Score one for FAIR. Last week, in Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, the U.S. Court of Appeals for the Tenth Circuit rejected an appeal by Sandra and Gerald Tanner’s anti-Mormon ministry over its claims of trademark infringement, cyber-squatting, and unfair competition that arose out of a parody website created by the Foundation for Apologetic Information and Research (FAIR). The Tanners had lost the original case in this suit last year after the U.S. District Court in Utah granted FAIR summary judgment on all of the Tanners’ claims, a decision unanimously affirmed by the 10th Circuit.
There’s a little history behind this litigation. Back in 1999, the Church actually sued the Tanners for providing links to sites which published the copyrighted Church Handbook of Instruction. The case blazed new trails in the area of online copyright law because it was the first time a court had found that mere links to another site containing infringing material could constitute copyright infringement.
This recent suit involving FAIR switched things up a bit.*** In 2003, [FAIR's Vice-President Allen Wyatt] registered a number of domain names that played off of the Tanners’ Lighthouse Ministry (i.e., utahlighthouse.com, sandratanner.com, etc.) and directed these URLs to lead to a parody which mimicked the Tanners’ ministry website, but relayed content rebutting their anti-Mormon message (including links to FAIR’s own website, FAIR articles critical of the Tanners, as well as various other Mormon-friendly resources).
After publicizing the site for a time, [Wyatt] eventually transferred all of the domain names back to the Tanners (presumably after legal threats over their use). The Tanners, however, decided to bring suit anyway alleging that the parody site had infringed the Utah Lighthouse Ministry website, that the registration of the various domain names constituted cybersquatting, and that the whole enterprise was a form of unfair competition. [The Tanner's action named FAIR as a defendant, arguing that Wyatt was acting on behalf of FAIR.] The District Court ruled against the Tanners, however, granting FAIR summary judgment on all counts.
In affirming this decision, the 10th Circuit:
(1) Pointed to the fact that the Tanners had only registered their Utah Lighthouse trademark after they commenced suit against FAIR, and, as a result, their mark didn’t meet the much higher bar for infringement that unregistered trademarks face.
(2) Rejected the Tanners’ arguments that the parody website constituted commercial use (even though it linked to FAIR’s own site with its online bookstore).
(3) Held that even if [Wyatt's] website were commercial in use, it created no likelihood of confusion and posed no real interference to those trying to reach the Utah Lighthouse website.
Certainly copyright and trademark claims involve different legal issues and standards, but I can’t help but think that the Tanners still probably feel like they got burned by both ends of the stick here. In 1999, they were found liable for copyright infringement on the basis of hyperlinks… but when they turn around and try to use that line of reasoning against a pro-Mormon organization they feel violated their trademark, the Court finds these links to be too “roundabout” and “attenuated” to constitute commercial use of a trademark and serve as the basis for an infringement claim. In the end, I think the 10th Circuit made the right decision, since a trademark’s real purpose is to prevent customer confusion and protect a right-holder’s investment in the mark, and the Tanners didn’t make a compelling case against FAIR on these grounds. Nonetheless, I think this decision probably made their blood boil.
*** NOTE: To add clarity, I’ve edited this post where brackets appear.