126 Pages Posted: 6 Sep 2006
In an earlier article I described how courts in Internet settings have expanded the commercial use (or trademark use) prerequisite to infringement and dilution liability, thereby enabling trademark owners to control a wide range of unauthorized reproductions of their marks that do not associate the mark with the defendant's goods or services, and may not even expose Internet users to the mark at all. Others have written with concern about the courts' simultaneous expansion of the likelihood of confusion requirement for infringement liability. This article addresses the proper role of the First Amendment in limiting this expansion of trademark rights on the Internet, focusing specifically on the unauthorized use of marks in domain names that identify forum sites (that is, web sites that do not primarily sell or advertise goods or services, but consist of noncommercial speech). The article points out the considerable disarray of judicial approaches to this issue, including a number of splits among the Circuits, and undertakes to impose some principled order on the disarray.
Most uses of trademarks constitute commercial speech. However, a commentator's unauthorized, noncommercial use of a mark is entitled to a higher level of First Amendment protection than commercial speech. In such cases, courts have held that the First Amendment requires a balancing of implicated interests the interests of the trademark owner and the public in avoiding confusion about the source or sponsorship of products, on one hand, versus the defendant's and the public's interest in freedom of expression and the free flow of ideas and information. When the defendant has made an unauthorized use of the plaintiff's mark in the title to an expressive work, in particular, courts have determined that this balance requires a finding for the defendant unless the title has no artistic or expressive relevance to the expressive work or (if it has relevance) the title explicitly misleads as to the source or content of the work.
This article argues that domain names for forum web sites are comparable to the titles of expressive works, and points out how existing principles defining and governing the regulation of non-commercial speech should apply when mark owners challenge incorporation of their marks into domain names for gripe sites and other forum sites that target the mark owner. Unfortunately, courts have generally ignored the Supreme Court's definition of noncommercial speech in this context, and the First Amendment implications of prohibiting the defendants' use. In particular, courts are equating commercial speech with the Lanham Act's recently expanded commercial use requirement. While the commercial use requirement has served in the past to ensure that Lanham Act protection is consistent with First Amendment principles, its recent expansion has seriously undermined its effectiveness to do so.
The article also examines the interface of First Amendment protection with the Anticybersquatter Consumer Protection Act, focusing particularly on how the courts are construing and applying the forth and fifth factors that the Act lays out for determining whether a defendant has the requisite bad faith intent to profit from the plaintiff's mark. The article notes several concerns, including a tendency of courts to undermine the purpose of the fourth factor's safe harbor for noncommercial fair use by: 1) relying on recent expansion of the Lanham Act's commercial use requirement in infringement and dilution cases to find that the defendant's forum site use was commercial; 2) focusing on the defendant's intent to harm the plaintiff, rather than his intent to profit; and 3) defining profit to include non-financial interests, such as the defendant's personal satisfaction from airing his criticism of the plaintiff. The article also points out pitfalls in the courts' construction of the fifth factor, and suggests alternative constructions that are more consistent with First Amendment precedent.
Keywords: trademarks, domain names, first amendment
JEL Classification: O34
Suggested Citation: Suggested Citation
Barrett, Margreth, Domain Names, Trademarks, and the First Amendment: Searching for Meaningful Boundaries. Connecticut Law Review, Vol. 39, 2007. Available at SSRN: https://ssrn.com/abstract=928261