Lamparello v. Falwell - 420 F.3d 309 (4th Cir. 2005)

Rule:

Both infringement and false designation of origin have five elements. To prevail under either cause of action, the trademark holder must prove: (1) that it possesses a mark; (2) that the opposing party used the mark; (3) that the opposing party's use of the mark occurred in commerce; (4) that the opposing party used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the opposing party used the mark in a manner likely to confuse consumers.

Facts:

Reverend Falwell held the common law trademarks “Jerry Falwell” and “Falwell,” and the registered trademark “Listen America with Jerry Falwell.” Jerry Falwell Ministries can be found online at www.falwell.com. Christopher Lamparello registered the domain name www.fallwell.com, containing in-depth criticism of Reverend Falwell’s views. Although the interior pages of Lamparello’s website did not contain a disclaimer, the homepage prominently stated the website was not affiliated with Jerry Falwell or his ministry. Reverend Falwell sent letters to Lamparello demanding the latter to cease and desist from using www.fallwell.com or any variation of Reverend Falwell’s name as a domain name. Ultimately, Lamparello filed the present action against Reverend Falwell and his ministries, seeking a declaratory judgment of non-infringement. Reverend Falwell counterclaimed, alleging trademark infringement under 15 U.S.C. § 1114 (2000), false designation of origin under 15 U.S.C. § 1125(a), unfair competition under 15 U.S.C. § 1126 and the common law of Virginia, and cybersquatting under 15 U.S.C. § 1125(d). The district court granted summary judgment to Reverend Falwell, enjoined Lamparello from using Reverend Falwell's mark at www.fallwell.com, and required Lamparello to transfer the domain name to Reverend Falwell. However, the court denied Reverend Falwell's request for statutory damages or attorney fees. Lamparello appealed the district court’s order while Reverend Falwell cross-appealed the denial of statutory damages and attorney’s fees.

Issue:

Did Lamparello infringe Reverend Falwell’s trademark, thereby warranting the grant of summary judgment in favor of Reverend Falwell?

Answer:

No.

Conclusion:

The court held that although Lamparello and Reverend Falwell employed similar marks online, the Lamparello’s website looked nothing like Reverend Falwell’s. Moreover, Lamperello’s website was intended only to provide a forum to criticize ideas, not to steal customers. No one seeking Reverend Falwell’s guidance would be misled by the domain name of the Lamparello’s website into believing that the Reverend authorized the content of that website since no one would believe that the Reverend sponsored a site criticizing himself, his positions, and his interpretations of the Bible. The court further held that the Reverend could not demonstrate that Lamparello had a bad faith intent to profit from using the similar domain name. Accordingly, the judgment was reversed and the case was remanded for entry of judgment for Lamparello.