Taubman Co. v. Webfeats, 01-2648.

• Citation: 319 F.3d 770
• Decision Date: 07 February 2003
• Docket Number: No. 01-2648.,No. 01-2725.,01-2648.,01-2725.
• Parties: The TAUBMAN COMPANY, Plaintiff-Appellee, v. WEBFEATS, a Texas Company and Henry Mishkoff, an individual, Defendants-Appellants.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

Page 770

319 F.3d 770

The TAUBMAN COMPANY, Plaintiff-Appellee, v. WEBFEATS, a Texas Company and Henry Mishkoff, an individual, Defendants-Appellants.

No. 01-2648.

No. 01-2725.

United States Court of Appeals, Sixth Circuit.

Argued: October 16, 2002.

Decided and Filed: February 7, 2003.

Douglas W. Sprinkle (argued), Julie A. Greenberg (briefed), Gifford, Krass, Groh, Sprinkle, Anderson & Citkowski, Birmingham, MI, for Plaintiff-Appellee.

Paul A. Levy (argued and briefed), Public Citizen Litigation Group, Washington, DC, Webfeats, Carrollton, TX, Henry Mishkoff, Carrollton, TX, for Defendants-Appellants.

Ann Beeson (briefed), American Civil Liberties Union Foundation, Reproductive Freedom Project, New York, NY, Michael J. Steinberg (brifed), Kary L. Moss (briefed), American Civil Liberties Union Fund of Michigan, Detroit, MI, Kevin S. Bankston (briefed), ACLU Immigration Rights Project, New York, NY, for Amicus Curiae.

Before: BOGGS, SUHRHEINRICH and CLAY, Circuit Judges.

OPINION

SUHRHEINRICH, Circuit Judge.

Defendant-Appellant Henry Mishkoff, d/b/a Webfeats, appeals from two preliminary injunctions, respectively entered on October 11, 2001, and December 7, 2001, in the United States District Court for the Eastern District of Michigan, together granting Plaintiff-Appellee the Taubman Company's (Taubman) request to prevent Mishkoff from using six internet domain names because they likely violate Taubman's trademarks in the terms "Taubman," and "The Shops at Willow Bend."

Mishkoff claims two assignments of error. First, he contends that the United States District Court for the Eastern District of Michigan lacked personal jurisdiction over him. Second, he claims that even if jurisdiction was proper, Taubman is unlikely to succeed on the merits of its trademark claims because it has not demonstrated that customers would likely be confused between the origin of Taubman's and Mishkoff's products.

We reverse the decision of the district court and dissolve both injunctions. We find, first, that Mishkoff has waived any challenge he might have to the personal jurisdiction of the district court in the Eastern District of Michigan. Second, Taubman had failed to demonstrate a likelihood of success on the merits because Mishkoff's use was not "in connection with the sale or advertising of goods or services," and there is no likelihood of confusion among consumers.

I. Facts

Mishkoff is a resident of Carrollton, Texas, and a web designer by trade. Upon hearing the news that Taubman, a Delaware corporation with its principal place of business in Michigan, was building a shopping mall called "The Shops at Willow Bend," in Plano, Texas, Mishkoff registered the domain name, "shopsatwillowbend.com," and created an internet website with that address. Mishkoff had no connection to the mall except for the fact that it was being built near his home.

Mishkoff's website featured information about the mall, with a map and links to individual websites of the tenant stores. The site also contained a prominent disclaimer, indicating that Mishkoff's site was unofficial, and a link to Taubman's official site for the mall, found at the addresses "theshopsatwillowbend.com," and "shopwillowbend.com."

Mishkoff describes his site as a "fan site," with no commercial purpose. The site did, however, contain a link to the website of a company run by Mishkoff's girlfriend, Donna Hartley, where she sold custom-made shirts under the name "shirtbiz.com;" and to Mishkoff's site for his web design business, "Webfeats."

When Taubman discovered that Mishkoff had created this site, it demanded he remove it from the internet. Taubman claimed that Mishkoff's use of the domain name "shopsatwillowbend.com" infringed on its registered mark, "The Shops at Willow Bend." Taubman filed a complaint on August 7, 2001, claiming, inter alia, trademark infringement under the Lanham Act, 15 U.S.C. § 1114, asking for a preliminary injunction, and demanding surrender of Mishkoff's domain name.

Mishkoff responsively registered five more domain names: 1) taubmansucks.com; 2) shopsatwillowbendsucks.com; 3) theshopsatwillowbendsucks.com; 4) willowbendmallsucks.com; and 5) willowbendsucks.com. All five of these web names link to the same site, which is a running editorial on Mishkoff's battle with Taubman and its lawyers, and exhaustively documents his proceedings in both the district court and this Court, both through visual scans of filed motions, as well as a first person narrative from Mishkoff. In internet parlance, a web name with a "sucks.com" moniker attached to it is known as a "complaint name," and the process of registering and using such names is known as "cybergriping."¹ See, e.g., Martha Kelley, Is Liabilty Just a Link Away? Trademark Dilution by Tarnishment Under the Federal Trademark Dilution Act of 1995 and Hyperlinks on the World Wide Web, 9 J. Intell. Prop. L. 361, 375 (2002) (defining "cybergriping"); Ronald F. Lopez, Corporate Strategies for Addressing Internet "Complaint" Sites, 14 Int'l L. Practicum 101, 101-02 (Autumn 2001) (giving examples of different types of "complaint" sites).

On October 11, 2001, the district court granted Taubman's motion for a preliminary injunction, enjoining Mishkoff from using the first host name, "shopsatwillowbend.com."² On October 15, 2001, Taubman filed a motion to amend the preliminary injunction to include the five "complaint names" used by Mishkoff. On December 7, 2001, the district court allowed the amendment and enjoined Mishkoff from using the complaint names.

On November 9, Mishkoff filed a notice of appeal from the October 11 injunction. On December 10, Mishkoff filed a notice of appeal from the December 7 injunction. Accordingly, each case is timely before this Court under Fed. R.App. P. 4(a)(1)(A). The cases have been consolidated on appeal.

II. Personal Jurisdiction

Mishkoff first claims that the United States District Court for the Eastern District of Michigan lacks personal jurisdiction over him. He asserts that since he is a resident of Texas, the websites were created in Texas, and the mall which is the subject of the websites stands in Texas, a federal court in Michigan cannot exercise jurisdiction over him as a defendant.

Although Mishkoff raises serious doubts in our minds about whether the district court properly held jurisdiction, his motion was ultimately untimely. Although subject-matter jurisdiction can be challenged at any time, Fed.R.Civ.P. 12(h); see also Ambrose v. Welch, 729 F.2d 1084, 1085 (6th Cir.1984), even collaterally after disposition, see Fed. R.Civ. P. 60(b)(4), a challenge to personal jurisdiction must be raised in the first responsive pleading or be waived. Fed.R.Civ.P. 12(h)(1); see, e.g., Reynolds v. Int'l Amateur Athletic Fed'n, 23 F.3d 1110, 1120 (6th Cir.1994); In Re Wolverine Radio Co., 930 F.2d 1132, 1137 n. 5 (6th Cir.1991). Mishkoff did not raise the issue of personal jurisdiction in his original answer.

Mishkoff asks this court for leeway, in light of the fact that he was originally litigating this case pro se. Unfortunately, as the district court stated, there is no legal basis for so doing. This is not to say that this Court will never grant leeway to a pro se party, but Mishkoff has not presented the kind of extraordinary circumstances that would warrant such action. Accordingly, we find that Mishkoff has waived any challenge to personal jurisdiction.

III. Analysis

Mishkoff claims the injunctions preventing his use of the domain name "shopsatwillowbend.com" and the five "complaint names" are inappropriate because Taubman has not demonstrated a likelihood of success on the merits and because the orders represent a prior restraint on his First Amendment right to speak.

A. Standard of Review

We review the district court's grant of a motion for a preliminary injunction for abuse of discretion. Marchwinski v. Howard, 309 F.3d 330, 333 (6th Cir.2002); Blue Cross & Blue Shield Mut. of Ohio v. Blue Cross & Blue Shield Ass'n, 110 F.3d 318, 322 (6th Cir.1997). "A district court abuses its discretion when it relies on clearly erroneous findings of fact ... or when it improperly applies the law or uses an erroneous legal standard. Under this standard, this court must review the district court's legal conclusions de novo and its factual findings for clear error." Owner-Operator Indep. Drivers Ass'n v. Bissell, 210 F.3d 595, 597 (6th Cir.2000).

We have held that an injunction is proper in trademark cases where:

1) There is a likelihood of success on the merits;

2) There is the potential for irreparable harm;

3) There is the potential of adverse public impact;

4) Potential harm to the plaintiff outweighs the potential harm to the defendant.

See Rock and Roll Hall of Fame and Museum Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir.1998). None of these factors, standing alone, is a prerequisite to relief; rather, they must be balanced. Golden v. Kelsey-Hayes Co., 73 F.3d 648, 653 (6th Cir.1996); see also County Sec. Agency v. Ohio Dep't of Commerce, 296 F.3d 477, 485 (6th Cir.2002).

B. Propriety of the Injunctions

1. Likelihood of Success on the Merits

The likelihood of success of Taubman's claim rests with the language of the Lanham Act, 15 U.S.C. § 1114(1), which imposes liability for infringement of trademarks on:

Any person who shall, without the consent of the registrant

a) 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....

Mishkoff proposes that, regardless of whether his use of Taubman's marks violates the Lanham Act, any injunction prohibiting his use violates the Constitution as a prior restraint on his First Amendment right of Free Speech. Since Mishkoff has raised Free Speech concerns, we...