New Internet free speech decision

[David Farber <dave () farber net>]

Begin forwarded message:

From: Paul Levy <plevy () citizen org>
Date: August 6, 2004 5:59:39 PM EDT
To: dave () farber net
Subject: New Internet free speech decision

We have just received a decision from the Ninth Circuit overturning that
obnoxious injunction which, while allowing Uzi Nissan to keep his
surname as a domain name, forbade him from using nissan.com to publicize
his criticisms of Nissan Motor Co.

The trial court decision had been widely cited as supporting lawsuits
against the use of trademarks to identify "gripe" sites, on the theory
that any commentary that has an adverse impact on commercial activity is
itself within the realm of commercial speech, and hence not protected by
the First Amendment.  This reversal of that ruling should go a long way
to protect other gripe site operators.



Paul Alan Levy
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000
http://www.citizen.org/litigation/litigation.html

> > > Valerie Collins 08/06/04 05:30PM >>>
For Immediate Release:                                  Contact:
Paul Alan Levy (202) 588-1000
Aug. 6, 2004                                                    Valerie
Collins (202) 588-7742

U.S. Court of Appeals Upholds Right to Criticize Nissan Motor

District Court Improperly Restricted Content of Site After Advertising
Was Removed

WASHINGTON, D.C. - In a decision issued today in Nissan Motor Co. v.
Nissan Computer Co., the U.S. Court of Appeals for the Ninth Circuit
upheld the rights of members of the public to criticize corporations
without being deemed to have engaged in "commercial speech" that can be
enjoined under the trademark laws.

The case involved Uzi Nissan, a North Carolinian who runs a computer
business using his surname. He was sued by the giant automaker for
trademark infringement and dilution because he operated a Web site with
the domain name nissan.com; he also used his Web site to criticize the
auto giant for picking on him.

The trial court issued a series of rulings holding that Nissan was
guilty of both dilution and, to a limited extent, infringement, and
consequently issued on order forbidding Nissan from using his Web site
to criticize Nissan Motor in any way, even by linking to disparaging Web
sites. The trial judge reasoned that such criticism became "commercial
speech" and hence could be limited consistent with the First Amendment
because it had the potential for injuring Nissan Motor's business.

In a unanimous opinion written by U.S. Circuit Judge Pamela Rymer, the
court of appeals flatly rejected this reasoning and overturned the
injunction.  Judge Rymer explained that the injunction was an improper
content-based restriction that is barred by the First Amendment.  She
also held that the defining hallmark of commercial speech is that the
speech "does no more than propose a commercial transaction," and the
potential for adverse impact on Nissan Motor's commercial activities
does not similarly make speech commercial.

"The court of appeals ruling strikes down a prior restraint against
free speech that set a dangerous precedent," said Paul Alan Levy, the
Public Citizen attorney who prepared its amicus brief. "Citizens who
want to use the Internet to speak their minds about corporations can
breathe easier after this ruling."

The case also contains several rulings on trademark law that will be of
significant interest.  Most important, the court decided that a
trademark cannot become "famous" and thus eligible for protection under
the federal anti-dilution law if it is being used commercially in any
way, even in conjunction with another term.

Under the federal law, dilution claims cannot be brought against a
commercial use that began before the trademark became famous.  Nissan
Motor had argued, and the trial judge had agreed, that Uzi Nissan's mere
use of his surname as part of the commercial name "Nissan Computer,"
which began in 1991, was not enough to prevent the Nissan trademark from
becoming famous, and hence only his 1994 registration of the domain name
"nissan.com," which used the Nissan name all by itself, could interfere
with the development of the mark's famousness.  The court of appeals
sent the case back for a jury trial to decide whether the Nissan mark
was famous in 1991.

In this ruling, the court of appeals agreed with the arguments made by
Public Citizen in an amicus brief that it filed in the case.  A copy of
that brief can be found on the Public Citizen Web site at
http://www.citizen.org/documents/NissanAmicusBriefOnDilutionAppeal.pdf.
 The court's opinion can be found on the court's Web site, and also on
the Public Citizen Web site at
http://www.citizen.org/documents/ 
CourtofAppealsRulingNissanMotorvNissanComputer.pdf.

###

Public Citizen is a national, nonprofit consumer advocacy organization
based in Washington, D.C. For more information, please visit
www.citizen.org.

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