by Paul Alan Levy
A dozen years ago, when I had just made the transition from doing union democracy law to cyberlaw, I took on the representation of an IT professional named Hank Mishkoff who modeled his work by creating a web site praising a shopping mall that was being built near his home, using the mall’s title, Shops at Willow Bend, as his domain name. After a law firm representing the mall’s owner sued him for trademark infringement, he created a second web site to complain about the lawsuit brought by the shopping mall’s owner to shut down the first web site. The second web site, entitled Taubman Sucks!, recounts with a wry sense of humor Mishkoff’s pro se resistance to the lawsuit, and later my own efforts on his behalf. It also sets forth every letter and every court filing in the case, along with extensive comments on each.
I was drawn into the case after Taubman’s lawyers, emboldened by their success in getting a preliminary injunction against the first site, overplayed their hand by making the truly ridiculous argument that Internet users might be confused about whether a web site located at taubmansucks.com, and replete with criticism of Taubman and its attorneys, was sponsored by Taubman; and by gum they actually got a federal judge to enjoin that one too! (After that, Mishkoff set up a third web site, using the name of the law firm as in GiffordKrassGrohSprinkleSucks.com; the lawyers at least had the good sense not to go after that one).
Initially, I decided to take the case only over the free speech issues presented by the second injunction, but in the end, I decided that the best way to get breathing room for sites that used the word “sucks” in the domain name was to put trademark holders on the defensive about domain names that simply reproduced the trademark. That view ultimately prevailed in the Sixth Circuit, and has become the general rule in other courts, even those that had originally been hostile to sites using trademarks in the domain name.
Over the years, I have defended many web sites against trademark claims, and a consumer fan site for a shopping mall might strike you as a real oddity, but Taubman Sucks has always been my favorite, because it shows how a defendant can keep his sense of humor at the same time he is displaying his outrage at having to stand up to trademark bullies. I still point potential clients to the site so that they can read about what it means to be a defendant in a federal case. (I also point to the affiliation disclaimer and hyperlink that Mishkoff put on his shopping mall site, his own idea even before he was getting legal advice, as the gold standard disclaimer).
Late last month, though, I was reminded of the site in a different way, when Mishkoff forwarded to me the following email that he had received, entirely out of the blue, from Douglas Sprinkle, the named partner, who works for an IP boutique firm in Troy, Michigan and who had been lead counsel for Taubman Company in the case:
I could not imagine what would have possessed a lawyer to send an email like that to a former litigation adversary; indeed, I wondered whether someone might have invented the private email address to harass Sprinkle; but Apple has not been issuing mac.com email addresses since 2008, so it seems unlikely that someone would have created a “dougsprinkle” email address on mac.com that long ago, just to make him look foolish now.
On the other hand, sending it was of a piece with the judgment that Sprinkle displayed when he left a voicemail message on Mishkoff’s answering machine threatening contempt proceedings over a preliminary injunction that had just been sent in the mail, and when he tried to defend the preliminary injunction in the Sixth Circuit by misleading the court about the facts, then had to spend precious argument time backing away from his mischaracterization; the Sixth Circuit mentioned and rebutted his misrepresentation in its opinion.
But the worst thing about Sprinkle’s email is how self-centered it is – he claims that it made him money by attracting clients who liked his feistiness and his apparent ability to anger an adversary. This led me to wonder whether Taubman Company shared Sprinkle’s delight in the creation of the Taubman Sucks web site; it still shows up in the search results, although a dozen years later it has been relegated to the second page of results.
Not surprisingly, Taubman refused to comment on my question; its general counsel told me that the case happened before his time, and that the company prefers to move on. Sprinkle seems to be at odds with his former client, in that respect at least. He is also, apparently, at odds with his firm, which tells me that Sprinkle's "actions were undertaken individually and are not representative of the firm’s policies or practices."
Sprinkle himself has not responded at all to my questions.