act.
The facts of the case were not in dispute. Lamparello registered the URL fallwell.com after
hearing Reverend Falwell give an interview about homosexuality that Lamparello considered
offensive. According to Lamparello, the purpose of the web site was to respond to what he
believed were “untruths about gay people.” The home page of Lamparello’s web site
prominently stated that “[t]his website is NOT affiliated with Jerry Falwell or his ministry”
and provided a link to Reverend Falwell’s web site for those “who would like to visit Rev.
Falwell’s website.” Lamparello v. Falwell, 2005 U.S. App. LEXIS 18156, *3 (4th Cir. Aug. 24,
2005). At one point, Lamparello’s web site included a link to the Amazon.com web page for
a book offering biblical commentary that Lamparello favored, but Lamparello never sold
goods or services on or through his web site.
While the Fourth Circuit expressed concern over the interplay between trademark protection
and First Amendment freedoms, it did not need to reach that issue because it determined
that there is no likelihood of confusion (the hallmark of any trademark infringement claim)
between Lamparello’s and Falwell’s web sites. Refusing to adopt the “relatively new and
sporadically applied doctrine” of initial interest confusion, 1 the Fourth Circuit concluded
that – when viewed in the context in which they are seen by the ordinary consumer – there is
no likelihood that Internet users will mistakenly believe that Lamparello’s web site is
affiliated with Reverend Falwell. “Most importantly,” the Court noted, “Reverend Falwell
and Lamparello do not offer similar goods and services. . . No one would believe that
Reverend Falwell sponsored a site criticizing himself, his positions, and his interpretations of
the Bible.” 2 Id. at *14. Accordingly, the Court of Appeals reversed the District Court’s
grant of summary judgment in favor of Falwell on the infringement claims and ordered the
District Court to enter judgment in favor of Lamparello.
With respect to the cybersquatting claim, the Fourth Circuit focused on Lamparello’s intent
(to violate Section 43(d) of the Lanham Act, it must be shown that the defendant “had a bad
faith intent to profit” from using the domain name at issue). The Court concluded that
Reverend Falwell could not prove bad faith, particularly given the statute’s express sensitivity
to “bona fide noncommercial or fair use of the mark in a site accessible under the domain
name.” Id. at 25. The Court also found important the fact that Lamparello had made no
attempt to sell the domain name to Falwell (or a third party) for a profit and that Lamparello
had not engaged in the trafficking of domain names. Aligning itself with decisions from the
Fifth and Sixth Circuits, the Fourth Circuit concluded that Lamparello’s conduct did not
constitute cybersquatting. Accordingly, the Court reversed the District Court’s grant of
summary judgment on the cybersquatting claim and ordered the District Court to enter
judgment in Lamparello’s favor on that claim.
For further information about the Lamparello decision or any intellectual property matters,
please contact:
Richard D. Rochford
rrochford@nixonpeabody.com
(585) 263-1533
Jason C. Kravitz
jkravitz@nixonpeabody.com
(617) 345-1318
or any of Nixon Peabody’s TIP attorneys.
The Court noted that – even if it were to apply the doctrine here – initial interest confusion “simply
does not exist when the alleged infringer establishes a gripe site that criticizes the markholder.” Id. at
22 (further citation omitted).
1
2 The Fourth Circuit pointed out that it “would be a different case” if Lamparello “simply had quoted
Bible passages and offered interpretations of them subtly different from those of Reverend
Falwell….” Id. at n.3.
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