Illinois Association of Defense Trial Counsel
P.O. Box 7288, Springfield, IL 62791
IDC Quarterly Vol. 16, No. 3 (16.3.30)
Technology Law
By: Michael C. Bruck*
Crisham & Kubes, Ltd.
Chicago
Jerry Falwell’s Ears are Burning - Gripe Sites, Domain Names,
And Rejecting the Initial Interest Confusion Doctrine
The ease and accessibility of the internet has made it an ideal place for people to create personal
blogs, gripe sites, and rant forums. This broad-based expansion of personal communication has
provided ample opportunity for internet users to share ideas and voice their opinions on an array of
subjects. It also has generated substantial litigation involving same-name or similar name websites and
their impact on free speech and trademark law. In late April, the Supreme Court denied certiorari to
Lamparello v. Falwell, a case from the Fourth Circuit involving trademark infringement and
cybersquatting that could have major implications for free speech and the impact of trademark law on
the internet. 126 S. Ct. 1772 (2006).
Background
The Lamparello case, decided by the Fourth Circuit on August 24, 2005, centers around Reverend
Jerry Falwell, “a nationally known minister who has been active as a commentator on politics and
public affairs” who owns the trademarks “Jerry Falwell,” “Falwell,” “Listen America with Jerry
Falwell,” and “www.falwell.com.” 420 F.3d 309, 310 (4th Cir. 2005). The plaintiff, Christopher
Lamparello, created a website that responded to Falwell’s opinions about homosexuality. Id.
Lamparello registered the domain name “www.fallwell.com,” which is one letter off the correct
spelling of Jerry Falwell’s last name and website address. Id.
Lamparello sued in the United States District Court for the Eastern District of Virginia for a
declaration that his internet domain, “www.fallwell.com,” was not infringing trademark or
cybersquatting, registering, trafficking in, or using a domain name with bad-faith intent to profit from
the goodwill of a trademark belonging to someone else, “www.falwell.com.” Id. Falwell
counterclaimed and alleged trademark infringement, false designation of origin, unfair competition,
and cybersquatting. Id. at 312. Both parties filed motions for summary judgment, and the district court
enjoined Lamparello from using Falwell’s trademark, required Lamparello to transfer
“www.fallwell.com” to Falwell, but denied Falwell’s requests for attorney’s fees and statutory
damages. Id. Both parties appealed. Id.
The Fourth Circuit Court of Appeals ultimately held that Lamparello’s website did not infringe
under the Lanham Act and did not violate the Anticybersquatting Consumer Protection Act of 1999
(“ACPA”). Id. at 309. The court reasoned that Lamparello did not infringe or falsely designate
Falwell’s domain name under the Lanham Act because Lamparello’s website could not be confused
with Falwell’s website. For example, Lamparello’s website contained a disclaimer and bore no
resemblance to Falwell’s web design. In addition, the court concluded that Lamparello did not
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Illinois Association of Defense Trial Counsel
P.O. Box 7288, Springfield, IL 62791
IDC Quarterly Vol. 16, No. 3 (16.3.30)
cybersquat under the ACPA because he did not have a bad faith intent to profit using
www.fallwell.com.
The court also rejected Falwell’s initial interest confusion argument that Lamparello’s website
lured potential customers away from www.falwell.com by passing off his goods as those of Falwell.
Id. at 316. The court held that the initial interest confusion argument was inadequate because a web
user would not confuse the content of www.falwell.com with www.fallwell.com.
Commercial Speech Under the Lanham Act
In arriving at its ruling, the court first found that Falwell had no cause of action under the Lanham
Act. Id. at 314. The purpose of the Lanham Act is to prevent trademark infringement and protect
product identification, provide consumer information, and encourage the production of quality goods.
Id. at 313. There are two requirements to find infringement under the Lanham Act: (1) the trademark
must be used commercially or in connection with the sale of goods or services; and (2) a likelihood of
confusion must exist. Id.
Lamparello argued that the Lanham Act must be restricted to commercial speech, which is speech
proposing a commercial transaction, and not critical or ideological speech. Id. at 313. Amendments to
the Lanham Act, the Federal Trademark Dilution Act of 1995 (“FTDA”) and the ACPA demonstrate
that trademark laws were not intended to impinge on First Amendment rights of critics. Id. The FTDA
only applies to “commercial use in commerce of a mark,” and a person is not a cybersquatter under
ACPA if the person’s use of the mark is “bona fide noncommercial or fair use.” Id. The court noted,
however, that the Lanham Act does not use the term noncommercial. Id. at 314. Instead, the Lanham
Act applies to the use of a mark “in connection with any goods or services,” which can include noncommercial public and civic benefits. Id. The court did not decide what type of speech the Lanham
Act protected; however, the court highlighted that Lamparello’s website did not sell or promote any
goods and services and existed solely to promote Lamparello’s views on homosexuality.
The Fourth Circuit further ruled that Lamparello was not liable for trademark infringement and
false designation under the Lanham Act because there was no likelihood of confusion. Id. Seven
factors establish whether there is a likelihood of confusion, but “not all these factors are always
relevant or equally emphasized in each case.” The factors are “(a) the strength or distinctiveness of the
mark; (b) the similarity of the two marks; (c) the similarity of the goods/services the marks identify;
(d) the similarity of the facilities the two parties use in their businesses; (e) the similarity of the
advertising used by the two parties; (f) the defendant’s intent; and (g) actual confusion.” Id. at 315.
Lamparello’s website did not create confusion because it did not offer goods or services, did not
attempt to imitate Falwell’s website, and was not a facility for advertising. Id.
The Initial Interest Confusion Doctrine
In addition to holding that Lamparello’s website caused no likelihood of confusion, the court
rejected Falwell’s argument that Lamparello violated the initial interest confusion doctrine. Id. at 316.
Initial interest confusion “forbids 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.” Id. This doctrine is used sporadically in
conjunction with the “actual confusion” factor to assess the likelihood of confusion under the Lanham
Act.
For example, typosquatting or URL hijacking, a type of cybersquatting which relies on
typographical errors made by internet users when inputing a website address, can be used to create
initial confusion. If the misspelled website is made in a similar style as the producer’s website and
tries to sell similar items, the typosquatter would create initial interest confusion. Here, Falwell argued
that Lamparello’s website, www.fallwell.com, is a misspelled version of www.falwell.com, and the
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Illinois Association of Defense Trial Counsel
P.O. Box 7288, Springfield, IL 62791
IDC Quarterly Vol. 16, No. 3 (16.3.30)
website had a link to a website selling literature that related to Lamparello’s message. However,
Lamparello’s website does not sell any goods and states “[t]his website is not affiliated with Rev. Dr.
Jerry Falwell or his ministry. If you would like to visit Rev. Falwell’s website, you may click here.”
Id. at 311. If Lamparello’s website looked similar to Falwell’s website or sold any products, the court
probably would have determined he had violated the Lanham Act.
The Fourth Circuit noted, however, that it has not adopted the initial interest confusion doctrine. Id.
at 316. Instead, the court found what constituted confusion under the Lanham Act by analyzing the
use of the mark in the context in which it was seen by the ordinary customer and not by comparing
marks out of context or looking at domain names apart from their underlying content. Id. In addition,
even if the court used the initial interest doctrine, Lamparello was not liable because he ran a gripe site
that did not use Falwell’s mark for business or financial gain. Id.
The Fourth Circuit’s ruling undermines its 2001 opinion in PETA v. Doughney, and appears to
reverse its stance on initial interest confusion. In PETA, the court held that Doughney’s use of the
domain name “www.peta.org,” which linked to commercial sites and contained information
antithetical to PETA’s purpose, constituted trademark infringement. The court reasoned that
Doughney’s use of “www.peta.org” did not create a successful parody of PETA. 263 F.3d 359, 366
(4th Cir. 2001). For a parody to be successful, it “must convey two simultaneous and contradictory
messages; that it is the original, but also that it is not the original and is instead a parody.” Id. at 366.
The court concluded that the domain name was not a parody and, therefore, did not contain two
simultaneous and contradictory messages. Id. The Lamparello court claims that PETA did not adopt
the initial interest confusion doctrine. 420 F.3d at 316. PETA’s holding demonstrated, however, that
the court actually ruled that Doughney was liable for initial interest confusion because his domain
name would make internet users initially interested in the website because of the belief it was related
to PETA. 263 F.3d at 366.
Cybersquatting
The Fourth Circuit’s final ruling was that Lamparello did not violate the ACPA by cybersquatting.
The ACPA was enacted to eradicate the practice of cybersquatters registering several hundred domain
names in order to sell them to the legitimate owners of the mark. Id. at 319. In order to prevail in a
cybersquatting claim, Falwell had to demonstrate that Lamparello “(1) had the bad faith intent to
profit from using the [www.fallwell.com] domain name; and (2) the domain name www.fallwell.com
is identical or confusingly similar to or dilutive of, the distinctive and famous [Falwell] mark.” Id. The
court held that Falwell failed to demonstrate that Lamparello had a bad faith intent to profit from his
use of the domain name because Lamparello never tried to sell any items on his website. Id. at 320.
The court held that, generally, “the use of a mark in a domain name for a gripe site criticizing the
markholder does not constitute cybersquatting.” Id.
Conclusion
The Fourth Circuit’s decision in Lamparello demonstrates a complete departure from considering
initial interest confusion. Instead, the court focuses on the fact that internet users initially do not view
the domain name and then the website’s contents, but see the entire website at one time. This ruling
prevents too much weight from being given to the “actual confusion” factor of the seven factors used
to find confusion, and therefore stops initial interest confusion from preempting the factors used to
establish confusion. This balance favors those creating gripe sites and allows them to use critical or
similar domain names of those they critique. The Fourth Circuit’s holding marks a victory for critics
and an acknowledgment by the court of the realities of the internet and the importance of maintaining
free speech in cyberspace.
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Illinois Association of Defense Trial Counsel
P.O. Box 7288, Springfield, IL 62791
IDC Quarterly Vol. 16, No. 3 (16.3.30)
ABOUT THE AUTHOR: Michael C. Bruck is a partner in the Chicago law firm of Crisham & Kubes, Ltd. He is a
trial lawyer focusing on the defense of professionals in malpractice actions, commercial cases and intellectual property
litigation. Mr. Bruck received his B.S. from Purdue University in 1984 and his J.D. from DePaul College of Law in
1988. He is a member of the DRI, IDC, ISBA, CBA and The Illinois Society of Trial Lawyers.
*Mr. Bruck extends his gratitude to summer associate Margaret Fitzsimmons of Crisham & Kubes, Ltd. for her
assistance with this article.
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