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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Ford Motor Company v. 2600 Enterprises, et al.

177 F. Supp. 2d 661, 2001 U.S. Dist. Lexis 21302 (E.D. Michigan, December 20, 2001)

Court denies Ford Motor Company's motion for a preliminary injunction seeking to enjoin defendants from continuing to automatically redirect users from a web site defendants operate at www.fuckgeneralmotors.com to the web site operated by Ford at www.ford.com. Defendants achieve this redirection via a link embedded in the programming code of defendants' web site, which link utilizes Ford's mark. The court held that Ford could not succeed on the merits of its federal trademark dilution claim, because defendants were not using plaintiff's mark in commerce. The court further held that Ford could not succeed on its trademark infringement and unfair competition claims, because defendants were not using plaintiff's mark in connection with the sale, or advertising for sale, of any goods or services. Finding that plaintiff would not succeed on the merits of its claims, the court denied plaintiff's motion.

Defendants Eric Corley and 2600 Enterprises are the registrants of the domain name "fuckgeneralmotors.com." Users who type in this url are automatically redirected to plaintiff Ford's web site at ford.com. Defendants achieve this result via a link embedded in the programming code of defendants' web site, which link utilizes Ford's mark. Defendants did not offer to sell goods or services at their site.

Plaintiff Ford commenced this suit, charging that defendants' actions constituted trademark dilution under the Federal Trademark Dilution Act, as well as trademark infringement and unfair competition in violation of the Lanham Act. Plaintiff sought injunctive relief. Finding that plaintiff had "no chance of succeeding on the merits" of its dilution, infringement and unfair competition claims, the court denied plaintiff's motion.

The Federal Trademark Dilution Act ("FTDA"), 15 U.S.C. §1125(c), provides in pertinent part that:

The 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.

The court held that because Ford could not establish that defendants' use of the mark was in commerce, a prerequisite to a FTDA claim, Ford could not succeed on its dilution claim. Said the Court:

[T]he 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. ... 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 homepage simply because it does not like the domain name or other content of the linking web page. ... [T]he 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.

In reaching this result, the court declined to follow Jews for Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J.) aff'd. 159 F.3d 1351 (3d Cir. 1998), which held that "the 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 Names of the Plaintiff Organization", as well as Planned Parenthood v. Bucci, 1997 WL 133313 (S.D.N.Y. 1997) which reached a similar result. Both cases were distinguished on the grounds that, unlike the case at bar, the offending sites at issue were linked to other sites at which goods were sold, and used the plaintiff's mark in a domain name.

The court also held that Ford was unlikely to prevail on its trademark infringement and unfair competition claims. To succeed on such claims, plaintiff must show that defendant used the mark "in connection with the sale, offering for sale, distribution or advertising of any goods or services." The court held that plaintiff could not meet this burden and accordingly that it was not likely to succeed on its infringement and unfair competition claims. Said the court:

[T]his 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 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' 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.
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