UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
March 19, 1997, Decided
Plaintiff Planned Parenthood Federation of America, Inc. ("Planned Parenthood") has moved to preliminarily enjoin defendant Richard Bucci ("Bucci"), doing business as Catholic Radio, from using the domain name "plannedparenthood.com," and from identifying his web site on the Internet under the name "www. planned parenthood. com. " The Court held a hearing on February 20, 1997 and February 21, 1997, and now issues the preliminary injunction sought by Planned Parenthood.
The parties do not dispute the following facts. Plaintiff Planned Parenthood, founded in 1922, is a non-profit, reproductive health care organization that has used its present name since 1942. Plaintiff registered the stylized service mark "Planned Parenthood" on the Principal Register of the United States Patent and Trademark Office on June 28, 1955, and registered the block service mark "Planned Parenthood" on the Principal Register of the United States Patent and Trademark Office on September 9, 1975. Plaintiffs 146 separately incorporated affiliates, in 48 states and the District of Columbia, are licensed to use the mark "Planned Parenthood." Plaintiff expends a considerable sum of money in promoting and advertising its services. The mark "Planned Parenthood" is strong and incontestable.
Plaintiff operates a web site at "www. ppfa. org," using the domain name "ppfa. org. " Plaintiff s home page offers Internet users resources regarding sexual and reproductive health, contraception and family planning, pregnancy, sexually transmitted diseases, and abortion, as well as providing links to other relevant web sites. In addition, plaintiffs home page offers Internet users suggestions on how to get involved with plaintiffs mission and solicits contributions.
Defendant Bucci is the host of "Catholic Radio," a daily radio program broadcast on the VTVOA radio station in Syracuse, New York. Bucci is an active participant in the anti-abortion movement. Bucci operates web sites at "www.catholicradio.com" and at "lambsoftrist.com." On August 28, 1996, Bucci registered the domain name "plannedparenthood.com" with Network Solutions, Inc. ("NSI"), a corporation that administers the assignment of domain names on the Internet. After registering the domain name, Bucci set up a web site and home page on the Internet at the address "www.plannedparenthood.com."
Internet users who type in the address "www.plannedparenthood. corn," or who use a search engine such as Yahoo or Lycos to find web sites containing the term "planned parenthood," can reach Bucci's web site and home page. Once a user accesses Bucci's home page, she sees on the computer screen the words "Welcome to the PLANNED PARENTHOOD HOME PAGE!" n3 These words appear on the screen first, because the text of a home page downloads from top to bottom. Once the whole home page has loaded, the user sees a scanned image of the cover of a book entitled The Cost of Abortion, by Lawrence Roberge ("Roberge"), under which appear several links: "Foreword," "Afterword," "About the Author," "Book Review," and "Biography."
After clicking on a link, the user accesses text related to that link. By clicking on "Foreword" or "Afterword," the Internet user simply accesses the foreword or afterword of the book The Cost of Abortion. That text eventually reveals that The Cost of Abortion is an anti-abortion book. The text entitled "About the Author" contains the curriculum vitae of author Roberge. It also notes that "Mr. Roberge is available for interview and speaking engagements," and provides his telephone number. The "Book Review" link brings the Internet user to a selection of quotations by various people endorsing The Cost of Abortion. Those quotations include exhortations to read the book and obtain the book. "Biography" offers more information about Roberge's background.
The parties dispute defendant's motive in choosing plaintiffs mark as his domain name. Plaintiff alleges that defendant used plaintiffs mark with the "specific intent to damage Planned Parenthood's reputation and to confuse unwitting users of the Internet." Discussing the difference between the domain name at issue here and defendant's other web sites, defendant's counsel states that "the V;WWPLANNNEDPARENTHOOD.COM [sic] website ... enables Defendant's message to reach a broader audience." Defendant's counsel made the following statement to the Court regarding defendant's use of plaintiffs mark to designate his web site:
My belief is that it was intended to reach people who would be sympathetic to the proabortion position .... It is an effort to get the ... political and social message to people we might not have been otherwise able to reach. I think it's analogous to putting an advertisement in the New York Times rather than The National Review. You are more likely to get people who are sympathetic to the proabortion position, and that's who you want to reach. I believe that is exactly what Mr. Bucci did when he selected Planned Parenthood.
Defendant did not dispute that his counsel was correct in that statement. Defendant's counsel also admitted that Bucci was trying to reach Internet users who thought, in accessing his web site, that they would be getting information from plaintiff.
Defendant stated that his motive in using plaintiffs mark as his domain name was "to reach, primarily, Catholics that are disobedient to the natural law." In an affidavit submitted to the Court, defendant stated that he wanted his "anti-abortion message to reach as many people as possible, and particularly the people who do not think that abortion has an inimical effect on society." Defendant conceded that he was aware that by using plaintiffs mark to identify his web site, he was likely to draw in Internet users who are "pro-abortion. " Defendant demonstrated fun knowledge of plaintiffs name and activities, and admitted to an understanding that using plaintiffs mark as his domain name would attract "pro-abortion" Internet users to his web site because of their misapprehension as to the site's origin. I therefore now make the factual finding that defendant's motive in choosing plaintiffs mark as his domain name was, at least in part, to attract to his home page Internet users who sought plaintiffs home page.
Standard for Preliminary Injunction
In order to obtain a preliminary injunction, a movant must demonstrate "(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary injunction." In cases brought under the Lanham Act, a showing of likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm, once the plaintiff has established that it has a protectible mark. Id. at 73. Because defendant concedes that plaintiffs mark is protectible, the inquiry before me is twofold: (1) whether the Lanham Act is applicable here, and (2) is there a likelihood of confusion? I now address these questions....
B. Whether the Lanham Act is Applicable
Defendant argues that his use of plaintiffs mark cannot be reached under the Lanham Act because it is non-commercial speech. Section 1114 of the Lanham Act forbids a party to "use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. "
As a preliminary matter, I note that although the parties agreed at a hearing before me on February 21, 1997 that defendant's use of plaintiffs mark is "in commerce" within the meaning of the Lanham Act, defendant now argues that his activities are not subject to the Lanham Act because they are not "in commerce." I find this argument meritless. The "use in commerce" requirement of the Lanham Act is a jurisdictional predicate to any law passed by Congress. It is well settled that the scope of "in commerce" as a jurisdictional predicate of the Lanham Act is broad and has a sweeping reach. The activity involved in this action meets the "in commerce" standard.
Notwithstanding its jurisdictional "in commerce" requirement, Section 1114 contains no commercial activity requirement; rather, it prohibits any person from, without consent of the registrant of a mark, using the mark "in connection with the sale, offering for sale, distribution, or advertising of any good or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive." The question the Court must decide, then, is whether defendant's use of plaintiffs mark is properly viewed as in connection with the distribution or advertising of goods or services.
Defendant's use of plaintiff s mark satisfies the requirement of @ 1114 in a variety of ways. First, defendant has stated that he chose to place materials about The Cost of Abortion on the "www.plannedparenthood.com" web site because he wanted to help Roberge "plug" his book. In addition, defendant agreed that he, by this activity, was helping the author sell his book. Id. at 30. Although defendant receives no money from any sales of the book that result from its exposure on his home page, there is no personal profit requirement in @ 1114. The materials on the home page, which are similar to a publisher's publicity kit, certainly relate to the advertisement and distribution of The Cost of Abortion.
Second, defendant's home page is merely one portion of his, and Catholic Radio's, broader effort to educate Catholics about the anti-abortion movement. With respect to that effort, defendant solicits funds and encourages supporters to join him in his protest activities.
I therefore determine that @ 1114, @ 1125(c), and @ 1125(a)(I)(a) of the Lanham Act are applicable here. I turn now to whether defendant's use of plaintiffs mark results in a likelihood of confusion.
C. The Likelihood of Confusion
1. The Polaroid Factors
The Second Circuit set out the factors a court must consider in determining the likelihood of consumer confusion in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Those factors include: the strength of plaintiffs mark, the degree of similarity between the two marks, the competitive proximity of the products or services, the likelihood that the plaintiff will bridge the gap between the two markets, the existence of actual confusion, the defendant's good faith in adopting the mark, the quality of the defendant's product, and the sophistication of the purchasers.
a. The Strength of the Mark
The strength of plaintiffs mark is conceded by defendant, which is reasonable in fight of plaintiffs trademark registration of the mark and plaintiffs continued use of the mark for over 50 years. The strength of plaintiffs mark weighs in favor of likelihood of confusion.
b. The Degree of Similarity Between the Marks
The two marks, "Planned Parenthood" and "plannedparenthood.com" are nearly identical; the only distinctions are the latter's lack of initial capitalization, the lack of a space between words, and the ".com" that is necessary to designate a domain name. The degree of similarity between defendant's domain name and the domain name owned by plaintiffs affiliate, Planned Parenthood of Houston, "plannedparenthood.org," is even stronger. Plaintiff was originally under the impression that according to Internet usage, it could operate using only a ".org" designation. Currently, however, NSI allows non-profit corporations, as well as for-profit businesses and individuals, to use the ".com" designation. The ".com" designation is commonly used by businesses. Id. at 48. The degree of similarity between the marks thus increases the likelihood of confusion among Internet users.
c. The Competitive Proximity of the Products or Services
The web sites of plaintiff and defendant are both located on the World Wide Web. Therefore, defendant's web site at "www.plannedparenthood.com" is close in proximity to plaintiffs own website, "www.ppfit.org." Both sites compete for the same audience -- namely, Internet users who are searching for a web site that uses plaintiffs mark as its address. The degree of competitive proximity, therefore, increases the likelihood of confusion among Internet users.
d. The Likelihood that Plaintiff Will Bridge the Gap Between the Markets
Because plaintiffs web site and defendant's web site are both on the Internet, the parties are vying for users in the same "market." Where the market for competing goods or services is the same, there is no need to consider whether plaintiff will bridge the gap between the markets. I therefore do not consider this factor in determining the likelihood of confusion.
e. The Existence of Actual Confusion
Plaintiff has produced testimony demonstrating that actual confusion has occurred among Internet users. The confusion has occurred both in a user who attempted to go directly to "www.plannedparenthood.com," thinking that it was likely to be plaintiff s web address, and in a user who used a search engine to find web sites containing, or designated by, plaintiffs mark.
This specific testimony exemplifies the likelihood of confusion due to the nature of domain names and home page addresses. First, because ".com" is a popular designation for Internet domain names, an Internet user is likely to assume that ".com" after a corporation's name will bring her to that corporation's home page, if one exists. Second, an Internet user cannot immediately determine the content of a home page maintained by the owner of a particular domain name or located at a specific address. Only after a user has seen or entered "plannedparenthood.com" can she access the web site; such access occurs after at least a temporary delay. In addition, there is a delay while the home page "loads" into the computer. Because the words on the top of the page load first, the user is first greeted solely with the "Welcome to the Planned Parenthood Home Page!" it is highly likely that an Internet user will still believe that she has found plaintiffs web site at that point.
Even when the picture of The Cost of Abortion finally does appear on the screen, the user is unlikely to know that she is not at plaintiffs home page. Id. at 19, 47, 55-56. The book's ambiguous title "The Cost of Abortion," alone, cannot disabuse every Internet user of the notion that she has found plaintiffs home page. The Internet user must actually click on a link to read excerpts from the book, biographical information about the author, or book endorsements. Only in the course of reading those items can the user determine that she has not reached plaintiffs home page. Depending on which fink the user has chosen to access, there may be an additional delay before the user can grasp that plaintiff is not the true provider of the home page. n1 I This lengthy delay between attempting to access plaintiffs home page and learning that one has failed to do so increases the likelihood of consumer confusion.
g. The Quality of Defendant's Product
A comparison of the quality of plaintiffs and defendant's products -- their web sites -- is irrelevant; the Court cannot compare the two web sites in terms of superior or inferior quality. However, I note that the two products are vastly different and convey quite divergent messages.
h. The Sophistication of the Purchasers
Plaintiff argues that its primary purchasers are low income, relatively unsophisticated women. I note that those with access to the Internet may not be coextensive with the segment of the population to whom plaintiff normally offers its services; those with Internet access may be more sophisticated. However, testimony has shown that even sophisticated Internet users were confused by defendant's web site. Although the sophisticated Internet user may discover, after reading the text of one of the links on defendant's home page, that she has not reached plaintiffs web site, some users may not be so immediately perspicacious. Because the sophistication of the user is no guarantee, here, that the consumer will not be confused, I find that this factor is of limited value in determining whether the consumer is likely to be confused.
In sum, I find that the bulk of the Polaroid factors demonstrate that there is a significant likelihood of confusion that warrants the granting of a preliminary injunction.
D. Defendant's Additional Defenses
Defendant also argues that his use of plaintiffs mark is protected from injunction because (1) it is a parody, and (2) it is protected speech under the First Amendment. I consider these arguments in turn.
1. The Parody Exception
Defendant argues that his use of the "planned parenthood" mark is not likely to confuse because it is similar to a parody. A parody "depends on a lack of confusion to make its point," and "'must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody."'
I am not persuaded by defendant's argument that the message of the home page provides an ironic and contrasting allusion to plaintiff, nor do I find convincing his argument that the banner heading of the home page is sarcastic. Similarly, I do not conclude that defendant's use of the term "planned parenthood" in the context described above is intended not to confuse the user into an association with plaintiff, but rather "to reference Plaintiff as the 'enemy."' Because defendant's use of "planned parenthood" does not convey the simultaneous message that the home page and web site are those of plaintiff and those of defendant, defendant's argument that his use of the mark is a parody fails.
2. The First Amendment Exception
Defendant also argues that his use of the "planned parenthood" mark is protected by the First Amendment. As defendant argues, trademark infringement law does not curtail or prohibit the exercise of the First Amendment right to free speech. I note that plaintiff has not sought, in any way, to restrain defendant fi7om speech that criticizes Planned Parenthood or its mission, or that discusses defendant's beliefs regarding reproduction, family, and religion. The sole purpose of the Court's inquiry has been to determine whether the use of the "planned parenthood" mark as defendant's domain name and home page address constitutes an infringement of plaintiffs trademark. Defendant's use of another entity’s mark is entitled to First Amendment protection when his use of that mark is part of a communicative message, not when it is used to identify the source of a product. Yankee Publishing, Inc. v. News America Publishing, Inc., 809 F. Supp. 267, 275 (S.D.N.Y. 1992). By using the mark as a domain name and home page address and by welcoming Internet users to the home page with the message "Welcome to the Planned Parenthood Home Page!" defendant identifies the web site and home page as being the product, or forum, of plaintiff. I therefore determine that, because defendant's use of the term "planned parenthood" is not part of a communicative message, his infringement on plaintiffs mark is not protected by the First Amendment.
For the foregoing reasons, I grant plaintiffs motion for a preliminary injunction. I hereby enjoin defendant, his agents, servants, employees, representatives, attorneys, related companies, successors, assigns, and all others in active concert or participation with him, (1) from using to identify defendant's web site, home page, domain name or in any other materials available on the Internet or elsewhere the Planned Parenthood(R) mark, any colorable imitation of the Planned Parenthood(R) mark, and any thing or mark confusingly similar thereto or likely to cause dilution of the distinctiveness of the Planned Parenthood(R) mark or injury to the business reputation of the Planned Parenthood Federation of America, Inc. or any of its affiliates; and (2) from representing by any means whatsoever that defendant, or any products or services offered by defendant, including information services provided via defendant's web site or the Internet, are associated in any way with plaintiff or its products or services, and from taking other action likely to cause confusion or mistake on the part of Internet users or consumers.
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