24 August 2005

Hallelujah! More Entertainment from across the Atlantic

I am also indebted to Mr Schwimmer's blog for the link to today's decision of the Fourth Circuit in Lamparello v Falwell and others allowing an appeal by the claimant, Christopher Lamparello against the district court judge's dismissal of his claim and judgment on the counterclaim to the defendants. The importance to this case to Americans is that it explores the interface between the right of freedom of expression guaranteed by the first amendment of their federal constitution. It is no doubt why the ACLU (American Civil Liberties Union), the Berkman Centre for Internet and Society of Harvard University and others intervened as amici.

We have had the same sort of issues here though they have been fought on different battle grounds. Since we also refer to "district" and "circuit judges", it is worth mentioning that a "district judge" and "circuit judge" in the USA are rather more grand than their namesakes here. A district judge is a judge of a federal district court which is comparable to the High Court England and Wales. The Circuit Court is a regional, federal appellate court comparable to our Court of Appeal. Indeed, the full title of the Fourth Circuit is "The United States Court of Appeals for the Fourth Circuit".

The first defendant, The Rev Dr. Jerry Falwell, is a clergyman who appears regularly on US television. He holds what Her Honour Judge Motz described as "common law trademarks" in the signs JERRY FALWELL and FALWELL. He had also registered the words LISTEN AMERICA WITH JERRY FALWELL as a registered trade mark. He has a website under the generic top level domain name which attracts an average of 9,000 hits a day.

It appears that Dr. Falwell expressed opinions on homosexuality that upset the claimant. In protest, the latter set up a spoof website under the domain name <FALLWELL.com> which criticized comprehensively Dr. Falwell's preaching. Even though the spoof site was nothing like as popular as their website, the defendants resented the claimant's. They threatened the claimant with legal proceedings. He responded by applying for a declaration of non-infringement. The defendants counterclaimed for


- trade mark infringement under 15 USC 1114;

- false designations of origin under 15 USC 1125 (a);



- unfair competition under 15 USC 1126;

- cybersquatting under 15 USC 1125 (d); and



- the Virginia law of unfair competition.


Upon applications by both parties for summary judgment, the learned district judge dismissed the claim, injuncted the claimant from using the contested domain name and ordered him to transfer it to the first defendant. The judgment is reported at 360 F. Supp. 2d 768 (E.D. Va., August 5, 2004)and a case note by Mr. Martin Samson appears on Phillips Nizer LLP's site. However, His Honour refused to award damages and costs against the claimant. Both sides appealed to the Circuit Court.

The Court of Appeals allowed the claimant's appeal on both the claim and counterclaim. Delivering judgment on behalf of the Court, Judge Motz restated the purpose of trade mark law:

"Trademark law serves the important functions of protecting product identification, providing consumer information, and encouraging the production of quality goods and services. See Qualitex Co. v. Jacobson Products. Co., 514 U.S. 159, 164 (1995). But protections "‘against unfair competition’" cannot be transformed into "‘rights to control language.’" CPC International, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000) quoting Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1710-11 (1999))."

While she expressed sympathy with submissions that the Lanham Act restricts only "commercial speech", she based her judgment on the absence of any likelihood of confusion. The defendants had argued that they were entitled to succeed on the ground that the claimant had lured traffic from their site. That contention failed because the critical element - use of the proprietor's mark to capture his customers and profits - did not apply. Finally, the complaint of cybersquatting failed because there was no evidence of bad faith. Having dismissed the counterclaim, it was not necessary for the Court to consider the defendants' cross appeal.

We have also had to explore the interface between private property rights and guarantees of freedom of expression though they have been fought on different issues. Cases that spring immediately to mind include Campbell v MGN Ltd. [2004] UKHL 22, where the right to enforce an obligation of confidence had to be weighed against the Convention right to freedom of expression, and Hyde Park Residence Ltd v Yelland and others [2000] EWCA Civ 37 (10 February 2000), where the issues were the extent of the fair dealing exception to copyright under s.30 of the Copyright, Design and Patents Act 1988 and whether there was such a thing as a public interest defence. These notions are very new to us and largely because of the importation of the European Human Rights Convention into English Law by the Human Rights Act 1998.

Despite the existence of broadly similar issues here, this case also highlights many differences, both legal and cultural, between the Americans and ourselves. These range from the notion that a minister of religion carries some kind of business that needs trade mark protection to the survival of some sort of protection for unregistered trade marks in the USA which was abolished here over a century ago. We may share a common language with the USA but we have a very different culture.

Finally, in my post below I opined that there is no such thing as a threats action in the USA. In an email Mr. Schwimmer challenged my view and very kindly drew my attention to the federal US Declaratory Judgments Act. This case, which began as an application for a declaration that the claimant's website did not infringe the defendants' trade marks, would appear to be an example of the exercise of that jurisdiction. If that is so, I would still have to say that a declaration of non-infringement is not quite the same thing as a threats action. The US statute, which applies to all litigation and not just IP claims, is much closer to s.71 of our Patents Act 1977 or even the common law remedies which are still used to check abuse of intellectual property monopolies.

Relevant Post: "Always consider the UDRP first" 31 Aug 2005

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