B. The Injunction Against the "Sucks" Site Must Be Reversed.
Taubman defends the preliminary injunction that it obtained against the "sucks" website by arguing
that the site was created to criticize its legitimate trademark lawsuit against the "shops" site,
TaubBrf. 49-50, and that as a "proven infringer" Mishkoff is not entitled to the same leniency as an
"independent third party" with no history of trademark infringement. Id. 51-52.
Even assuming that the Court upholds the preliminary injunction against the shops site (and it need
not reach the safe distance rule if it reverses that injunction), the safe distance rule does not
protect the plaintiff in a valid lawsuit against being criticized publicly on the Internet. A
defendant's right to protest the administration of justice does not depend on whether the underlying
lawsuit is justified, or on whether the defendant's criticisms are wise or foolish. Cf. In re
Snyder, 472 US 634, 646-647 (1985). Where the contents of the criticism are neither false nor
otherwise improper - and the court below flatly rejected Taubman's arguments in that regard, REN40 at
10, JA179 - the proper response to critical speech is not a lawsuit, it is more speech, such as
Taubman's explanation why its actions were justified:
The main remedy of the trademark owner is not an injunction to suppress the message, but a rebuttal
to the message. As Justice Brandeis long ago stated, "If there be time to expose through discussion
the falsehoods and fallacies, to avert the evil by the process of education, the remedy to be applied
is more speech, not enforced silence."
5 McCarthy on Trademarks, § 31:148 at 31-216 (4th ed. 1999).
Taubman never addresses Mishkoff's argument that every single case applying the "safe distance
rule" did so following a final judgment of infringement, and involved minor variations on the names
already found to be infringing rather than direct criticisms. MishBrf. 53-54. Indeed, the two "safe
distance" cases cited at page 52 of Taubman's brief involved post-judgment changes made by defendants
that were characterized by those courts as contumacious defiance of the decree, reasoning that does
not apply here because both the domain names and the "sucks" website were created in reaction to the
lawsuit, but before the first preliminary injunction was entered. REN 26, Affidavit at 2 ¶ 7,
JA163.
Taubman also invokes two cases where courts rejected First Amendment defenses put forward by
defendants who posted supposed "protest" sites after they were sued over certain domain names.
TaubBrf. 53-54, citing Gallo Winery v. Spider Webs, 286 F3d 270 (CA5 2002); Shields v.
Zuccarini, 254 F3d 476 (CA3 2001). However, neither Shields nor Gallo supports the
preliminary injunction here. Neither has any bearing on the "safe distance" rule, which was the only
basis on which the second injunction was either sought or granted. Both were filed against true
"cybersquatters" who had registered thousands of domain names, many of them identical to various
famous trademarks, but had never established any websites related to the names. Instead, they had
tried to extort money from the trademark holders to buy the names (or, in the Gallo case, had
acknowledged their intent to do this). Only after they were sued did these defendants establish what
purported to be "protest sites" at the very domain names at issue in the case. The courts found that
the sites had not been established in good faith, but simply to perpetrate the extortionate activity
in which the defendants had previously been engaged, and refused to accept the post-hoc web sites as
establishing the bona fides of the original domain name registrations. Neither case involved "sucks"
domain names, and the Gallo court expressly recognized that the defendant might have a
legitimate use for a domain name incorporating the trademark. 286 F3d at 280. Thus, these cases stand
only for the proposition that the subsequent erection of protest sites will not avoid a judgment of
cybersquatting.
By contrast, Mishkoff's original website was devoted to The Shops at Willow Bend, and neither the
appellate record, nor the arguments below, nor the decision under appeal even hint that Mishkoff
sought to be paid for registering that name. When he was sued, he registered new domain names
for the purposes of criticism, not to extort payment but to embarrass the plaintiff into dropping its
suit. The names embodied words of criticism, and he mounted a protest site, whose contents at the time
of the injunction are on the CD in the Joint Appendix, at those addresses. The First Amendment
protects both the sites and the names.
