23 December 2001: Thanks to EG, added hardcopy transcription of Order Granting Defendants' "Rule 12(B)(2) and 12(B)(6) Motion".
21 December 2001. Thanks and congratulations to 2600 and its attorney, Eric
Grimm.
Source:
http://www.mied.uscourts.gov/_opinions/Clelandpdf/RHC01-71685.PDF
See case archives: http://www.2600.com/news/display.shtml?id=297
[4 pages.]
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
_________________________________________________________________
FORD MOTOR COMPANY,
Plaintiff,
v. Case No. 01-CV-71685-DT
2600 ENTERPRISES, et al.,
Defendants.
_______________________________/
ORDER GRANTING DEFENDANTS' "RULE 12(B)(2) AND 12(B)(6) MOTION"
Pending before the court is Defendants' motion to dismiss
under Federal Rule of Civil Procedure 12(b) for lack of personal
jurisdiction and for failure to state a claim, filed on July 5,
2001. For the reasons set forth below, the court will grant the
motion.
Before Defendants filed the instant motion, Plaintiff Ford
Motor Company ("Ford") moved the court for a preliminary
injunction enjoining Defendants from creating a link from their
Internet site "fuckgeneralmotors.com" to Ford's Internet homepage
at "ford.com". In a separate order, the court denied the
preliminary injunction, concluding that, insofar as Ford had
failed to state a claim on which relief could be granted, it was
not entitled to a preliminary injunction. Therefore, for the
[1]
reasons stated in that order, the court must also grant
Defendants' motion to dismiss for failure to state a claim.1
____________________
1 In their motion, Defendants spend considerable time arguing that Ford
has failed to state claims of false attribution and defamation. Ford's
complaint, however, plainly does not present such claims, alleging only
trademark infringement, unfair competition, and dilution. Accordingly, the
court will not read additional claims into the complaint.
Defendants also argue that this court lacks personal
jurisdiction over them.2 In response, Ford relies solely upon
this court's application of the Calder "effects test" in Ford
Motor Co. v. Great Domains, Inc., 141 F. Su p. 2d 763 (E.D. Mich.
2001) (relying on Calder v. Jones, 465 U.S. 783 (1984)). In
Calder, the Supreme Court held that a defendant who commits
intentional acts expressly aimed at the forum state, knowing that
the brunt of the in~urly will be fe t within that state, must
reasonably anticipate being haled into court there. In Great
Domains, this court concluded that registering a trademark as a
domain name with bad faith intent to profit from the value of
the mark could satisfy the "effects" test if the registration was
(1) intentional; (2) expressly aimed at the trademark holder; and
(3) had its main impact in the forum state.
____________________
2 Defendants reserved the issue of personal jurisdiction at the
preliminary injunction hearing but did not directly address the issue at th
time. Thus, while courts traditionally consider personal jurisdiction befot
addressing motions to dismiss for failure to state a claim, the issues in
this matter were presented in such a manner necessitating the contrary approach.
That holding is not helpful to Ford on the present facts.
In Great Domains, this court found the effects test could be
satisfied with specific reference to the claim brought pursuant
2
to the Anticybersquatting Consumer Protection Act of 1999
("ACPA"), 15 U.S.C. § 1125. Ford has not raised a claim under
the ACPA in this case. Moreover, as Ford acknowledged in Great
Domains, the analysis of whether a defendant's conduct was
"expressly aimed" at a forum is substantially similar to the
substantive analysis of the underlying claim. If a plaintiff is
unable even to allege the basic elements of a stated claim, it
cannot show that the defendant "expressly aimed" any wrongful
conduct at the forum. As discussed above, Ford in this case is
unable to state a claim upon which relief may be granted. The
alleged infringement and dilution claims require, at a minimum,
allegations of use of a trademark in connection with goods or
services and, under the dilution claim, allegations of
"commercial use" as well. Because Ford has not, and, indeed,
cannot, allege such facts against Defendants, it also cannot
demonstrate that they have "expressly aimed" acts of infringement
or dilution at the state of Michigan.
For this reason, the court concludes that Ford's failure to
state a claim upon which relief may be granted also precludes its
reliance upon the "effects test" for obtaining personal
lurisdiction over Defendants.
3
Accordingly, IT IS ORDERED that Defendants' July 5, 2001
"Rule 12(b)(2) and 12(b)(6) Motion" is GRANTED.
[Signature]
ROBERT H. CLELAND
UNITED STATES DISTRICT JUDGE
Dated: Dec. 20, 2001
[11 pages.]
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
_________________________________________________________________
FORD MOTOR COMPANY,
Plaintiff,
v. Case No. 01-CV-71685-DT
2600 ENTERPRISES, et al.,
Defendants.
_______________________________/
ORDER DENYING PLAINTIFF’S “MOTION FOR PRELIMINARY INJUNCTION”
The essential facts in this case are undisputed. Defendants
2600 Enterprises and Eric Corley, a/k/a Emmanuel Goldstein,1 are
the registrants of the domain name “fuckgeneralmotors.com.” When
an Internet user enters this domain into a web browser, he is
automatically linked to the official website of Plaintiff Ford
Motor Company (“Ford”), which is located at “ford.com”.2
____________________
1 Mr. Corley’s nom de guerre is taken from George Orwell’s 1984. Mr.
Corley asserts that, like Orwell’s fictional Goldstein, he is being persecuted
for trying to expose Big Brother--here, for Big Brother’s intrusion into the
Internet. Incidently, Mr. Corley is the publisher of Hacker’s Quarterly, an
online magazine for computer hackers. While the title sounds ominous, Mr.
Corley claims that the magazine’s mission is to enhance the protection of
confidential materials by exposing weak encryption methods before “crackers”
(i.e., hackers with criminal intent) do something worse. As expounded in an
CNN interview, Mr. Corley’s view is that “[w]hile you may resent the fact that
some 14-year-old from Topeka proved your security sucks, think of what could
have happened had you not learned of this and had someone else done it
instead.” See http://www.cnn.com/TECH/specials/hackers/qandas/
goldstein.html (last visited Nov. 6, 2001).
2 Since the time that the complaint in this matter was filed, the
website has been changed so that the opening page reads “To learn more about
FuckGeneralMotors.com click here.” If the Internet user clicks on the word
“here,” he is taken to the webpage “fordreallysucks.com”. If the user clicks
on the “FuckGeneralMotors.com” link, he is taken to Ford Motor Company’s
homepage at “ford.com”. If after approximately five seconds the user has done
nothing, he is linked to the “ford.com” page automatically.
[1]
Defendant Corley, a self-proclaimed “artist and social critic,”
apparently considers this piece of so-called cyber-art one of his
most humorous. Ford is not amused. Hence, the instant complaint
alleging three Lanham Act volations: trademark dilution, 15
U.S.C. § 1125(c); trademark infringement, 15 U.S.C. § 1114(1);
and unfair competition, 15 U.S.C. § 1125(a). The matter is now
before the court on Ford’s “Motion for Preliminary Injunction,”
filed on April 18, 2001. For the reasons set forth below, the
court will deny Ford’s motion.
I. STANDARD
Four factors are relevant in analyzing the merits, if any,
of a motion for preliminary injunction:
(1) whether the movant has a strong likelihood of
success on the merits; (2) whether the movant would
suffer irreparable injury without the injunction;
(3) whether issuance of the injunction would cause
substantial harm to others; and (4) whether the public
interest would be served by issuance of the injunction.
Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134
F.3d 749, 753 (6th Cir. 1998). The United States Court of
Appeals for the Sixth Circuit has recognized that these four
considerations are “factors to be balanced, not prerequisites
that must be met.” Memphis Planned Parenthood, Inc. v.
Sundquist, 184 F.3d 600 (6th Cir. 1999). “Accordingly, the
degree of likelihood of success required may depend on the
strength of the other factors.” In re Delorean Motor Co., 755
F.2d 1223, 1229 (6th Cir. 1985).
2
II. ANALYSIS
The parties devoted substantial portions of their briefs
discussing whether an injunction precluding Defendants’ use of
the word “Ford” to create a link from “fuckgeneralmotors.com” to
“ford.com” would impinge the First Amendment right to free
speech. Nevertheless, it is unnecessary for the court to reach
that issue, as Ford has failed to allege facts sufficient to
prevail on its dilution, infringement, and unfair competition
claims. Thus faced with no chance of succeeding on the merits,
Ford may not be granted injunctive relief.
A. Dilution
In relevant part, the Federal Trademark Dilution Act
(“FTDA”), codified at 15 U.S.C. § 1125(c), provides that
[t]he owner of a famous mark shall be entitled . . . to
an injunction against another person’s commercial use
in commerce of a mark or trade name, if such use begins
after the mark has become famous and causes dilution of
the distinctive quality of the mark.
15 U.S.C. § 1125(c). At issue in this case is whether
Defendants’ use of the FORD mark is “commercial.”
In support of its assertion that Defendant’s use is
“commercial,” Ford relies upon the case Planned Parenthood
Federation of America, Inc. v. Bucci, No. 97 Civ. 0629 (KMW),
1997 WL 133313 (S.D.N.Y. March 24, 1997). The defendant in that
case, an active participant in the anti-abortion movement,
registered the domain name “plannedparenthood.com” and set up a
3
website advertising an anti-abortion book entitled The Cost of
Abortion. The plaintiff, Planned Parenthood Federation of
America, Inc. (“Planned Parenthood”), sought to enjoin the
defendant from using the “plannedparenthood.com” domain. In
addressing Planned Parenthood’s likelihood of succeeding on its
dilution claim, the court concluded that the defendant’s use of
the disputed domain name was “commercial” (1) because although
defendant did not profit personally from Internet sales, his
“self-styled effort to ‘plug’ The Cost of Abortion [fell] within
the purview of the commercial use requirement”; (2) because
defendant’s use of the “plannedparenthood.com” domain was deemed
“part and parcel” of his broader efforts to solicit contributions
for the anti-abortion movement; and (3) because defendant’s
actions were “designed to, and do, harm plaintiff commercially.”
Id. at *5.
In this case, no allegation has been made that Defendants
are providing any goods or services for sale under the FORD mark
or that they solicit funds as did the defendant in Planned
Parenthood. Ford thus relies upon the third ground--arguably
dictum--that was set forth by the Planned Parenthood court:
namely, that the defendant’s use was “commercial” in that it
harmed plaintiff commercially. See id.
This latter theory of “commercial use” was further explained
by the Planned Parenthood court as follows:
4
First, defendant has appropriated plaintiff’s mark in
order to reach an audience of Internet users who want
to reach plaintiff’s services and viewpoint,
intercepting them and misleading them in an attempt to
offer his own political message. Second, defendant’s
appropriation not only provides Internet users with
competing and directly opposing information, but also
prevents those users from reaching plaintiff and its
services and message. In that way, defendant’s use is
classically competitive: he has taken plaintiff’s mark
as his own in order to purvey his Internet services--
his web site--to an audience intending to access
plaintiff’s services.
Id.
Similarly, in Jews for Jesus v. Brodsky, 993 F. Supp. 282
(D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998), the United States
District Court for the District of New Jersey found that the
defendant’s use of the plaintiff’s mark in the domain name
“jewsforjesus.com” constituted “commercial use” because the site
was “a conduit” to another of the defendant’s webpages, which
conducted fund raising through the sale of merchandise. Looking
beyond this fact, however, the court added that
[t]he conduct of the Defendant also constitutes a
commercial use of the Mark and the Name of the
Plaintiff Organization because it is designed to harm
the Plaintiff Organization commercially by disparaging
it and preventing the Plaintiff Organization from
exploiting the Mark and the Name of the Plaintiff
Organization. In addition, the Defendant Internet site
has and will continue to inhibit the efforts of
Internet users to locate the Plaintiff organization
Internet site.
Id. at 308.
Relying on these holdings, Ford argues that Defendants’ use
of the FORD mark is disparaging and prevents it from fully
5
exploiting the value of its mark, thus constituting “commercial
use.” For the following reasons, however, the court rejects this
analysis.
First, the facts of this case are distinguishable from both
Planned Parenthood and Jews for Jesus, in which the defendants
had appropriated domain names that incorporated the plaintiffs’
trademarks. Here, the domain name registered by Defendants--
“fuckgeneralmotors.com”--does not incorporate any of Ford’s
marks. Rather, Defendants only use of the word “ford” is in its
programming code, which does no more than create a hyperlink--
albeit automatic--to Plaintiff’s “ford.com” site. The court is
unpersuaded that this use of the FORD mark in any way hampers
Plaintiff’s commercial success in an unlawful manner.
The essence of the Internet is that sites are connected
to facilitate access to information. Including linked
sites as grounds for finding commercial use or dilution
would extend the statute far beyond its intended
purpose of protecting trademark owners from use that
have the effect of “lessening . . . the capacity of a
famous mark to identify and distinguish goods or
services.”
Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161
(C.D. Cal. 1998). This court does not believe that Congress
intended the FTDA to be used by trademark holders as a tool for
eliminating Internet links that, in the trademark holder’s
subjective view, somehow disparage its trademark. Trademark law
does not permit Plaintiff to enjoin persons from linking to its
6
homepage simply because it does not like the domain name or other
content of the linking webpage.3
____________________
3 In the offline context, consider a graffiti vandal painting “Fuck
General Motors” on a sign at Ford headquarters. While some other law may (or
should) provide a remedy, it would be a stretch to conclude that trademark law
had been violated. The same is true in this case.
Second, the implication in Planned Parenthood and Jews for
Jesus that the “commercial use” requirement is satisfied any time
unauthorized use of a protected mark hinders the mark owner’s
ability to establish a presence on the Internet or otherwise
disparages the mark owner is flawed. Indeed, many uses by
persons other than the trademark holder are expressly placed
outside the scope of the FTDA. Specifically, the statute
provides that the use of famous marks “in comparative commercial
advertising,” in “[a]ll forms of news reporting and news
commentary,” as well as any “noncommercial use” (all of which
frequently are designed to, and actually may, hinder the mark
owner’s commercial success) “shall not be actionable under this
section.” 15 U.S.C. § 1125(c)(4). Courts additionally have
extended protection to unauthorized uses of trademarks for the
expressive purposes of comedy, parody, allusion, and so forth,
even where the medium of expression is sold for money. See,
e.g., Mattel, Inc. v. MCA Records, No. CV 97-6791 WMB, 1998 WL
422641, *14-15 (C.D. Cal. Feb. 18, 1998); see also Charles Atlas,
LTD. v. DC Comics, Inc., 112 F. Supp. 2d 330, 338-39 (S.D.N.Y.
Aug. 29, 2000). Criticism of a product likewise warrants
7
exemption from the anti-dilution law. See, e.g., Northland Ins.
Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1122-23 (D. Minn. 2000)
(upholding defendant’s use of “northlandinsurance.com” to
criticize plaintiff Northland Insurance Companies as
noncommercial speech).
While arguably neither news reporting, competitive
advertising, parody, nor criticism is at issue in this case, and
although Defendants’ use of the term “art” hardly seems apropos,
the court is satisfied that Defendants’ use of the word “ford” in
their programming code is, at least, “noncommercial.” Their use
thus is not actionable under the FTDA. If the FTDA’s “commercial
use” requirement is to have any meaning, it cannot be interpreted
so broadly as to include any use that might disparage or
otherwise commercially harm the mark owner.
B. Infringement and Unfair Competition
Plaintiff similarly has failed to allege facts sufficient to
show a likelihood of succeeding on the merits of its infringement
and unfair competition claims. Pursuant to 15 U.S.C.
§ 1114(1)(a), to succeed on an infringement claim, a plaintiff
must show that the defendant has used the mark “in connection
with the sale, offering for sale, distribution, or advertising of
any goods or services.” An essentially identical showing of use
“in connection with any goods or services” is required on an
unfair competition claim. 15 U.S.C. § 1125 (a).
8
Plaintiff here has made no allegation that Defendant has
used the Ford mark in connection with goods and services in any
literal sense. Rather, Plaintiff again relies on the Planned
Parenthood and Jews for Jesus cases. As state above, in both
those cases the defendant had registered the plaintiffs’ marks as
domain names, such that the domain “plannedparenthood.com” was
controlled by an anti-abortion activist and “jewsforjesus.com” by
a nonchristian Jew. In both cases, the courts held that the
marks were used in connection with informational services that
competed with those offered by the plaintiffs. While this alone
presumably satisfied the “in connection with any goods or
services” requirement, the courts in both cases proceeded with
the following analysis:
In addition, defendant’s use of plaintiff’s mark is ‘in
connection with the distribution of services’ because
it is likely to prevent some Internet users from
reaching plaintiff’s own Internet web site.
Prospective users of plaintiff’s services who
mistakenly access defendant’s web site may fail to
continue to search for plaintiff’s own home page, due
to anger, frustration, or the belief that plaintiff’s
home page does not exist. . . . Therefore, defendant’s
action in appropriating plaintiff’s mark has a
connection to plaintiff’s distribution of services.
Planned Parenthood, 1997 WL 133313, *4, quoted in Jews for Jesus,
993 F. Supp. at 309.
Again, this court is not persuaded that the holdings in
Planned Parenthood and Jews for Jesus apply to the facts of this
case. First, Defendants’ use of the FORD mark in their
9
programming code, unlike the unauthorized use of a trademark as a
domain name, does not inhibit Internet users from reaching the
websites that are most likely to be associated with the mark
holder. Second, where, as here, the unauthorized use in no way
competes with the mark owner’s offering of goods or services, the
“in connection with goods or services” requirement is not
satisfied simply because a prospective user of the Internet may
face some difficulty in finding the home page he is seeking.
[T]rademark law requires reasonableness on the part of
consumers. Although the need to search for a mark
holder’s site may rise to the level of inconvenience,
this inconvenience is not cognizable. An Internet user
who intends to access either party’s products or
services, but who has not done so before, may go to a
search engine, or on America Online, to Keyword. Any
inconvenience to an Internet user searching for
Plaintiff’s web site is trivial. Searches for
Plaintiff’s web page on popular internet search
engines, including google.com, goto.com, and lycos.com,
list Plaintiff’s web site as their first or second
“hits.”
Strick Corp., 2001 WL 1018372, at *6 (internal citations and
alterations omitted); see also Hasbro Inc. v. Clue Computing,
Inc., 66 F. Supp. 2d 117, 124-25. Thus, the court concludes
that, as with its dilution claim, Plaintiff has failed to state
claims of infringement or unfair competition.4
____________________
4 In a companion case, Ford v. Greatdomains.com Inc., No. 00-CV-75144-DT
(E.D. Mich. Dec. 2001), this court recently held that the FTDA also requires
use of the mark in connection with goods or services. Thus, the reasoning set
forth in this case with regard to the infringement and unfair competition
claims provides an alternative reason for dismissing Plaintiff’s dilution
claim.
10
III. CONCLUSION
For the reasons set forth above, while Plaintiff
understandably may be disturbed by Defendants’ acts, the Lanham
Act provides no remedy. Having failed to demonstrate any
likelihood of succeeding on the merits of its claim, Plaintiff is
not entitled to an injunction. Accordingly,
IT IS ORDERED that Plaintiff’s “Motion for Preliminary
Injunction” is DENIED.
/s/
_________________________________
ROBERT H. CLELAND
UNITED STATES DISTRICT JUDGE
Dated: Dec. 20, 2001
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