Faegre & Benson v. Purdy

Citation: Faegre & Benson, LLP v. Purdy, 70 U.S.P.Q.2d (BNA) 1315 (D. Minn. 2004), aff'd, 129 Fed. Appx. 323 (8th Cir. 2005); 367 F. Supp. 2d 1238 (D. Minn. 2005) (second contempt motion).

Factual Background
Plaintiffs are a law firm and several of its lawyers that represented Coca-Cola and others in Coca-Cola Co. v. Purdy, a case in which the court enjoined Purdy from registering and using domain names containing Coca-Cola's and others' marks that linked to anti-abortion websites. At issue in this decision was the defendants' registration of numerous domain names containing the plaintiff law firm's registered mark FAEGRE & BENSON, including "faegre-benson.com," "faegre-benson.org," "faegre.biz," "startribune-faegre-bensonlawfirm.com," "startribune-faegre.com," and "faegrebensonlawfirm.com." Each of the web pages at these domain names featured the law firm's trade dress and trademarks, and displayed content including color pictures of dismembered aborted fetuses.

Trial Court Proceedings
Plaintiffs sued defendants for cybersquatting as well as various state claims. Plaintiffs moved for a temporary restraining order and preliminary injunction. Defendants failed to appear at the hearing, and the court granted plaintiffs' motion. The court ruled that the law firm was likely to succeed on its cybersquatting claim because defendants registered the domain names with a bad-faith intent to profit, noting that: (a) defendants did not have any intellectual property rights in the domain names, (b) none of the names contained a name by which defendants are known, (c) defendants did not use the names for the bona fide offering of goods or services, (d) defendants registered names that are identical or confusingly similar to plaintiffs' marks, and (e) defendants intended to profit by tarnishing and diluting plaintiffs' marks and by diverting Internet traffic to defendants' web pages.

In addition, the court noted that defendants' disclaimers did not protect their conduct because the domain names diverted customers to their websites and created actionable initial-interest confusion. The individual plaintiffs were also likely to succeed on their "appropriation of name" claim under Minnesota law based on use of the attorneys' names on defendants' websites. The court thus enjoined defendants from: (a) using the domain names at issue, (b) registering or using any domain names that incorporate a mark that is identical or confusingly similar to plaintiff's marks and which does not notify users to the "protest or critical commentary nature of the site . . . within the language of the domain name itself," (c) using any trademarks or trade dress identical or confusingly similar to any of plaintiff's marks or the trade dress of plaintiff's website, and (d) transferring the domain names to anyone other than plaintiffs.

The court ordered defendants to notify all pertinent domain name registrars and ISPs of the court's order and to instruct them to take all steps necessary to stop the functioning of the disputed domain names. The court also ordered defendants to transfer to plaintiffs any domain names containing any of plaintiffs' marks or confusingly similar marks and which do not indicate the protest or critical commentary nature of the website in the domain name itself.

Regarding the domain name "faegre.biz," which defendants transferred to an individual after this suit was filed, the court ordered the registrar for this name to rescind that transfer. Finally, the court ordered defendants to pay $50 per day for each name of a person associated with plaintiff law firm that they continued to display on websites prohibited by this order.

== Appellate Court Proceedings =

On appeal, the Eight Circuit affirmed. Defendants argued that the injunction was overbroad, that his websites were non-commercial and purely critical, that there was no likelihood of confusion as to the sponsorship of his sites, and that his speech was protected by the First Amendment. The Eighth Circuit did not engage in any analysis of defendant's arguments. It simply stated that based on its review of the record below, the district court's findings, and the applicable statute and legal principles, the district court did not abuse its discretion in issuing the preliminary injunction.

The Eighth Circuit also denied plaintiffs' motion for sanctions based on defendants' frivolous appeal of a contempt order in this case despite the Eighth Circuit's dismissal of a similar appeal of defendants in the Coca-Cola case. However, the court cautioned that defendants "can not expect such forbearance in the future."

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.