Trademark Law and Practice, Pages 258–266

Lamparello v. Falwell

United States Court of Appeals for the Fourth Circuit, 2005

Facts:

Reverend Falwell was a prominent pastor with common law trademarks on both his full and last names. His personal website was "falwell.com". Lamparello created a site with the domain name "fallwell.com"—with an extra l—to criticize Reverend Falwell for his beliefs about homosexuality. While he once linked to a book he favored, Lamparello never sold anything on his site. It only received 200 hits per day and did not measurably impact traffic to Reverend Falwell's site.

Nonetheless, Reverend Falwell sent Lamparello cease-and-desist letters, Lamparello eventually filed suit for a declaratory judgment of noninfringement, and Reverend Falwell counterclaimed for trademark infringement, false designnation of origin, unfair competition, and cybersquatting.

Procedural History:

District court granted summary judgment to Reverend Falwell, enjoined Lamparello from using his mark on the site, and required Lamparello to transfer the domain to Reverend Falwell.

Issues:

  • Did Lamparello's criticism site with Reverend Falwell's name infringe on his trademark?

  • Did Lamparello's actions constitute cybersquatting?

Reasoning:

Trademark law is designed to protect product identification. It cannot be transformed into the right to control language. Lamparello contends that trademark infringement and false designation should only apply to commercial speech, but this raises more problems, goes against precedent, and is unnecessary in this case because no likelihood of confusion exists.

Reverend Falwell's mark is distinctive, and Lamparello's mark resembles it, but the two sites look nothing alike once one visits them and they espouse contradictory views. Lamparello does not conduct or advertise business on his site; his intent was solely to criticize Reverend Falwell. No one would confuse a site mocking Reverend Falwell for that of Reverend Falwell himself.

Reverend Falwell also argues that initial interest confusion applies here. However, that doctrine has not been adopted in this district. Even if it had been, other jurisdictions require that it be for the purpose of stealing business away, which does not apply here.

Finally, Reverend Falwell's cybersquatting claim must be evaluated. This claim requires that Reverend Falwell show that Lamparello "had a bad faith intent to profit from using the domain name," and that the domain name "is identical or confusingly similar to, or dilutive of, the distinctive and famous [Falwell] mark." In determining bad faith, nine factors are used. The first four suggest circumstances that indicate no bad-faith intent to profit, while the others suggest such intent does exist. However these factors are a loose guide and need not be strictly applied.

Here it is it obvious that it cannot be shown Lamparello had a bad faith intent to profit from his domain. He just bought it to criticize Reverend Falwell, and criticism is a bona fide noncommercial or fair use. Him linking the book does not change this. He did not make money off the book, and criticism for profit does not evidence a bad faith intent to profit. The factors themselves do find against a bad faith intent to profit as well. Since Lamparello did not have a bad faith intent to profit, his actions do not constitute cybersquatting.

Holding:

No, it did not infringe on Reverend Falwell's trademark and did not constitute cybersquatting. Reversed and remanded for entry of summary judgment for Lamparello.

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