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 Civil Action No. 01-72987
 Honorable Lawrence P. Zatkoff
WEBFEATS and HENRY MISHKOFF, Magistrate Judge Komives


Timing of Websites' Operation

Plaintiff claims that Defendants' websites were made operational subsequent to the entry of the preliminary restraining order entered by the Court earlier in these proceedings. Plaintiff makes this claim in an attempt to show that Defendants are demonstrating contempt for the authority of the Court. Plaintiff's claim is misleading, at best.

The Court's preliminary restraining order was entered on October 11, 2001. Defendants' websites became operational on October 12, 2001. (Exhibit A is a partial directory listing showing that the site was set up on a webserver at 5:38 PM on October 12, 2001.) At a glance, this sequence of events would seem to confirm Plaintiff's contention. However, Plaintiff is well aware that Defendants did not receive the Court's order until October 13, 2001, because Plaintiff's own copy of the Court's order was not delivered until that date, and Plaintiff's location is considerably closer to the Court than Defendants' location.

Plaintiff may be technically correct that Defendants' websites became operational after the Court's order was entered. However, Plaintiff neglects to mention that the websites became operational before either Plaintiff or Defendant could possibly have been aware that the Court's order had been entered, which completely invalidates the point that Plaintiff is trying to make.

"Proven Infringers"?

As it happens, the timing of the operation of Defendants' websites is irrelevant.

In its brief, Plaintiff discusses the timing of Defendants' websites as evidence that Defendants are "demonstrat[ing] contempt not only for the trademark rights of Plaintiff but for the Court's authority as well." However, the authorities cited by Plaintiff to make this argument all apply only to "proven infringer[s]." For example, quoting from Plaintiff's brief:

  • "It has been held that a trademark infringer 'should have its conduct carefully scrutinized in future use...'"

  • "As the Sixth Circuit has held, permitting a proven infringer to continue business..."

  • "Plaintiff respectfully submits that, as infringers, Defendants have no right to continue to operate any website..."

However, Defendants have never been held to be infringers in any proceedings, so these arguments (which comprise the major portion of Plaintiff's brief) are irrelevant. Referring to Defendants as "proven" infringers is blatantly false, as Defendants are merely alleged infringers at this time. The Court's order did not even hint that Defendants might be infringers or that Plaintiffs had any greater likelihood of success in this action than Defendants. On the contrary, the order was issued strictly on the basis that Defendants would be less likely to suffer harm than would Plaintiffs.

"Slight Change in Mark"?

Plaintiff's arguments in relation to the timing of the operation of Defendants' websites and the additional requirements imposed on "proven" infringers are advanced to further the argument that Defendants should not be able to proceed with only "a slight change in its mark."

Plaintiff offers no authority or evidence to support its contention that attaching "sucks.com" to a mark constitutes only a slight change. This is because that argument has already been definitively rejected. In Bally Total Fitness Holding Corporation v. Andrew S. Faber, 29 F. Supp. 2d 1161 (C.D.Cal., Nov. 23, 1998), the Court said:

    "Bally argues that the marks are identical. Bally argues that the only difference between the marks is that Faber attached the word "sucks" to Bally's marks. Bally argues that this is a minor difference.

    "'Sucks' has entered the vernacular as a word loaded with criticism. ... Therefore, the attachment cannot be considered a minor change."

To the best of Defendants' knowledge, Bally is the only "sucks.com" case that has ever been decided under the Lanham Act. Therefore, Plaintiff's contention is incorrect.

No Evidence of Trademark

In its brief, Plaintiff lists several of Defendants' domain names and websites that Plaintiff claims are in violation of Plaintiff's marks. Plaintiff states:

    "Defendants have been using numerous additional websites, all incorporating Plaintiff's marks."

However, despite Plaintiff's emphasis, Plaintiff has introduced no evidence to support its contention it has any rights to all of these domain names or websites. In fact, most of the domain names and websites are very dissimilar to Plaintiff's mark, and do not incorporate its mark in any way. For example:

  • willowbendsucks.com: "Willow Bend" is a geographical area in Plano, Texas. Many businesses in that area incorporate "Willow Bend" into their business names. (There are probably hundreds of such businesses, including shopping centers that complete with Plaintiff's mall. Exhibit B lists a sample of such business names.) And yet Plaintiff claims that it has some kind of proprietary interest in the domain name willowbendsucks.com. Plaintiff provides no evidence for this contention because the contention is false.

  • willowbendmallsucks.com: The name of Plaintiff's property is "The Shops at Willow Bend," which is also Plaintiff's mark. Plaintiff has submitted no evidence that "Willow Bend Mall" is also its mark (and Defendants have no reason to believe that it is). Therefore, Plaintiff's claim that it has some kind of proprietary interest in the domain name willowbendmallsucks.com is entirely unsupported.

  • taubmansucks.com: Plaintiff has submitted no evidence that "Taubman" is its mark. Therefore, Plaintiff's claim that it has a proprietary interest in the domain name taubmansucks.com is unsupported at this time.

No Evidence of Confusion

As Plaintiff stated in an earlier motion, one of the key elements that has been held to be imperative to prove trademark infringement is that there must exist a high probability that consumers will confuse Plaintiff's mark with Defendants' representation. But in Bally Total Fitness Holding Corporation v. Andrew S. Faber, 29 F. Supp. 2d 1161 (C.D.Cal., Nov. 23, 1998), the only Lanham Act case involving a "sucks.com" website, the Court ruled in favor of the Defendant's "sucks.com" site, finding that "the reasonably prudent user would not mistake Faber's site for Bally's official site. "

Defamation and Confidentiality

Plaintiff claims the Defendants' "sites are being used for purposes of publishing defamatory and/or confidential/privileged settlement information relating to this case." Plaintiff offers no supporting evidence for this claim. In fact:

  • The material at Defendants' websites is strictly factual, and is supported by copious documentation. Plaintiff may have defamed itself through its actions, but Plaintiff is not being defamed by Defendants' recounting of those actions.

  • Defendants are not aware of publishing any confidential or privileged information. If, indeed, any such information has been published, it has been through an honest error. (If Plaintiff wished any of its communications with Defendants to be held as confidential, Plaintiff had only to notify Defendants of its wishes.) However, Plaintiff has not informed Defendants that any material on Defendants' website is confidential, preferring to make unsubstantiated accusations in its brief.

If Plaintiff believes that it has been defamed or that its confidentiality has been violated, it should initiate proceedings against Defendants and make its case. However, these claims of defamation and confidentiality are irrelevant to these proceedings, and are being advanced solely in an attempt to confuse the issue at hand.

Defendants' Defense

Because Defendants' websites do not infringe on Plaintiff's mark, the Court cannot harm Plaintiff by rejecting Plaintiff's motion.

However, if the Court grants Plaintiff's motion, Defendants will suffer devastating and irreparable harm.

As Defendants' websites are non-commercial, Defendants will not be harmed in a financial sense. Rather, Defendants will be harmed in a way that is considerably more basic in nature, and in a way that dwarfs any mere monetary consideration.

If the court grants Plaintiff's motion, Defendants will suffer grievous harm to their ability to defend themselves from Plaintiff's action.

Defendants are defending themselves because they lack the resources to secure legal representation. Defendants are aware of the dangers and ill-advisability of self-representation, but Defendants have no other viable option. Defendants recognize the enormity of the task they are undertaking, but they are undaunted, because they have faith in the inherent fairness of the American system of civil justice.

Having said that, Defendants do understand that they are operating under a severe disadvantage in attempting to stand their ground against not only Plaintiff (a major corporation) but Plaintiff's law firm as well. Defendants believe that the only possible way in which they might have a chance to prevail against Plaintiff is to use the power of the Internet and the World Wide Web to publicize, and to seek support for, their situation.

The Web has been popular for only a few years, but "sucks.com" complaint websites have already become the established method for individuals to rally public support in their battles against organizations that can marshal resources well beyond the capacity of most individuals. This use of "sucks.com" websites has been challenged by organizations that have been the subjects of these complaint websites, and the courts have supported the free-speech rights of individuals to use these websites to complain. And the courts have specifically supported these free-speech rights as superceding whatever intellectual property rights the organizations may appear to have in the "sucks.com" domain names.

In the short time that Defendants' websites have been online, Defendants have already received a great deal of valuable support and advice from the Internet community. This litigation has become a topic of discussion all over the Internet, which would not have been possible without Defendants' websites.

To deprive Defendants of these websites would be to deprive Defendants of the ability to defend themselves. This, of course, is exactly why Plaintiffs, in spite of weak or no evidence or supporting authority, have asked the Court to order Defendants to remove their websites from the Internet.

Proposed Order

Plaintiff's "Proposed Order" is confusing. Several aspects of Plaintiff's "Proposed Order" are difficult to interpret. For example:

  • Plaintiff uses the term "domain name" in ways that do not fit the technical definition of that term, making it difficult to understand the exact meaning of the "Proposed Order."

  • Plaintiff claims that its list of domain names incorporates its mark, but several of the names in that list appear to bear very little relation to that mark.

  • Plaintiff's list of domain names in its "Proposed Order" differs from the list of domain names that appears in Plaintiff's motion.

  • Plaintiff's list of domain names in its "Proposed Order" includes duplications.

If Plaintiff's "Proposed Order" were to be entered by the Court, Defendants would have difficulty in knowing with any certainty what actions they would be required to perform (and from what actions they would be required to abstain) in order to comply with the order.


Most of Plaintiff's brief is irrelevant, some of Plaintiff's brief is misleading, and some of Plaintiff's brief is inaccurate.

Plaintiff has failed to submit any evidence that it has any trademark interest in most of the websites is seeks to have removed.

Plaintiff has made claims that have already been definitively repudiated in court, and has submitted no authority to support its unsubstantiated conclusions.

Plaintiff has failed to submit evidence that real or potential confusion exists between its mark and Defendants' websites, because no such confusion exists.

Plaintiff has failed to claim that its mark is being harmed by Defendants' websites, because Plaintiff's mark is not being harmed by Defendants' websites.

Plaintiff will not be harmed if its motion is not granted.

Defendants will be grievously and irreparably harmed if Plaintiff's motion is granted.

Therefore, Defendants' respectfully request that the Court reject Plaintiff's motion to amend the Court's preliminary injunction.

Respectfully submitted,

Henry Mishkoff
2661 Midway Road, #224-225
Carrollton, TX 75006


Dated: October 25, 2001

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