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Gripe website wins trade mark suit

A US Appeals Court has found that a website using the domain name fallwell.com, set up to criticise evangelist Jerry Falwell, did not violate trade mark laws. There was no likelihood of confusion, ruled the Court.25 Aug 2005

Christopher Lamparello, a gay rights activist, set up his site in order to criticise Reverend Falwell’s views on homosexuality. The site also contains clear statements that it is in no way affiliated to Falwell or his ministries.

Reverend Falwell took objection to Lamparello's use of the name Fallwell – a satirical misspelling of his own – and sued in 2003. Such disputes are often characterised as 'typosquatting', but this case also focused on Lamparello’s supposed violation of Falwell’s trade mark rights in the name.

Judge Claude Hilton of the Alexandria District Court ruled in August 2004 that the domain was indeed very similar to Falwell's registered trade mark in the term "Jerry Falwell" and that it might confuse web users. However, the judge stayed an injunction awarded against Lamparello until his appeal to the 4th Circuit Court of Appeals had been heard.

The American Civil Liberties Union (ACLU) and its Virginia branch submitted briefs to the 4th Circuit in support of Lamparello, arguing that he has a free speech right to use the domain name in that it is descriptive of content, like a film or book title.

In a ruling issued on Wednesday, the 4th Circuit found in favour of Lamparello, holding that the domain name fallwell.com does not violate trade mark law because it is not a confusing use of Falwell’s trade mark.

“Although Lamparello and Reverend Falwell employ similar marks online, Lamparello’s website looks nothing like Reverend Falwell’s; indeed, Lamparello has made no attempt to imitate Reverend Falwell’s website,” wrote Judge Diana Motz, giving the unanimous opinion of the Court.

“After even a quick glance at the content of the website at www.fallwell.com, no one seeking Reverend Falwell’s guidance would be misled by the domain name – www.fallwell.com – into believing that Reverend Falwell authorised the content of that website,” she added.

Falwell had argued that the domain was infringing because the misspelling would lure browsers onto Lamparello’s site, but the Court held that it was the context in which the mark was seen that was important – i.e. the content of the site.

From a cybersquatting point of view the case failed too, said the Court, because Falwell had failed to show that Lamparello had a “bad faith intent” to profit from his use of the domain. Instead he had created a gripe site, designed to criticise Falwell.

“The result proves this is still America,'' Lamparello told the Associated Press. “Just because someone who's a lot more powerful than I am demands that I do something doesn't mean I should do it.''

“This decision is a victory for free speech on the internet,” said ACLU of Virginia executive director Kent Willis. “The internet provides unique opportunities for ordinary citizens to speak to a world-wide audience on matters of public concern. Trade mark law must not be used to inhibit the freedom of speech in this powerful and important medium.”

According to the Associated Press, Falwell will appeal.

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