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Wyatt Website a Successful Parody of UTLM’s Website, Tenth Circuit Rules
Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research (FAIR), et al.
No. 07-4095, Court of Appeals for the Tenth Circuit, 05/29/2008
Companies Mentioned: Discovery Computing, Inc., Foundation for Apologetic Information & Research, Utah Lighthouse Ministry
Holding
The Court of Appeals for the Tenth Circuit affirmed a district court’s dismissal of a trademark infringement and cybersquatting suit filed by Utah Lighthouse Ministry (“UTLM”) against a parody website established by defendants-appellees Foundation for Apologetic Information and Research (“FAIR”) and Allen Wyatt (“Wyatt”). Wyatt’s website parodied that of UTLM, offering similar online publication regarding the Church of Jesus Christ of Latter-Day Saints and using UTLM’s unregistered mark “Utah Lighthouse.” Despite these similarities, the Tenth Circuit found in favor of defendants-appellees holding that UTLM failed to prove that the UTAH LIGHTHOUSE mark was protectable and that Wyatt’s use was in connection with any goods or services. Additionally, because there were sufficient differences between the content and style of the two websites to avoid the possibility of confusion, the district court properly determined that Wyatt’s website was a successful parody. On the charge that defendants-appellants violated the Anti-Cybersquatting Protection Act (“ACPA”), 15 U.S.C. § 1125(d), the Tenth Circuit again ruled in favor of defendants-appellees, stating that that they lacked a bad faith intent to profit from the use of UTLM’s trademark in several domain names linked with their website.
Detailed Summary
Jerald and Sandra Tanner established UTLM in 1982 to critique the Church of Jesus Christ of Latter-day Saints (LDS Church). In addition to that mission, UTLM was engaged in the sale of books at its bookstore in Utah and through the official UTLM website, www.utlm.org. Similarly, defendant-appellee FAIR is a volunteer organization that responds to criticisms of the LDS Church, while operating a similar online bookstore through the official FAIR website. Both FAIR and UTLM offers online publications regarding the LDS Church, including approximately thirty titles offered through both parties’ websites.
Wyatt is FAIR’s vice-president and webmaster. In November 2003, Wyatt created a website parodying the UTLM website (“Wyatt website”). The Wyatt website is similar in appearance but has different, though suggestively parallel, content.
UTLM filed this appeal from a decision of the U.S. District Court for the District of Utah granting defendants’ motion for summary judgment on UTLM’s claims of trademark infringement, unfair competition, and cybersquatting against defendants’ website.
In ruling against UTLM, the district court made a comparison of the design and content of the Wyatt and UTLM websites (Mem. Decision & Order at 3–4). The district court found their respective design elements to be similar, including the image of a lighthouse with black and white barbershop stripes. However, the words “Destroy, Mislead, and Deceive” were written across the stripes on the Wyatt website. Prominent text on the Wyatt website consisted of a slight modification of the language located in a similar position on the UTLM website. For example, the UTLM website stated: “Welcome to the Official Website of the Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner.” But the Wyatt website stated: “Welcome to an official website about the Utah Lighthouse Ministry, which was founded by Jerald and Sandra Tanner.” The Wyatt website did not have any kind of disclaimer that it is not associated with UTLM. The Wyatt website contained no advertising and offers no goods or services for sale. Id.
The district court found that the mark UTAH LIGHTHOUSE was not protectable, that FAIR’s use of the mark was not commercial, and that there was no likelihood of confusion. Id.,p. 8.
UTLM argued to the district court that the mark UTAH LIGHTHOUSE was entitled to a presumption of protectability because it was a registered mark. Opinion, p. 8, citing Appellees’ Suppl. App. at 25. The district court rejected this argument on the ground that UTAH LIGHTHOUSE was not registered at the time the lawsuit was filed, and therefore was not entitled to a presumption of validity under 15 U.S.C. § 1115(a). Id., citing Mem. Decision & Order at 14. Second, the district court held that UTLM had failed to show that any of its trademarks had acquired secondary meaning. Id.
In sustaining the foregoing findings of the district court, the Tenth Circuit held that the number of search engine hits, standing alone, was inadequate to demonstrate that consumers associated the mark with a particular product or producer, or perceived UTAH LIGHTHOUSE as a distinctive mark. Citing the ruling it had laid down in Vail Assocs. v. Vend-Tel-Co., Ltd., 516 F.3d 853, 867 n.12 (10th Cir. 2008), the Tenth Circuit further held that the number of search engine “hits” would support UTLM’s claim of secondary meaning only if accompanied by some kind of evidence that the relevant market of consumers had visited the websites containing these hits. There was therefore insufficient evidence to enable a reasonable jury to find that the UTAH LIGHTHOUSE mark had acquired a secondary meaning. Id., p. 10.
With regard to the matter of commercial use requirement under the Lanham Act Lanham Act (5 U. S.C. § 1125(a)(1), UTLM asserted that FAIR’s use was commercial on three grounds: first, the Wyatt website hyperlinked to a website that sold goods off of the FAIR website; second, the Wyatt website interfered with the ability of users to reach the goods and services offered on the UTLM website; and third, the overall commercial nature of the Internet rendered the website itself a commercial use.
The Tenth Circuit rejected this argument, and affirmed the district court’s holding that the Wyatt website was not a commercial use because it “provided no goods or services, earned no revenue, and had no direct links to any commercial sites.” Opinion, p. 13, citing Mem. Decision & Order at 11.
According to the Tenth Circuit, the Lanham Act addresses the specific problem of consumer confusion about the source of goods and services created by the unauthorized use of trademarks. Id., p.15, citing Prestonettes, Inc. v. Coty, 264 U.S. 359. Hence, unless there is a competing good or service labeled or associated with the plaintiff’s trademark, the concerns of the Lanham Act could not be properly invoked in this case. Id., citing Lang v. Ret. Living Publ’g Co., Inc., 949 F.2d 576, 582–83 (2nd Cir. 1991).
With regard to the factor of likelihood of confusion, the Tenth Circuit similarly found that it weighed in favor of defendants-appellants. In so ruling, it applied the six-factor test in which the court considers: (1) the degree of similarity between the marks; (2) the intent of the alleged infringer in using the mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. Opinion, p. 18, citing Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir.2002).
On balance, these six Sally Beauty Co. factors weighed against a finding of likelihood of confusion. Although there was no likelihood of confusion based on this conventional analysis, the fact that the Wyatt website was a parody provided an even more convincing explanation of why consumers were unlikely to be confused. Id., p. 22.
It would be immediately apparent to anyone visiting the Wyatt website that it was not the UTLM website due to the differences in content. And because there were sufficient differences between the content and style of the two websites to avoid the possibility of confusion, the district court properly determined that the Wyatt website was a successful parody. Id. A parody adopts some features of the original mark, but relies upon a difference from the original mark to produce its desired effect. Id., p. 23, citing Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir. 1987).
In sum, because UTLM failed to produce sufficient evidence to support a finding by a rational jury that UTAH LIGHTHOUSE was protectable, that defendants’ use was in connection with any goods or services, and that defendants’ use was likely to cause confusion among consumers as to the source of the goods sold on the FAIR online bookstore, the district court did not err in dismissing UTLM’s claim of trademark infringement.
On the charge that defendants-appellees violated the Anti-Cybersquatting Protection Act (“ACPA”), 15 U.S.C. § 1125(d), the Tenth Circuit likewise affirmed the findings of the district court, and found in favor of defendants-appellees. In particular, defendants lacked a bad faith intent to profit from the use of UTLM’s trademark in several domain names linked with the Wyatt website. In addition, the ACPA contains a “safe harbor” provision, which precludes a finding of bad faith intent if “the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.” 15 U.S.C. § 1125(d)(1)(B)(ii). Opinion, p. 27. Applying the same burden of proof to the likelihood of confusion in the context of cybersquatting, the Tenth Circuit concluded that UTLM failed to raise a genuine issue of material fact as to defendants’ intent to cause confusion about the source of the Wyatt website as a means of harming the goodwill of the UTAH LIGHTHOUSE mark. Id..
On the basis of the foregoing analysis, the district court did not err in granting defendants’ summary judgment on trademark infringement and cybersquatting claims.
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