Injunction against non-commercial and cybergripping sites dissolved; Lanham Act claim bows to First Amendment rights.

February 7, 2003.   The U.S. Court of Appeals for the Sixth Circuit has dissolved a preliminary injunction prohibiting a Texas-based website www.taubmansucks.com, holding that the site's non-commercial nature precludes The Taubman Co. from enjoining the site owner's right of free speech.  The Taubman Co. v. Webfeats.

On October 11, 2001, the U.S. District Court for the Eastern District of Michigan granted Taubman's motion for a preliminary injunction, enjoining the defendants from from using the host name,   "shopsatwillowbend.com" because it included reference to Taubman's property "The Shops at Willow Bend" located in Plano, Texas.  Taubman had claimed that the site owner violated the real estate company's rights by including its trademark "The Shops at Willow Bend" in the site name.  The defendants claimed that their use was non-commercial, and therefore did not violate the Lanham Act.

The Sixth Circuit reversed the district court's decision to enjoin the defendants' non-commercial use.  In doing so, the court emphasised that the defendants had prominently displayed a disclaimer of any affiliation with the Taubman Co. on the homepage of the offending site, noting that  "[Defendants] website and its disclaimer actually serve to re-direct lost customers to Taubman's site that might otherwise be lost."

The Court of Appeals also dissolved the lower court's injunction against several "cybergripping" sites established by the defendants in response to Taubman's and its lawyer's conduct during the case.  In doing so, the court stated,

"We find that Mishkoff's use of Taubman's mark in the domain name "taubmansucks.com" is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. Such use is not subject to scrutiny under the Lanham Act. In fact, Taubman concedes that Mishkoff is 'free to shout 'Taubman Sucks!' from the rooftops. . . .'"