Technology &
Internet Law

"Suck sites" and Trademark Infringement

The hot topic of Internet hyperlinking (the linking of one website to another without consent) came recently to be considered by the US District Court in Michigan in Ford Motors Company v 2600 Enterprises  (2001).

Ford Motors applied for a preliminary injunction to stop the defendants from automatically redirecting users from their website (www.fuckgeneralmotors.com) to the plaintiffs' official website, www.ford.com.  The defendants did not offer to sell goods or services on their websites nor did they in any way benefit commercially from their website.  The sole purpose of the website was to re-direct users who type in the URL of the defendants' website to the plaintiffs' official website.

The plaintiffs argued that by using the trademark, the defendants had diluted their trademark under the US Federal Trademark Dilution Act ('the Act') and infringed it under the US Lanham Act. In other words, they pleaded trademark infringement. Unfair competition was also alleged.  The Act provides 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 Lanham Act provides that to succeed on an infringement claim a plaintiff must show that the defendant has used the mark 'in connection with the sale, offering for sale, distribution, or advertising of any goods or services'. In respect of unfair competition, the Lanham Act provides that use 'in connection with any goods or services' is required on such a claim.

Because the defendants did not use the trademark for commercial or trade purposes, the court decided that there was no dilution or infringement of trademark, nor was there any unfair competition. It was significant that the defendants' web site, which used the 'Ford' mark, did not offer to sell goods or services at or from that website.

In coming to this decision, the court observed that it was satisfied that the defendants' use of the word 'Ford' in their programming code was non-commercial. Accordingly, its use was not actionable under the Act. If the Act'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. The court also did not believe that Congress intended the Act 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 plaintiffs to enjoin persons from linking to their web pages simply because they do not like the domain name or other content of the linking web page.

In arriving at this conclusion the District Court refused to follow the decision in the earlier case of Jews for Jesus v Brodsky (1998).  In that case, the defendant's use of the plaintiff's mark in the domain name 'jewsforjesus.com' constituted "commercial use" because the site was 'a conduit' to another of the defendant's web pages, which conducted fund raising through the sale of merchandise.  Moreover the court in that case observed 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 name of the plaintiff organization. In addition, the defendant Internet site has and will continue to inhibit the efforts of the Internet users to locate the plaintiff organization Internet site.'

A similar outcome also resulted in the US District Court of New York case of Planned Parenthood Federation of America Inc v Bucci (1997).  Indeed, the plaintiffs in the Ford case also argued that the use of the 'Ford' mark was disparaging and prevents it from fully exploiting the value of its mark, thus constituting "commercial use".

However, Judge Cleland rejected this argument (in relation to the dilution of trade mark claim) on the basis that, unlike the Ford case, in the Jews for Jesus and Planned Parenthood cases the offending sites were, firstly, linked to other sites at which goods were sold and, secondly, used the plaintiff's name in the domain name.

In respect of the trade mark infringement and unfair competition claims, the court held that - since to succeed the plaintiffs must show that the defendants had used the mark 'in connection with the sale, offering for sale, distribution, or advertising of any goods or services' - the fact that the defendants did not offer to sell goods or services at or from that website, meant that the plaintiffs could not demonstrate that that important ingredient existed.

Indeed, Judge Cleland concluded that he was:

'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.'

Ford is appealing the decision.  However, the Ford case is a very significant decision not only in respect of the US trademark law, but also Internet law, especially as it relates of linking and framing. It is, therefore, interesting to ascertain what its impact would be in the UK. In the UK trade marks law is governed by the Trade Marks Act 1994 (TMA). While there is no equivalent of the dilution rule, the TMA does provide for infringement of trademarks as well as elements of unfair competition.

The purpose of the trademarks law as it applies in the UK is to permit the protection of marks which indicate a connection between a business and its goods or services and to differentiate them from the goods and services of other businesses. Section 10(1) of the TMA provides that a 'person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.' At the core of the TMA, therefore, is the association with goods or services in the course of trade.

It is arguable, therefore, that if a case similar to the Ford case were to be litigated in the UK, the fact that the a website similar to the defendants' in the Ford case does not engage in any trading in goods or service may mean that there can no infringement of trade mark because under the UK Trademarks Act a trade mark is infringed only provided there is a nexus to goods or services in the course of trade which are similar or identical to the registered trade mark.

However, just because liability in respect of trademark infringement cannot be established against a defendant (as in the Ford case) who does not engage in trading in any goods or services, it does not mean that other legal liabilities would not arise. For one thing, such a defendant may be liability for economic torts (like wrongful interference with trade) for operating such disparaging connecting or re-directing websites.

Kaltons Solicitors, Suite 302, Spitfire Studios, 63-71 Collier Street, London, N1 9BE. Telephone +44 (0)20 7278 1817; Fax: +44 (0)207 278 1835.

© Kaltons Solicitors 2000.  All rights reserved.