Rebecca Tushnet’s blog calls attention to a bizarre cybersquatting complaint that was recently filed in the Northern District of California by ThermoLife, an Arizona company that touts its dietary supplements as providing “the purest, most powerful and innovative products” using the trademark “Muscle Beach.” The trademark claims are utter nonsense, but the proceeding raises a number of interesting and even tricky procedural issues.
The Complaint and Its Legal Theory
ThermoLife complains about the creation of a blog entitled “Ron Kramer Muscle Beach” that is hosted on the WordPress blogging platform at https://ronkramermusclebeach.wordpress.com, and using the post-domain path “author/musclebeachkramer.” The content posted there chastises Kramer for being a “snitch,” noting that he is a convicted felon who had worked with the San Mateo County Narcotics Task Force to infiltrate the body-building community to identify others involved with the peddling of anabolic steroids. The complaint alleges that the accusations against Kramer are false and defamatory, but rather than suing the anonymous authors of the web site, the complaint alleges that the inclusion of the name of the company founder and of its product in the URL for the blog constitute domain names that “violate the rights of the owner of the Muscle Beach mark” in that they “further the perceived connection between the … domains and the Muscle Beach brand” and “infringe on the Muscle Beach marks.” The complaint seeks an injunction transferring the domains to the plaintiff company, but based only on trademark theories, not defamation theories.
Assuming that the blog contains false statements about Kramer that threaten ThermoLife’s business, it is understandable that ThermoLife would want to find some way to mount a legal attack that could force the removal of those false statements from the web. And because section 230 of the Communications Decency Act protects companies that host commentary by others from being sued when that content is claimed to be defamatory, lawyers representing ThermoLife were doubtless under some pressure from their client to find a way to secure the removal of the content by overcoming section 230 immunity. The trademark theory stated in the complaint is apparently ThermoLife’s way of avoiding section 230.
But the trademark claims are absurd. The original reason why trademark holders were worried about registration of domain names consisting of their trademarks by others (and especially competitors) was that, before the era of search engines, the main way consumers found web sites was by “name-guessing” – typing in the trademark followed by DOTcom. If a competitor had the web site that appeared at that address, the risk was that the competitor might steal business; the problem was compounded by the registration of multiple domain names consisting of trademarks by people who had no interest in using the names themselves, but only in auctioning the names to the trademark owner (or a competitor) for a premium price. The ACPA was enacted to address these problems.
But even if this problem had not been largely addressed by effective search engines, there is little danger that anybody would guess that the way to find ThermoLife’s web site is by typing the name ronkramermusclebeach into a browser followed by DOTwordpressDOTcom. Moreover, even if the user were to arrive that the blog located at that address by mistake, she would know immediately that she was on the web site of someone who detests ThermoLife’s founder. Even apart from these practical considerations, the trademark claims appear to run headlong into established law in the Ninth Circuit, which decided in Bosley Medical Institute v. Kremer that a trademark infringement theory cannot be used to seize domain names using a trademark for a strictly non-commercial web site that criticizes the trademark holder. Other cases, in other circuits, have also upheld the use of trademarks in domain names for web sites that are about the trademark holder: those domain names are not confusing, but "tell the truth" about the web sites for which they are the address.
Because there is an intellectual property exception to section 230 immunity, if ThermoLife’s counsel really thought they had sound trademark claims, they might have sued Automattic, the host of the WordPress blogging platform. A review of its prelitigation correspondence shows that this is the course of action that it originally contemplated, when it was trying to bully Automattic into taking down the blog. Had it taken that approach, however, it would have had to face a sophisticated and well-funded opponent that would doubtless have pointed out that its trademark theories were baseless. Instead, it chose a different course, alleging that the “domain names” are confusingly similar to ThermoLife’s trademark and hence constitute cybersquatting under the anti-cybersquatting amendments to the Lanham Act, the ACPA.
Because the Bosley case upheld summary judgment against the trademark holder only under the Lanham Act, while distinguishing the ACPA based on a letter that the defendant had allegedly sent in that case demanding money from the plaintiff, ThermoLife apparently postulated that it could avoid a ruling that its claims were legally frivolous. And, in an apparent effort to avoid having to litigate against a real opponent, ThermoLife filed the case as an in rem action. Of course, a number of courts, although not yet the Ninth Circuit, have also held that genuine gripe sites with no commercial aspects are also protected under the ACPA (for example, the Fourth Circuit in Lamparello v. Falwell, the Sixth Circuit in Lucas Nurseries v. Grosse, and the Tenth Circuit in Utah Lighthouse v. FAIR. But all of those cases involved plaintiffs who sued the blog hosts personally, seeking damages and other relief, and alleging bad faith intent to profit; when relief is sought in rem, the language of the statute reveals that the outcome does not turn on bad faith intent to profit, but rather on whether the domain names infringe or dilute the trademark under traditional Lanham Act theories. (Some courts in other parts of the country have imposed a “bad faith intent to profit” condition on in rem cases as well as in personam ones). Thus by bringing an in rem action, ThermoLife put itself squarely under the Bosley Medical precedent.
Other Problems Raised by ThermoLife’s In Rem Approach
Wholly apart from the trademark law deficiencies in ThermoLife’s claims, it is questionable whether the ACPA applies to the use of the “musclebeach” and “ronkramer” names in the parts of the URL where they appear. The statute defines a “domain name” as the part of a web address that is “registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority,” but Automattic is not a registrar, and the portions of the URL where the trademarks appear are neither registered with nor assigned by any domain name registry. The complaint (paragraph 10) appears to argue that Automattic became a “domain name authority” by assigning third-level domains, but the complaint actually misquotes the statute by omitting the word “registration” in that phrase of the definition.
By filing suit against the domain names in rem, instead of suing Automattic as an infringer under the intellectual property exception to section 230, ThermoLife may have hoped to avoid having to have its theories attacked by competent counsel. There are, however, real questions about whether ThermoLife has a sound basis for suing in rem, for two reasons that both relate to the requirement that the plaintiff be unable to obtain personal jurisdiction over a defendant that is amenable to in personam suit for the alleged cybersquatting. First, even if, in its capacity as a registrar as ThermoLife alleged, Automattic was immune from suit for trademark infringement, Automattic itself could have been sued for trademark infringement for hosting the blog and allowing the allegedly infringing URL, without running afoul of either its section 230 immunity, or the special immunity for domain name registrars. Service on and jurisdiction over Automattic could easily have been obtained. Moreover, although the complaint alleges ThermoLife’s inability to identify the person who create the WordPress blog, ThermoLife’s pre-litigation demand letter to Automattic asserted that it knew who had created the blog, an individual named Anthony Connors who lives in New Jersey. ThermoLife has his home address and, indeed, obtained service on him in a lawsuit filed in federal court in New Jersey (more on that below). The docket in that litigation reflects that ThermoLife is currently pursuing discovery from Connors to enforce a substantial money judgment. Thus, ThermoLife could have sued Connors personally for trademark infringement, as well as suing Automattic, and in rem jurisdiction is consequently unavailable.
A second potential problem with ThermoLife’s in rem filing is the product of the case having been assigned at random to a magistrate judge instead of a district judge. Because magistrate judges have not been appointed to lifetime tenure positions, they cannot serve as judges who are fully qualified under Article III of the Constitution to make dispositive decisions unless the parties to the litigation have given their consent to having the case heard by a judge who is serving for a limited term. When the action is brought over a piece of property, who decides whether it consents? Although the Ninth Circuit has decided that, under the federal statute regulating magistrate judges, the known owner of a piece of property that is the subject of an in rem proceeding does not become a “party” to the litigation whose lack of consent vitiates a magistrate judge’s ability to issue orders, when the owner is unknown the constitutionality of magistrate jurisdiction to decide the in rem case would remain an open question. Consequently, if it were only the magistrate judge currently assigned to the case who ruled on the merits, the order would be subject to challenge on appeal if the creator of the blog were to appear on the scene and object on that ground.
Moreover, we at Public Citizen were concerned that, by filing the lawsuit in rem, ThermoLife plaintiff was deliberately trying to ensure that the arguments against its trademark would not get made effectively. With fairness in mind, as well as these practical concerns, we wrote to the Magistrate Judge to suggest that he consider appointing a guardian ad litem for the “domain names” who could address these arguments; I offered to accept such an appointment.
Could Libel Claims Have Avoided the Need for Silly Trademark Claims?
One thing that jumped out at me when I first looked that the cybersquatting complaint was the inclusion of paragraphs alleging that the substance of the blog was both false and defamatory. The very fact that plaintiff included these allegations communicated that its real concern was the substance of the criticism, rather than the infringement of trademark, because the fact that the blog contains such overt criticism undercuts any claim of likely confusion. But it also led me to wonder whether plaintiff might not have been able to achieve its objective or removal of the blog had it pursued claims for defamation, because although section 230 protects Automattic from being compelled to remove defamatory material from its servers, Automattic, like most major hosting platforms, voluntarily honors injunctions that have been issued against their users.
It occurred to me to ask, therefore, whether there was any basis for the claims of defamation. I was skeptical because the complaint itself is so conclusory, and because, to the extent that I was able to investigate on my own, the defamation claims in the complaint appear to be disingenuous. For example, paragraph 31 of the complaint alleges that “much of the information published on the [blog] has already been adjudicated false and defamatory by the New Jersey Federal District Court,” but when I looked at that court’s electronic docket I found only the defamation claim against Connors that has resulted in a default judgment; ThermoLife’s counsel admitted to me that this is the litigation to which the complaint refers. But in issuing the default judgment, the trial judge there had been very careful to say that he was not making any determination about whether any of the statements at issue in that case were false or actionable, only that Connors, having been properly served, had failed to defend his statements and hence could be ordered to remove those specific statements. In fact, the New Jersey judge refused to issue a contempt citation for failure to remove statements from the web site at issue in that case and, indeed, to expand the injunction to address new statements that Connors was claimed to have posted there. If the trial judge is refusing to enjoin new statements even when posted by Connors, it is hard to understand how ThermoLife can demand that other hosts remove statements that might be posted by Connors (surely it is convenient for ThermoLife to so believe) but also might be written by someone else.
The complaint also alleges that the public records published on the WordPress blog “contain false information” and, indeed, that the government agencies that authored those records “have repeatedly acknowledged” the falsity (the complaint implicitly acknowledges that the records themselves are authentic). But in light of the fact that the complaint inaccurately characterizes the New Jersey ruling, I am inclined to be skeptical of the remaining claims of falsity. I have contacted ThermoLife’s counsel (curiously, its the same lawyer is involved in another copyright and defamation claim against a critical blogger, recently filed recently by a faith healer). I confess although the lawyer to whom I spoke sounded like a nice fellow, he began our conversation by repeatedly blowing smoke, becoming more accurate only when I called him on the facts.
For example, trying to defend his allegation that the trial court in New Jersey had “adjudicated” the falsity of the statements at issue in that case, he told me that, in the New Jersey case, they had obtained a default judgment by presenting an affidavit establishing the falsity of the statements. But the affidavit that Kramer filed in New Jersey did not take issue with accusations (similar to the statements on the WordPress blog) that Kramer had been the "snitch" who revealed the BALCO scandal; Kramer only denied being himself "involved with BALCO." When I told took issue with the lawyer's statements about the affidavit, he changed his position, indicating that they had relied on a verified complaint. But the complaint in the New Jersey case was not verified. With respect to the claim that the agencies authoring the public documents on the blog had acknowledged falsity, the only public document he was able to send me was letter acknowledging that a charge accusing Kramer of misdemeanor sexual touching as well as discouraging the victim from seeking his arrest had been dismissed. That is not at all the same as stating that the facts in the charge were false, and republishing this record was probably not defamatory. But the complaint alleged that “the records published on the Muscle Beach Domains contain false information” and that the authoring agencies “repeatedly acknowledged” that falsity. At most, ThermoLife’s counsel have provided evidence that one document containing two charges was later dismissed.
Thus, even if the facts alleged in that one charging document were now proved false, the defamation allegations are overstated, and would not support an injunction against the entire blog. If only this one document can be shown to be actionable, then only its publication could be enjoined. I conclude that the defamation claims would not provide a basis for persuading Automattic to remove the entire blog; only the trademark claims could compel that outcome, if only there were a sound basis for such claims.