C. Haley Cook
Cyberlaw Spring 2009
April 9, 2008
Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research
527 F.3d 1045 (10th Cir. 2008)
Lexis: 527 F.3d 1045
Procedural Posture: Plaintiff Utah Lighthouse Ministry (UTLM) appeals from the district court’s grant of summary judgment to the Defendant Foundation for Apologetic Information and Research (FAIR). UTLM appealed its claims of trademark infringement, unfair competition and cybersquatting to the 10th Circuit.
Holding: The 10th Circuit affirmed the district court’s grant of summary judgment to the defendants on both the trademark infringement and cybersquatting claims. The court held that UTLM had not met its burden to show that the mark in question was protectable, that the mark had been used in connection with goods or services, or that there was a likelihood of confusion, therefore, there was no trademark infringement. It also held that because although the domain names at issue were very similar, UTLM had not met its burden to show that its mark was distinctive or that Defendant used the domain name with bad faith intent to profit.
Background: The plaintiff, UTLM, is an organization that publicly criticizes the Church of Jesus Christ of Latter-day Saints. UTLM operates a website and online bookstore at www.utlm.org, UTLM did not register the trademark “Utah Lighthouse†until after the commencement of this suit. The defendant, FAIR, is a volunteer organization that supports the Church and answers UTLM’s criticisms. FAIR created a website that is similar in appearance to UTLM’s and can be found at www.utahlighthouse.org. The content on FAIR’s website is similar to UTLM’s, but it functions as a parody of many of the elements of UTLM’s website. For instance, the FAIR site uses an image of a black and white lighthouse that is very similar to one used by UTLM, but wrote the words “Destroy, Mislead, and Deceive†across the image. Furthermore the banner at the top of the UTLM site says, “Welcome to the Official Website of the Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner.†The FAIR website has a strikingly similar banner that says, “Welcome to an official website about the Utah Lighthouse Ministry, which was founded by Jerald and Sandra Tanner.†(emphasis added.) The FAIR website does not contain a disclaimer that it is not associated with UTLM. The FAIR website does not advertise or offer any goods or services for sale, but it does link to various sites such as the official FAIR homepage and the homepage for the Church of Jesus Christ of Latter-day Saints. UTLM subsequently brought several claims against FAIR in federal district court, but appeals only unfair competition, trademark infringement, and cybersquatting.
Court’s Analysis:
A. Trademark Infringement
The court stated that in order for FAIR to be held liable for trademark infringement, UTLM would have to show 1) that the mark at issue was protectable at the time FAIR created the website, 2) that FAIR used the trademark in connection with goods or services, and 3) that FAIR’s use of the trademark created a likelihood of confusion. For the first element, the court held that UTLM’s mark was not distinctive and that it had not shown sufficient evidence of acquiring a secondary meaning. UTLM introduced evidence of the number of “hits†a search for “Utah Lighthouse†on Yahoo generated, but the court rejected that evidence as being inadequate on its own to show secondary meaning. The court stated that in order for search hits to be enough to show secondary meaning, UTLM would have to show that a relevant group of consumers had visited the websites that the search brought up. Second, the court held that FAIR’s use of UTLM’s mark was not in connection with goods or services. UTLM asserted three separate grounds for commerciality: that the website hyperlinked to other sites that were commercial, that the FAIR website hindered access to UTLM’s true website, and that the internet itself is commercial making the use commercial. The court rejected all three of these arguments and held that UTLM had not met its burden of showing use in connection with goods or services. Third, the court considered the likelihood of confusion factors, and found that plaintiffs had not shown a likelihood of confusion. The court focused on the facts that UTLM had not presented sufficient evidence of actual confusion, that the similarity of goods was not relevant because FAIR’s site was not commercial, and that UTLM’s mark was not very strong. The court looked at all the likelihood of confusion factors in concert with the fact that FAIR’s site was a parody of UTLM’s site and found that there was no likelihood of confusion. Therefore, the court affirmed the district court’s grant of summary judgment finding that UTLM failed to meet its burden of showing trademark infringement.
B. Cybersquatting
According to the court, in order for UTLM to show a violation of the Anti-Cybersquatting Protection Act (ACPA), it would have to show 1) that its trademark was distinctive at the time FAIR registered the domain name, 2) that the domain names in question were identical or confusingly similar to the trademark, and 3) that FAIR used or registered the domain names with bad faith intent to profit. The court first found that UTLM had not met the first element because, as discussed above in the context of trademark, its mark was not distinctive at the time Defendant registered the name. Second, the court found that UTLM had clearly met the second element because the marks were almost identical. Adding .org or .com and taking out the space between “Utah†and “Lighthouse†did not substantially change the mark. Third, the court found that UTLM had not demonstrated bad faith intent to profit on the part of FAIR. The court noted that FAIR did not indent to profit by diverting customers from the trademark owner’s site to their own, nor did they offer to sell the domain name to UTLM. The court found that the fact that neither of those purposes were present, coupled with the fact that the site was noncommercial and a fair use parody of UTLM, supported a finding of no bad faith on the part of Defendant. Therefore, UTLM failed to show a violation of the ACPA. Furthermore, the court went on to point out that even if a violation of the ACPA was found, FAIR would fit within a safe harbor protecting those that believe and have reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful. As such, the court also affirmed the grant of summary judgment to defendants regarding the ACPA claims.
Cyberlaw Spring 2009
April 9, 2008
Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research
527 F.3d 1045 (10th Cir. 2008)
Lexis: 527 F.3d 1045
Procedural Posture: Plaintiff Utah Lighthouse Ministry (UTLM) appeals from the district court’s grant of summary judgment to the Defendant Foundation for Apologetic Information and Research (FAIR). UTLM appealed its claims of trademark infringement, unfair competition and cybersquatting to the 10th Circuit.
Holding: The 10th Circuit affirmed the district court’s grant of summary judgment to the defendants on both the trademark infringement and cybersquatting claims. The court held that UTLM had not met its burden to show that the mark in question was protectable, that the mark had been used in connection with goods or services, or that there was a likelihood of confusion, therefore, there was no trademark infringement. It also held that because although the domain names at issue were very similar, UTLM had not met its burden to show that its mark was distinctive or that Defendant used the domain name with bad faith intent to profit.
Background: The plaintiff, UTLM, is an organization that publicly criticizes the Church of Jesus Christ of Latter-day Saints. UTLM operates a website and online bookstore at www.utlm.org, UTLM did not register the trademark “Utah Lighthouse†until after the commencement of this suit. The defendant, FAIR, is a volunteer organization that supports the Church and answers UTLM’s criticisms. FAIR created a website that is similar in appearance to UTLM’s and can be found at www.utahlighthouse.org. The content on FAIR’s website is similar to UTLM’s, but it functions as a parody of many of the elements of UTLM’s website. For instance, the FAIR site uses an image of a black and white lighthouse that is very similar to one used by UTLM, but wrote the words “Destroy, Mislead, and Deceive†across the image. Furthermore the banner at the top of the UTLM site says, “Welcome to the Official Website of the Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner.†The FAIR website has a strikingly similar banner that says, “Welcome to an official website about the Utah Lighthouse Ministry, which was founded by Jerald and Sandra Tanner.†(emphasis added.) The FAIR website does not contain a disclaimer that it is not associated with UTLM. The FAIR website does not advertise or offer any goods or services for sale, but it does link to various sites such as the official FAIR homepage and the homepage for the Church of Jesus Christ of Latter-day Saints. UTLM subsequently brought several claims against FAIR in federal district court, but appeals only unfair competition, trademark infringement, and cybersquatting.
Court’s Analysis:
A. Trademark Infringement
The court stated that in order for FAIR to be held liable for trademark infringement, UTLM would have to show 1) that the mark at issue was protectable at the time FAIR created the website, 2) that FAIR used the trademark in connection with goods or services, and 3) that FAIR’s use of the trademark created a likelihood of confusion. For the first element, the court held that UTLM’s mark was not distinctive and that it had not shown sufficient evidence of acquiring a secondary meaning. UTLM introduced evidence of the number of “hits†a search for “Utah Lighthouse†on Yahoo generated, but the court rejected that evidence as being inadequate on its own to show secondary meaning. The court stated that in order for search hits to be enough to show secondary meaning, UTLM would have to show that a relevant group of consumers had visited the websites that the search brought up. Second, the court held that FAIR’s use of UTLM’s mark was not in connection with goods or services. UTLM asserted three separate grounds for commerciality: that the website hyperlinked to other sites that were commercial, that the FAIR website hindered access to UTLM’s true website, and that the internet itself is commercial making the use commercial. The court rejected all three of these arguments and held that UTLM had not met its burden of showing use in connection with goods or services. Third, the court considered the likelihood of confusion factors, and found that plaintiffs had not shown a likelihood of confusion. The court focused on the facts that UTLM had not presented sufficient evidence of actual confusion, that the similarity of goods was not relevant because FAIR’s site was not commercial, and that UTLM’s mark was not very strong. The court looked at all the likelihood of confusion factors in concert with the fact that FAIR’s site was a parody of UTLM’s site and found that there was no likelihood of confusion. Therefore, the court affirmed the district court’s grant of summary judgment finding that UTLM failed to meet its burden of showing trademark infringement.
B. Cybersquatting
According to the court, in order for UTLM to show a violation of the Anti-Cybersquatting Protection Act (ACPA), it would have to show 1) that its trademark was distinctive at the time FAIR registered the domain name, 2) that the domain names in question were identical or confusingly similar to the trademark, and 3) that FAIR used or registered the domain names with bad faith intent to profit. The court first found that UTLM had not met the first element because, as discussed above in the context of trademark, its mark was not distinctive at the time Defendant registered the name. Second, the court found that UTLM had clearly met the second element because the marks were almost identical. Adding .org or .com and taking out the space between “Utah†and “Lighthouse†did not substantially change the mark. Third, the court found that UTLM had not demonstrated bad faith intent to profit on the part of FAIR. The court noted that FAIR did not indent to profit by diverting customers from the trademark owner’s site to their own, nor did they offer to sell the domain name to UTLM. The court found that the fact that neither of those purposes were present, coupled with the fact that the site was noncommercial and a fair use parody of UTLM, supported a finding of no bad faith on the part of Defendant. Therefore, UTLM failed to show a violation of the ACPA. Furthermore, the court went on to point out that even if a violation of the ACPA was found, FAIR would fit within a safe harbor protecting those that believe and have reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful. As such, the court also affirmed the grant of summary judgment to defendants regarding the ACPA claims.