10th Circuit Holds Noncommercial Use of Trademark for Parody or Criticism Not Trademark Infringement or Cybersquatting

Cybersquatting is a highly fact-based area of the law.  Sometimes the use of a trademark within a domain name, even where the trademark is fully appropriated, can be held to be a fair use.  This is especially true where a website is used to parody or criticize another.  A recent 10th Circuit decision, Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research (FAIR), held that using a trademark within a domain name for the purposes of parody and criticism, even where the site links to another commercial site, is unlikely to cause confusion under the Lanham Act.  The court also held that this use was not cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA) because the defendant did not have a bad faith intent to profit in registering and using the similar domain names.

This dispute arose out of a website created by Allen Wyatt, the vice president of FAIR, which was created to respond to criticisms of the Morman church.  In 2003, Wyatt created a website to parody the Utah Lighthouse Ministry (UTLM) and its founders Jerald and Sandra Tanner because both were critical of the Morman church.  Wyatt registered several variations of “Sara Tanner,” “Utah Lighthouse Ministry,” “Gerald Tanner,” and “Jerald Tanner” under the .org and .com top level domains.  UTH held a registered trademark in UTAH LIGHTHOUSE, but this mark was registered after Wyatt had registered the domain name at issue.  Wyatt's site did not contain a disclaimer that his parody site was not associated with FAIR and the two sites were similar in appearance.  Wyatt's site did not sell any goods or services, but it did contain a link to the FAIR website, which sells books. 

The UTLM originally claimed for trademark infringement, cybersquatting under the ACPA, unfair competition, and trademark dilution, and they later appealed to the 10th Circuit from summary judgement on their trademark infringement, unfair competition, and cybersquatting claims.  The district court had held that UTAH LIGHTHOUSE was not protectable, that Wyatt's use of the mark was not commercial, and that there was no likelihood of confusion.  UTLM had presented evidence that the mark had acquired secondary meaning by presenting evidence that it had been searched for in the Google search engine numerous times.  The court, however, held that this evidence alone was not enough.

Additionally, the court held that even though Wyatt's site contained links to a website that sold books associated with the Mormon religion, this did not bring his site into the realm of a commercial use because the sites connection to the goods sold was “too attenuated:”

UTLM argues that the use of a trademark is within the scope of the Lanham Act if the use is in connection with the trademark owner’s sale of goods or services. Such an interpretation eliminates the requirement of an economic competitor and is therefore inconsistent with the purpose of the Lanham Act “to protect the ability of consumers to distinguish among competing producers.”

Later the court said:

In our view, the defendant in a trademark infringement and unfair competition case must use the mark in connection with the goods or services of a competing producer, not merely to make a comment on the trademark owner’s goods or services.

Wyatt admitted that he selected the domain name to criticize the Tanners.  The court said that though using a mark with an intent to copy supports an inference of likelihood of confusion, Wyatt's site was a parody that was unlikely to confuse anyone because “it would be immediately apparent to anyone visiting the Wyatt website that it was not the UTLM website due to the differences in content.”  The court noted that the lengthy path that consumers have to take to get to the goods reduces the likelihood of confusion.  Further, the court found that the Wyatt domain name did not violate the Anticybersquatting Consumer Protection Act because it was not registered or used with a bad faith intent to profit because it was a parody site.  Ultimately, Wyatt prevailed under his parody theory.

If you believe that your domain name featuring parody or criticism has been wrongly targeted, please contact an attorney with experience in this area.