What a difference two days and three different Judges make.  After the pro-plaintiff Paccar decision, the Sixth Circuit has handed down a very pro-defendant decision in Taubman v. Webfeats.  Defendant’s website, which linked to plaintiff’s official website, was held not to infringe, thanks to (1) a very narow definition of commercial use; and (2) great weight given to a disclaimer.

Plaintiff opened a mall named THE SHOPS AT WILLOW BEND.  Defedant registered SHOPSATWILLOWBEND.COM.  He set up a site containing links to the mall’s official site and to stores at the mall.  He also provided links to his webdesign business and his girlfriend’s business.  Plaintiff objected and defendant removed links to his and his girlfriend’s businesses.  He also registered five “sucks” names and set up a gripe site. 

Plaintiff made what in retrospect was a tactical error in going after the gripe ste, first enjoining it and then having the injunction overturned at appeal.

It appears that everything document every filed in this case is available at the gripe site.  If you want to see how long and involved a litigation can be, by all means go there.

The refusal of the court to enjoin the gripe sites is not shocking.  What is of interest is the infringement analysis of shopsatwillowbend.com.   Relying on its 1-800-H0LIDAY decision, the court gave great weight to the fact that (1) defendant used a disclaimer and (2) defendant provided a link to the official website.

Once defendant removed the commercial links, this in effect became a warehousing fact pattern.    ACPA and the UDRP are targeted at this behavior, not the infringement provisions of the Lanham Act.  I suspect that plaintiff would have had a very decent shot at the UDRP with regard at shopsatwillowbend.com, and spent hundreds of thousands of dollars less to be in no worse a position than it is in today.

This case is going to get cited a lot by defendants.