Federal judge sides with law firm in cybersquatting case
A Colorado man who purchased four domain names that incorporated the name of a prestigious law firm did not have a First Amendment right to do so, even though he claimed the action was undertaken as parody, a federal judge has ruled.
Morrison & Foerster LLP, a law firm with 17 offices worldwide and more than 700 attorneys, sued Brian Wick and his company American Distribution Systems, Inc. after learning that Wick had registered the following domain names:
Wick said he registered the four domain names as part of his effort to parody corporate America and large law firms in particular. The first two domain names incorporate the name of the law firm and the other two include a common misspelling of the firm’s name.
Domain name registrars do not check whether a domain name request conflicts with another’s trademark.
The law firm, which maintains an office in Denver, has its own Web site www.mofo.com and owns the registered trademark MORRISON & FOERSTER.
When the law firm attempted to register the domain names www.morrisonfoerster.com and www.morrisonandfoerster.com, it failed because Wick had already registered those names.
On March 1, the firm sued Wick in federal court under several claims, including trademark infringement and a claim under the Anticybersquatting Consumer Protection Act.
The law, passed in 1999, seeks to protect consumers and American businesses from cybersquatting — the registration of domain names of well-known trademarks by non-trademark holders who often try to profit by selling the names to the trademark owners.
The law prohibits “cyberpiracy,” which it defines in part as having a “bad faith intent to profit” from registering a protected trademark as a domain name.
On March 9, U.S. District Court Judge Lewis T. Babcock granted the law firm a temporary restraining order. On March 30, the court held a hearing, and on April 19, Babcock issued his opinion in Morrison & Foerster LLP v. Wick.
The “pivotal question,” according to Babcock, was whether Wick had a “bad faith intent to profit” from the domain names incorporating the firm’s trademark.
Wick testified that he registered numerous “parody” domain names to get back at corporate America. He testified at the March 30 hearing that at one time he had registered domain names for 7% of the Fortune 500 companies.
“I mean to be candid with you. I mean to see these people squirming around over 70 bucks, that’s enjoyable,” Wick testified. Wick paid $75 to register each of the domain names.
Babcock ruled that Wick violated the anticybersquatting law, in part because “there is no evidence of Mr. Wick’s use of any of these domain names in connection with the offering of any bona fide goods or services.”
Wick argued that he had a First Amendment defense because he was only displaying “parody” Web pages that made fun of Morrison & Foerster and of the practice of law in general.
However, Babcock disagreed, writing that Wick’s domain names did not “constitute a protectable, communicative message.”
“Mr. Wick chose to use Morrison & Foerster’s mark to deceive Internet users into believing they were accessing Morrison & Foerster’s web site,” Babcock wrote. “Such use of the mark is not protected by the First Amendment.”
Wick’s use of the law firm’s trademark “as the domain name for his web sites is more analogous to source identification than to a communicative message,” the court ruled.
Babcock also ruled that Wick “could display the content of his web pages in a different location.”
Babcock ordered Wick to forfeit his interests in the four domain names and to transfer the two domain names with the correct spelling of the law firm’s name to Morrison & Foerster.
Ronald G. Rossi, Wick’s attorney, said that his client would appeal the decision.
“We think the statute was interpreted too broadly and we think that the statute itself is overbroad,” he said. “The law expands the purpose of trademark law and allows corporate America to shut down commentary that it doesn’t like. It flies in the face of conventional parody defenses.”