TAUBMAN COMPANY v. WEBFEATS, 319 F.3d 770 (6th Cir. 2003)

THE TAUBMAN COMPANY, PLAINTIFF-APPELLEE, v. WEBFEATS, A TEXAS

COMPANY AND HENRY MISHKOFF, AN INDIVIDUAL, DEFENDANTS-APPELLANTS.

Nos. 01-2648, 01-2725.

United States Court of Appeals, Sixth Circuit.

Argued: October 16, 2002.

Decided and Filed: February 7, 2003.

Pursuant to Sixth Circuit Rule 206

Appeal from the United States District Court for the Eastern District
of Michigan at Detroit. No. 01-72987 — Lawrence P. Zatkoff, Chief
District Judge.
Page 771

ARGUED: Paul A. Levy, PUBLIC CITIZEN LITIGATION GROUP, Washington,
D.C., for Appellants.

Douglas W. Sprinkle, GIFFORD, KRASS, GROH, SPRINKLE, ANDERSON &
CITKOWSKI, Birmingham, Michigan, for Appellee.

ON BRIEF: Paul A. Levy, PUBLIC CITIZEN LITIGATION GROUP, Washington,
D.C., for Appellants.

Julie A. Greenberg, GIFFORD, KRASS, GROH, SPRINKLE, ANDERSON &
CITKOWSKI, Birmingham, Michigan, for Appellee. Ann Beeson, Kevin S.
Bankston, AMERICAN CIVIL LIBERTIES UNION, New York, New York, Michael J.
Steinberg, Kary L. Moss, AMERICAN CIVIL LIBERTIES UNION, Detroit,
Michigan, for Amicus Curiae.

Before: BOGGS, SUHRHEINRICH, and CLAY, Circuit Judges.

SUHRHEINRICH, Circuit Judge.

Defendant-Appellant Henry Mishkoff, d/b/a Webfeats, appeals from two
preliminary injunctions, respectively entered on October 11, 2001, and
December 7, 2001, in the United States District Court for the Eastern
District of Michigan, together granting Plaintiff-Appellee the Taubman
Company's (Taubman) request to prevent Mishkoff from using six internet
domain names because they likely violate Taubman's trademarks in the
terms "Taubman," and "The Shops at Willow Bend."

Mishkoff claims two assignments of error. First, he contends that the
United States District Court for the Eastern
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District of Michigan lacked personal jurisdiction over him. Second, he
claims that even if jurisdiction was proper, Taubman is unlikely to
succeed on the merits of its trademark claims because it has not
demonstrated that customers would likely be confused between the origin
of Taubman's and Mishkoff's products.

We reverse the decision of the district court and dissolve both
injunctions. We find, first, that Mishkoff has waived any challenge he
might have to the personal jurisdiction of the district court in the
Eastern District of Michigan. Second, Taubman had failed to demonstrate a
likelihood of success on the merits because Mishkoff's use was not "in
connection with the sale or advertising of goods or services," and there
is no likelihood of confusion among consumers.

I. Facts

Mishkoff is a resident of Carrollton, Texas, and a web designer by
trade. Upon hearing the news that Taubman, a Delaware corporation with
its principal place of business in Michigan, was building a shopping mall
called "The Shops at Willow Bend," in Plano, Texas, Mishkoff registered
the domain name, "shopsatwillowbend.com," and created an internet website
with that address. Mishkoff had no connection to the mall except for the
fact that it was being built near his home.

Mishkoff's website featured information about the mall, with a map and
links to individual websites of the tenant stores. The site also
contained a prominent disclaimer, indicating that Mishkoff's site was
unofficial, and a link to Taubman's official site for the mall, found at
the addresses "theshopsatwillowbend.com," and "shopwillowbend.com."

Mishkoff describes his site as a "fan site," with no commercial
purpose. The site did, however, contain a link to the website of a company
run by Mishkoff's girlfriend, Donna Hartley, where she sold custom-made
shirts under the name "shirtbiz.com;" and to Mishkoff's site for his web
design business, "Webfeats."

When Taubman discovered that Mishkoff had created this site, it
demanded he remove it from the internet. Taubman claimed that Mishkoff's
use of the domain name "shopsatwillowbend.com" infringed on its
registered mark, "The Shops at Willow Bend." Taubman filed a complaint on
August 7, 2001, claiming, inter alia, trademark infringement under the
Lanham Act, 15 U.S.C. § 1114, asking for a preliminary injunction,
and demanding surrender of Mishkoff's domain name.

Mishkoff responsively registered five more domain names: 1)
taubmansucks.com; 2) shopsatwillowbendsucks.com; 3)
theshopsatwillowbendsucks.com; 4) willowbendmallsucks.com; and 5)
willowbendsucks.com. All five of these web names link to the same site,
which is a running editorial on Mishkoff's battle with Taubman and its
lawyers, and exhaustively documents his proceedings in both the district
court and this Court, both through visual scans of filed motions, as well
as a first person narrative from Mishkoff. In internet parlance, a web
name with a "sucks.com" moniker attached to it is known as a "complaint
name," and the process of registering and using such names is known as
"cybergriping."[fn1] See, e.g., Martha Kelley, Is Liabilty Just a
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Link Away? Trademark Dilution by Tarnishment Under the Federal Trademark
Dilution Act of 1995 and Hyperlinks on the World Wide Web, 9 J. Intell.
Prop. L. 361, 375 (2002) (defining "cybergriping"); Ronald F. Lopez,
Corporate Strategies for Addressing Internet "Complaint" Sites, 14 Int'l
L. Practicum 101, 101-02 (Autumn 2001) (giving examples of different
types of "complaint" sites).

On October 11, 2001, the district court granted Taubman's motion for a
preliminary injunction, enjoining Mishkoff from using the first host
name, "shopsatwillowbend.com."[fn2] On October 15, 2001, Taubman filed a
motion to amend the preliminary injunction to include the five "complaint
names" used by Mishkoff. On December 7, 2001, the district court allowed
the amendment and enjoined Mishkoff from using the complaint names.

On November 9, Mishkoff filed a notice of appeal from the October 11
injunction. On December 10, Mishkoff filed a notice of appeal from the
December 7 injunction. Accordingly, each case is timely before this Court
under Fed.R.App.P. 4(a)(1)(A). The cases have been consolidated on
appeal.

II. Personal Jurisdiction

Mishkoff first claims that the United States District Court for the
Eastern District of Michigan lacks personal jurisdiction over him. He
asserts that since he is a resident of Texas, the websites were created
in Texas, and the mall which is the subject of the websites stands in
Texas, a federal court in Michigan cannot exercise jurisdiction over him
as a defendant.

Although Mishkoff raises serious doubts in our minds about whether the
district court properly held jurisdiction, his motion was ultimately
untimely. Although subject-matter jurisdiction can be challenged at any
time, Fed.R.Civ.P. 12(h); see also Ambrose v. Welch, 729 F.2d 1084, 1085
(6th Cir. 1984), even collaterally after disposition, see Fed.R.App.P.
60(b)(4), a challenge to personal jurisdiction must be raised in the
first responsive pleading or be waived. Fed.R.Civ.P. 12(h)(1); see,
e.g., Reynolds v. Int'l Amateur Athletic Fed'n, 23 F.3d 1110, 1120 (6th
Cir. 1994); In Re Wolverine Radio Co., 930 F.2d 1132, 1137 n. 5 (6th
Cir. 1991). Mishkoff did not raise the issue of personal jurisdiction in
his original answer.

Mishkoff asks this court for leeway, in light of the fact that he was
originally litigating this case pro se. Unfortunately, as the district
court stated, there is no legal basis for so doing. This is not to say
that this Court will never grant leeway to a pro se party, but Mishkoff
has not presented the kind of extraordinary circumstances that would
warrant such action. Accordingly, we find that Mishkoff has waived any
challenge to personal jurisdiction.

III. Analysis

Mishkoff claims the injunctions preventing his use of the domain name
"shopsatwillowbend.com" and the five "complaint names" are inappropriate
because Taubman has not demonstrated a likelihood of success on the
merits and because the orders represent a prior restraint on his First
Amendment right to speak.
Page 774

A. Standard of Review

We review the district court's grant of a motion for a preliminary
injunction for abuse of discretion. Marchwinski v. Howard, 309 F.3d 330,
333 (6th Cir. 2002); Blue Cross & Blue Shield Mut. of Ohio v. Blue
Cross & Blue Shield Ass'n, 110 F.3d 318, 322 (6th Cir. 1997). "A
district court abuses its discretion when it relies on clearly erroneous
findings of fact . . . or when it improperly applies the law or uses an
erroneous legal standard. Under this standard, this court must review the
district court's legal conclusions de novo and its factual findings for
clear error." Owner-Operator Indep. Drivers Ass'n v. Bissell, 210 F.3d 595,
597 (6th Cir. 2000).

We have held that an injunction is proper in trademark cases where:

1) There is a likelihood of success on the merits;

2) There is the potential for irreparable harm;

3) There is the potential of adverse public impact;

4) Potential harm to the plaintiff outweighs the potential
harm to the defendant.

See Rock and Roll Hall of Fame and Museum Inc. v. Gentile Prods.,
134 F.3d 749, 753 (6th Cir. 1998). None of these factors, standing
alone, is a prerequisite to relief; rather, they must be balanced.
Golden v. Kelsey Harris Co., 73 F.3d 648, 653 (6th Cir. 1996); see
also County Sec. Agency v. Ohio Dep't of Commerce, 296 F.3d 477,
485 (6th Cir. 2002).

B. Propriety of the Injunctions

1. Likelihood of Success on the Merits

The likelihood of success of Taubman's claim rests with the language of
the Lanham Act, 15 U.S.C. § 1114(1), which imposes liability for
infringement of trademarks on:

Any person who shall, without the consent of the
registrant

a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale,
distribution, or advertising of any goods or services
on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive. . . .

Mishkoff proposes that, regardless of whether his use of Taubman's
marks violates the Lanham Act, any injunction prohibiting his use
violates the Constitution as a prior restraint on his First Amendment
right of Free Speech. Since Mishkoff has raised Free Speech concerns, we
will first explain the interrelation between the First Amendment and the
Lanham Act. First, this Court has held that the Lanham Act is
constitutional. Semco, Inc. v. Amcast, Inc., 52 F.3d 108, 111-12 (6th
Cir. 1995) (stating that reach of Lanham Act is limited so as to be
constitutional); see also Seven-Up v. Coca-Cola Co., 86 F.3d 1379, 1383
n. 6 (5th Cir. 1996). The Lanham Act is constitutional because it only
regulates commercial speech, which is entitled to reduced protections
under the First Amendment. Central Hudson Gas & Elec. Corp. v. Public
Serv. Comm'n of New York, 447 U.S. 557, 563 (1980) (stating that
regulation of commercial speech is subject only to intermediate
scrutiny). Thus, we must first determine if Mishkoff's use is commercial
and therefore within the jurisdiction of the Lanham Act, worthy of lesser
First Amendment protections.

If Mishkoff's use is commercial, then, and only then, do we analyze his
use for a likelihood of confusion. If Mishkoff's use is also confusing,
then it is misleading commercial speech, and outside the First
Page 775
Amendment. See 134 Cong. Rec. 31, 851 (Oct. 19, 1988) (statement of Rep.
Kastenmeier) (stating that § 43 of the Lanham Act only affects
misleading commercial speech); cf. Va. Bd. of Pharmacy v. Va. Citizens
Consumer Council, Inc., 425 U.S. 748, 771 & n. 24 (1976) (stating
that misleading commercial speech is not protected by the First
Amendment); Bonito Boats Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141,
157 (1989) (stating that a trademark owner has at best a quasi-property
right in his mark, and can only prevent its use so as to maintain a
confusion-free purchasing public) (quoting Crescent Tool Co. v. Kilborn
& Bishop Co., 247 F. 299, 301(2d Cir. 1917) (L. Hand, J.)).

Hence, as per the language of the Lanham Act, any expression embodying
the use of a mark not "in connection with the sale . . . or advertising
of any goods or services," and not likely to cause confusion, is outside
the jurisdiction of the Lanham Act and necessarily protected by the First
Amendment. Accordingly, we need not analyze Mishkoff's constitutional
defenses independent of our Lanham Act analysis. With this backdrop in
mind, we proceed to analyze the nature of the two websites.

a. November 9 Injunction — The

"shopsatwillowbend" Website

In regard to the first website, "shopsatwillowbend.com," Mishkoff
argues that his use is completely non-commercial and not confusing, and
therefore speech entitled to the full protections of the First
Amendment. Taubman offers three arguments that Mishkoff is using its name
commercially to sell or advertise goods or services. First, Mishkoff had
a link to a site owned by Hartley's blouse company, "shirtbiz.com."
Second, he had a link to his own site for his web design company,
Webfeats. Third, Mishkoff had accepted a $1000 offer to relinquish the
name to Taubman.

Although Mishkoff claims his intention in creating his website was
non-commercial, the proper inquiry is not one of intent. Daddy's Junky
Music Stores, Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 287
(6th Cir. 1997). In that sense, the Lanham Act is a strict liability
statute. See Hard Rock Café Licensing Corp. v. Concession Servs,
Inc., 955 F.2d 1143, 1152 n. 6 (7th Cir. 1992). If consumers are confused
by an infringing mark, the offender's motives are largely irrelevant.
Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1188 (6th Cir. 1988) (citing Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d
Cir. 1986)). We believe the advertisements on Mishkoff's site, though
extremely minimal, constituted his use of Taubman's mark "in connection
with the advertising" of the goods sold by the advertisers. This is
precisely what the Lanham Act prohibits.

However, Mishkoff had at least removed the shirtbiz.com link prior to
the injunction. A preliminary injunction is proper only to prevent an
on-going violation. See, e.g. Hecht Co. v. Bowles, 321 U.S. 321, 329-30
(1944) (recounting the historical role of courts of equity and stating
that purpose of injunctive relief is "to deter, not to punish"). As long
as Mishkoff has no commercial links on either of his websites, including
links to shirtbiz.com, Webfeats, or any other business, we find no use
"in connection with the advertising" of goods and services to enjoin, and
the Lanham Act cannot be properly invoked.[fn3]
Page 776

Taubman's assertion that its offer to buy the domain name
"shopsatwillowbend.com" from Mishkoff qualifies Mishkoff's use of the
mark as "in connection with the sale of goods" is meritless. Although
other courts have held that a so-called cybersquatter, who registers
domain names with the intent to sell the name to the trademark holder,
uses the mark "in connection with the sale of goods," they have also
limited their holdings to such instances where the defendant had made a
habit and a business of such practices. See, e.g., E & J Gallo Winery
v. Spider Webs Ltd., 286 F.3d 270, 270 (5th Cir. 2002) (noting that
defendant had made a business practice of selling domain names on eBay
for no less than $10,000); Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316
(9th Cir. 1998).

In Panavision, the defendant, Toeppen, purchased and offered to sell
the name "panavision.com" to Panavision for $13,000. Id. at 1318.
Evidence showed that Toeppen had attempted similar deals with a myriad of
other companies, ranging from Delta Airlines to Eddie Bauer. Id. at
1319. The Ninth Circuit found Toeppen's intent to sell the domain name
relevant in determining that his creation of the site was a commercial
use of Panavision's mark. Id. at 1325. In contrast, not only has Mishkoff
not made a practice of registering and selling domain names, but he did
not even initiate the bargaining process here. Although Taubman's counsel
intimated at oral argument that Mishkoff had in fact initiated the
negotiation process, correspondence in the record supports the opposite
conclusion, and shows that Taubman first offered Mishkoff $1000 to
relinquish the site on August 16, 2001, and Mishkoff initially accepted
it under threat of litigation. Hence, this case is distinguishable from
Panavision. There is no evidence that Mishkoff's initial motive in
selecting Taubman's mark was to re-sell the name. Therefore, we hold his
use of the name "shopsatwillowbend.com" is not "in connection with the
sale of goods."

Even if Mishkoff's use is commercial speech, i.e., "in connection with
the sale . . . or advertising of any goods or services," and within the
jurisdiction of the Lanham Act, there is a violation only if his use also
creates a likelihood of confusion among customers. 15 U.S.C. § 1114(1).
Moreover, the only important question is whether there is a likelihood of
confusion between the parties' goods or services. Bird v. Parsons,
289 F.3d 865, 877 (6th Cir. 2002). Under Lanham Act jurisprudence, it is
irrelevant whether customers would be confused as to the origin of the
websites, unless there is confusion as to the origin of the respective
products. See also Daddy's Junky Music Stores, 109 F.3d at 280.

Since its inception, Mishkoff had always maintained a disclaimer on the
website, indicating that his was not the official website. In Holiday
Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619 (6th Cir. 1996), we
found the existence of a disclaimer very informative, and held that there
was no likelihood of confusion, partly on that basis.

In Holiday Inns, the plaintiff hotel chain used the phone number
1-800-HOLIDAY for its guest room reservation hotline. Holiday Inns
claimed a Lanham Act violation when the defendant company, a business
that profited by taking reservations
Page 777
for several hotel chains, used the phone number 1-800-H0LIDAY (with a
zero instead of an "O") in order to take advantage of any calls misdialed
by customers seeking Holiday Inns' hotline. We found no Lanham Act
violation, partly because the defendant played an unmistakable disclaimer
upon answering each call, explaining that it was unaffiliated with Holiday
Inns, and providing customers with Holiday Inns' correct phone number.
Id. at 621. We found that the defendant was, in fact, directing business
to Holiday Inns that otherwise would have been lost, and although some
callers chose to do business with the defendant, others hung up and
called Holiday Inns. Had it not been for defendants' service, Holiday
Inns would likely never have recovered many customers who had misdialed.
Id. at 625.

We find the analysis here indistinguishable from the disclaimer
analysis in Holiday Inns.[fn4] Mishkoff has placed a conspicuous
disclaimer informing customers that they had not reached Taubman's
official mall site. Furthermore, Mishkoff placed a hyperlink to Taubman's
site within the dislcaimer. We find this measure goes beyond even what
was done by the defendant in Holiday Inns. There, a customer who reached
the defendant's hotline in error had to hang up and redial the correct
Holiday Inns number. Id. Here, a misplaced customer simply has to click
his mouse to be redirected to Taubman's site. Moreover, like Holiday
Inns, the customers who stumble upon Mishkoff's site would otherwise have
reached a dead address. They would have received an error message upon
typing "shopsatwillowbend.com," simply stating that the name was not a
proper domain name, with no message relating how to arrive at the official
site. Hence, Mishkoff's website and its disclaimer actually serve to
re-direct lost customers to Taubman's site that might otherwise be lost.
Accordingly, we find no likelihood that a customer would be confused as
to the source of Taubman's and Mishkoff's respective goods.

b. December 7 Injunction — The "sucks" Site

In regard to Mishkoff's "complaint site," Taubman claims that
Mishkoff's use is necessarily "in connection with the sale of goods"
because his intent behind the use of the names "taubmansucks.com," et
al., is to harm Taubman economically.

In Planned Parenthood Fed'n of Amer., Inc. v. Bucci, No. 97 Civ. 0629,
1997 WL 133313 (S.D.N.Y. March 24, 1997), aff'd, No. 97-7492, 1998 WL
336163 (2d Cir. Feb. 9, 1998), the defendant usurped the domain name
"plannedparenthood.com" and created a website displaying anti-abortion
pictures and pro-life messages in clear contradiction of the plaintiff's
stated mission. Id. at *1. The court there found that, although not
selling or advertising any goods, the defendant's use of Planned
Parenthood's mark was commercial because he had used plaintiff's mark and
attempted to cause economic harm. Id. at *4. (noting that Lanham Act is
applicable because "defendant's action in appropriating plaintiff's mark
has a connection to plaintiff's distribution of its services).

Following Planned Parenthood, Taubman argues that all cybergriping
sites are per se commercial and "in connection with the sale of goods."
However, Planned Parenthood, as an unpublished district court opinion, is
not binding on this Court, and is nonetheless distinguishable. Even if
Mishkoff's use is commercial, it must
Page 778
still lead to a likelihood of confusion to be violative of the Lanham
Act. 15 U.S.C. § 1114(1). In Planned Parenthood, the defendant used
the plaintiff's trade name as a domain name, without the qualifying
moniker "sucks," or any other such addendum to indicate that the
plaintiff was not the proprietor of the website. In contrast,
"taubmansucks.com" removes any confusion as to source. We find no
possibility of confusion and no Lanham Act violation.

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. . . ." Brief for Respondent, at 58.
Essentially, this is what he has done in his domain name. The rooftops of
our past have evolved into the internet domain names of our present. We
find that the domain name is a type of public expression, no different in
scope than a billboard or a pulpit, and Mishkoff has a First Amendment
right to express his opinion about Taubman, and as long as his speech is
not commercially misleading, the Lanham Act cannot be summoned to prevent
it.

2. The Remaining Injunctive Factors

When, as here, a preliminary injunction would infringe upon a
constitutional right, the likelihood of success on the merits is often
the determinative factor. Detroit Free Press v. Ashcroft, 303 F.3d 681,
710 (6th Cir. 2002); Connection Distrib. Co. v. Reno, 154 F.3d 281, 288
(6th Cir. 1998). Even so, the other three factors also suggest that a
preliminary injunction is not proper. Because Mishkoff is not using
Taubman's mark to peddle competing goods, and because any damages would
be economic in nature and fully compensable monetarily, we find no
potential for irreparable harm to Taubman that should lead us to uphold
the injunctions. See Overstreet v. Lexington-Fayette Urban County Gov't,
305 F.3d 566, 578 (6th Cir. 2002) (citing Basicomputer Corp. v. Scott,
973 F.2d 507, 511 (6th Cir. 1992)). Moreover, absent a likelihood of
confusion, we find no negative impact on the public interest caused by
Mishkoff's use. In fact, due to the Free Speech concerns present, we find
the potential for irreparable harm to Mishkoff more likely, and that the
public would be negatively impacted, should we not dissolve the
injunctions. See Overstreet, 305 F.3d at 578 (stating that the potential
for irreparable harm is present when it is constitutional rights that are
being enjoined); see also Connection Distrib. Co., 154 F.3d at 288
(stating that the loss of constitutional rights for even a minimal amount
of time constitutes irreparable harm).

Lastly, although no economic harm will accrue to Mishkoff should he be
prevented from maintaining his sites, there is little potential harm to
Taubman, or any other party, as well, because Mishkoff is not a
competitor in the marketplace. Accordingly, upon a balancing of the
factors for injunctive relief, we dissolve both injunctions.

3. The Safe Distance Rule

Lastly, Taubman argues that the Safe Distance Rule, a little used tenet
which pre-dates the Lanham Act by nearly twenty years, applies to bar
Mishkoff's use of Taubman's mark on his "complaint site." The Safe
Distance Rule was created to prevent known infringers from using
Page 779
trademarks whose use by non-infringers would not necessarily be
actionable. See Broderick & Bascom Rope Co. v. Manoff, 41 F.2d 353
(6th Cir. 1930). Taubman insists that since Mishkoff has infringed its
mark on his "shopsatwillowbend.com" site, the Safe Distance rule can be
invoked to curtail his use of "taubmansucks.com," even if use of
"taubmansucks.com" would not be infringing otherwise.

In Broderick, Judge Denison stated the Safe Distance Rule as follows:

[The defendants] had organized and built up a business
based upon a fraudulent appropriation of what belonged
to the plaintiff. To permit them to continue without
interruption, and to the full scope of identity
permitted to an honest competitor, would be to
preserve for them a good will acquired through fraud.
The due protection of trade-mark and similar rights
requires that a competitive business, once convicted
of unfair competition in a given particular, should
thereafter be required to keep a safe distance away
from the margin line — even if that requirement
involves a handicap as compared with those who have
not disqualified themselves.

Id. at 354.[fn5] So, in spite of Taubman's assertions otherwise, the Safe
Distance Rule is likewise founded on a likelihood of confusion standard.
The rule simply notes that once an infringer has confused the public,
that confusion is not magically remedied by a name change. Instead, the
confusion lingers, creating the need for the infringer not only to secure
a new non-infringing name (or other infringing characteristic) for his
product, but one so far removed from any characteristic of the plaintiff
so as to put the public on notice that the two are not related.

We need not find whether the Safe Distance Rule has survived the
enactment of the Lanham Act, because even if it is still good law, it
does not apply here. First, the Safe Distance Rule has only been applied
in settings where the second use was merely a slight deviation of the
first use and was also commercial. See Broderick, 41 F.2d at 353-54
(developing Safe Distance Rule in instance when infringer attempted to
change offending use from "au-tow-line" to "auto-tow-line"); Badger
Meter, Inc. v. Grinell Corp., 13 F.3d 1145, 1156 (7th Cir. 1994)
(applying Safe Distance Rule to prevent infringer from changing
infringing logo in trivial ways, because such changes would force
relitigation of essentially the same issue). The Safe Distance Rule has
never been applied when the second use is a non-commercial critical
commentary, but only where the second use is a different name for the
same product. See, e.g., Tamko Roofing Prods., Inc. v. Ideal Roofing
Co., Ltd., 282 F.3d 23, 40 (1st Cir. 2002) (applying Safe Distance Rule
where infringer simply tried to escape liability by changing infringing
"Heritage Series" to "H-Series"); Broderick, 41 F.2d at 353-54. As stated
above, the First Amendment protects Mishkoff's commentary and criticism,
and negates the Safe Distance Rule to any extent it might otherwise have
applied.

Second, the Safe Distance Rule was meant to be applied only against
proven
Page 780
infringers. See Broderick, 41 F.2d at 354 (referring only to persons
"once convicted of unfair competition"); see also, Tamko Roofing
Products, 282 F.3d at 30 (applying Safe Distance Rule only after
defendant had been found in contempt of an injunction); cf. Prince of
Peace Enters. v. Kwok Shing Import-Export Inc., No. C 94-04183, 1997 WL
475699 at *5 (July 8, 1997 N.D.Cal.) (stating that the Safe Distance Rule
does not apply where "one was not `caught' infringing a trademark").
Mishkoff has not previously been found liable of infringement, nor in
contempt of either injunction. Accordingly, our finding above that
Taubman is not likely to succeed on the merits of the
"shopsatwillowbend.com" claim precludes any further discussion of the
Safe Distance Rule.

IV. Conclusion

For the foregoing reasons, we REVERSE the decision of the district
court and dissolve both preliminary injunctions preventing Mishkoff from
using the domain name, "shopsatwillowbend.com," and the five "complaint
names" listed above.

[fn1] Since the issuance of the injunctions, Mishkoff has apparently
created a sixth "complaint site," "giffordkrassgrohsprinklesucks.com,"
referencing the law firm representing Taubman on appeal. This domain name
was not a part of the December 7, 2001 preliminary injunction order that
enjoined Mishkoff from maintaining the other "complaint names."

[fn2] Taubman sought the injunction under other claims too, including
violation of the Anti-cybersquatting Act. However, the district court
granted the injunction based only on the Lanham Act claim. Accordingly,
that is the only issue before this Court.

[fn3] Mishkoff sent a letter to Taubaman's attorneys on August 10, 2001,
referencing the removal of the shirtbiz.com link, and declaring that
Mishkoff "will not place any advertising of any kind on the site in the
future." It is unclear whether Mishkoff also removed the Webfeats link at
this time. To be clear, we also find the Webfeats link to be "use in
connection with the advertising of goods and services" which likewise
must remain removed to avoid a finding of commerciality.

[fn4] In Holiday Inns, the defendant did not actually use the plaintiff's
trademark, "Holiday," but used the most common "misspelling" of it.
Accordingly, we also found no infringement in Holiday Inns because there
was no "use" of the plaintiff's mark.

[fn5] The rule has its roots even before Broderick. In Coca Cola Co. v.
Gay-Ola Co., 200 F. 720 (6th Cir. 1912), though not referring to the Safe
Distance Rule as such, we held that a soft drink manufacturer, once found
to be infringing on Coca-Cola's trademarks, could no longer continue to
use any mark which might be found to resemble Coca-Cola — namely
unmarked red barrels. This was so even though red barrels in and of
themselves would not constitute infringement of a trademark, either in
1912 or under the Lanham Act today. But continued use of the barrels
after being found to be an infringer, would have permitted the defendant
to continue to capitalize from confusion garnered from the earlier
infringement. Id. at 723.