The Yes Men perpetrated (or perhaps only collaborated on) a parody of the Washington Post today, distributing tens of thousands of hard copy editions date-lined May 1, 2019 (making the parody too obvious), but also transmitting email from “email@example.com” domain, which in turn links to a fairly extensive parody web site located at my-washingtonpost.com. A second email, purporting to come from an email address on the washingtonpost.com domain, purported to provide a correction:
“An earlier email from the Washington Post erroneously stated that President Trump has departed the Oval Office. We stand corrected (by ourselves, as well as dozens of Twitter users). This event in fact occurred three months and a half from now, possibly."
For those of us with a sense of history, it was startling to see that the parodists were using the domain name my-washingtonpost.com, a name that was featured in litigation running from 2002 to 2005 under the Lanham Act and the then-fairly new anti-cybersquatting law, the ACPA.
William Purdy, an anti-abortion activist, had registered that domain name as well as several others incorporating trademarks of The Washington Post, Coca Cola and McDonalds, companies that he claimed were providing too much support for abortion rights. Seeking both to express his views and, no doubt, to punish companies he deemed evil, he was posting graphic images of aborted fetuses at those domain names. The Post (and the other companies), claiming that ownership of my-washingtonpost.com was vital to its business, obtained preliminary and later permanent injunctive relief, persuading the federal court in Minnesota, and then the Eighth Circuit, that Purdy’s having offered to trade the removal of his web site for free op-ed space in the Post to express his anti-choice messages made his a sort of commercial use that was, therefore, subject to Lanham Act and ACPA proscription. We sought leave to file an amicus brief agreeing with the finding of liability given what Purdy had done, but questioning the scope of the injunction against him. (The court declined to accept our brief)
But the Post apparently overstated how badly it needed that domain name, because it gave the name up and these parodists were able to grab it. If the Post tries to litigate the domain name issue again, it might well encounter a more skeptical court. Indeed, the law has developed considerably since then, with several appellate courts holding that purely non-commercial sites at domain names containing trademarks, such as shopsatwillowbend.com, fallwell.com, and bosleymedical,com, whose owners were engaged in constitutionally-protected expression about the trademark holder, were outside the Lanham Act and protected from ACPA liability.
By an amazing coincidence, on the same morning that the Post parody was distributed, the Post ran this story about a Facebook page spoofing the Maryland state government. The story made clear that the reporter found the whole thing very amusing. The Post's coverage of the parody aimed at itself showed no such sense of humor. “We will not tolerate others misrepresenting themselves as The Washington Post, and we are deeply concerned about the confusion it causes among readers,” Post spokeswoman Kris Coratti said. “We are seeking to halt further improper use of our trademarks.”