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What are 'gripe sites' or 'cybergripers'?

Gripe sites are Web sites providing consumer commentary criticizing the business practices of certain companies. Many cybergriper sites contain parodies of their corporate targets. For example, a consumer who believes that “Business X” engages in unfair business practices might establish a Web site with the domain name “BusinessXsucks.com.”


Do 'gripe sites' violate federal trademark laws?

The answer depends on several factors, including whether the gripe site is engaged in commercial use of the target’s trademarked business name, or whether the gripe site owner has a bad-faith intent to profit from his or her site.

Businesses targeted by gripe sits have sued under both the Federal Trademark Dilution Act of 1996 and the Anti-Cybersquatting Law of 1998. If the gripe site is consumer commentary of a noncommercial nature, it is less likely to be violation of these federal laws, particularly the Federal Trademark Dilution Act.

Many commentators believe that gripe sites that do not engage in commerce are protected under the First Amendment. Some recent court decisions have upheld this viewpoint.

For example, in Taubman Co. v. Webfeats, the 6th U.S. Circuit Court of Appeals found that a gripe site was “purely an exhibition of Free Speech, and the Lanham Act (the major federal trademark law) is not invoked.” The appeals court explained: "We find that the domain name is a type of public expression, not different in scope than a billboard or a pulpit, and [the gripe site owner] has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it."


What is the Federal Trademark Dilution Act of 1996?

The law provides a cause of action for trademark owners if they can establish the following:

  1. They own a famous mark (determined by eight factors listed in the law).
  2. The defendant is making commercial use in interstate commerce of the plaintiff’s mark or trade name.
  3. The defendant’s use of plaintiff’s mark occurred after the mark became famous.
  4. The defendant’s use causes dilution of plaintiff’s mark by lessening the capacity of a famous mark to identify and distinguish goods or services.

The law exempts noncommercial use of trademarks. The 9th U.S. Circuit Court of Appeals explained in its 1998 decision in Bally Total Fitness Holding Corporation v. Faber that “commercial use is an essential element of any dilution claim.”

However, some courts appear to take a broad view of what constitutes commercial activity. For example, a federal district court in New York ruled in 1997 in Planned Parenthood Federation of America, Inc. v. Bucci that a radio host and anti-abortion activist who had a Web site with the domain name www.plannedparenthood.com engaged in commercial activity for several reasons. These include that fact that the radio host promoted his book on the site, solicited funds for his nonprofit political activism, and designed it to harm Planned Parenthood commercially. The court explained:

Finally, defendant’s use is commercial because of its effect on plaintiff’s activities. First, defendant has appropriated plaintiff’s mark in order to reach an audience of Internet users who want to reach plaintiff’s services and viewpoint, intercepting them and misleading them in an attempt to offer his own political message. Second, defendant’s appropriation not only provides Internet users with competing and directly opposing information, but also prevents those users from reaching plaintiff and its services and message. In that way, defendant’s use is classically competitive: he has taken plaintiff’s mark as his own in order to purvey his Internet services — his Web site — to an audience intending to access plaintiff’s services.


What is the Anti-Cybersquatting Consumer Protection Act of 1999 and does it prohibit gripe sites?

The act provides a cause of action to a trademark holder when someone registers a domain name of a well-known trademark — or something very similar to it — and then attempts to profit from it by ransoming the domain name back to the trademark holder or by using the domain name to divert business from the trademark holder to the domain-name holder. Cybersquatters buy up the domain names of well-known companies in the hopes of profiting by selling the online "real estate" back to the trademark holder. Whether a cybergriper violates the anti-cybersquatting law depends on whether the griper has a bad-faith intent to profit from the purchase of the domain name.

However, there is no per se commercial-use requirement in the anti-cybersquatting law. As the 9th Circuit recently wrote in its 2005 decision Bosley Medical Institute, Inc. v. Kremer: “Allowing a cybersquatter to register the domain name with a bad faith intent to profit but get around the law by making noncommercial use of the mark would run counter to the purpose of the act.”

The statute contains a list of nine factors that courts must consider to determine whether someone had a bad faith intent to profit. One of the relevant factors is whether the domain name holder, the alleged cybersquatter, had a “bonafide non-commercial or fair use of the mark in a site accessible under the domain name.”

Many commentators have criticized the use of the anti-cybersquatting law to cover true gripe sites developed not to profit but to release critical consumer commentary. For example, law professor Hannibal Travis writes in a 2005 article in the Virginia Journal of Law and Technology that “trademark rights should be limited to policing commercial competition, rather than non-commercial Internet speech.”



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