FC: Part 2/2: Jerry Falwell demands to own jerryfalwell.com parody site

[Declan McCullagh <declan () well com>]

The official Falwell site appears to be here:
http://www.falwell.com/

*******

Date: Mon, 5 Nov 2001 14:48:34 -0800
From: "Gary Cohn" <gary () oj com>
To: declan () well com
Subject: [Fwd: Jerry Falwell - trademark infringement]

Hi Declan,

Here is a letter sent to me, and my response.

Please call me if you have any questions.

Thanks

Gary Cohn


November 1, 2001

   John H. Midlen, Jr.
   7618 Lynn
   Chevy Chase, Maryland 20815-6043

                       Re:     Cyberbullying

   Dear Mr. Midlen:

        I am writing for the twin purpose of acknowledging receipt of two 
demand
   letters, dated October 26, 2001, that you sent to me by overnight delivery
   service, and to reject the demands made in those letters.

        I am the author of a web site, which as you note uses the domain 
names
   jerryfallwell.com and jerryfalwell.com,  that parodies your client, Jerry
   Falwell.  The parody both reminds the public of your client's hateful 
remarks
   about the causes of the September 11 terrorist attack on the United 
States, and
   evokes his criticism of the hypocritical attitudes that some Christians 
display
   toward compliance with biblical dictates, by suggesting that he himself 
ignores
   a significant biblical dictate.  This is a completely non-commercial 
web site,
   which exists for the sole purpose of expressing, through a parody, my 
opinion
   that your client is a jerk.

        Confirming my opinion about your apparently humorless client is 
the letter
   that you have sent me on his behalf, trying to suppress my criticism by 
invoking
   completely spurious claims under the trademark, cybersquatting and 
privacy laws.
    Let us be clear.  Your client is, as you say, a "world famous television
   evangelist", although personally I think infamous or notorious would be 
a better
   way to say it.  He is "nationally known . . . and . . . internationally 
known"
   for the very characteristics that are parodied on my web site.  He is a 
public
   figure, and as the Supreme Court reminded him the last time he tried to 
sue over
   a parody, he cannot succeed in a claim based on a publication that 
makes fun of
   him unless he proves both falsity and actual malice, under the 
standards of the
   New York Times v. Sullivan standard.  You do not assert that anything 
on my web
   site is false.  If your client's feelings are hurt as a result of being 
parodied
   on my site, that is something he is going to have to learn to live 
with.  As
   Harry Truman used to say, if you can't stand the heat, get out of the 
kitchen.

        Your letter claims that my use of your client's name creates a 
likelihood
   of confusion about the source and origin of my web site.  Now I will 
confess
   that your client preys upon gullible people; but it is impossible to 
believe
   that even your client's devoted followers would believe, upon reaching 
my parody
   site that it represents anything other than a parody of your client.

        Moreover, it is well established that the use of a domain name 
denoting the
   subject of non-commercial criticism, even if that name is trademarked, 
is a
   completely fair use of the name and is not actionable under the 
trademark laws,
   under the new cybersquatting law, or under the common law of 
Illinois.  I would
   call your attention to the case of Northland Insurance Company v. 
Blaylock, in
   which an insurance company sued a disgruntled consumer who used the 
domain name
   northlandinsurance.com as the address to post his complaints about the 
failure
   of the company to pay him what he felt he was owed on a claim for a 
loss on his
   boat.  Northland had registered northland.com, which it used the name 
for its
   web site, much as your client registered falwell.com more than three 
years ago
   and has used it to promote his business, which consists of making money 
from his
   religion.  The United States District Court made short work of Northland's
   argument that Blaylock had violated either the Lanham Act or the 
Cybersquatting
   Act.  Moreover, a number of courts have recognized the First Amendment
   implications of the use of trademark law to try to quash criticism of 
the holder
   of a trademark.

        In short, the domain names are not for sale, they have never been 
for sale,
   and I have no interest in selling them to you or to anybody else.  I 
have no
   obligation to give them to you, and I do not intend to give them to you.

        Your letter threatens both to invoke the Uniform Dispute 
Resolution Policy
   before the World Intellectual Property Organization, and to sue me in a 
federal
   court.  Let me point out to you that if you file a lawsuit against me, 
that
   action alone could preclude the UDRP procedure from going forward, under
   paragraph 18 of the procedure.  And speaking of hypocrisy, wasn't it Jerry
   Falwell who was complaining just last November about the "legions of 
lawyers"
   who were trying to use the courts to "stretch laws in their favor" to 
overturn
   the supposed democratic mandate of the people in Florida?  And wasn't 
it Jerry
   Falwell who has been complaining about "radical homosexual lawyers" 
trying to
   find "liberal judges" to advance their personal agendas?  It seems your 
client
   isn't above using radical lawyers of his own stripe to advance his own 
social
   agenda by trying to find conservative judges who may cater to him by 
suppressing
   the democratic rights of other people.

        Finally, if your client sues me as threatened, his lawsuit will be 
entirely
   frivolous and I intend to ask my attorney to seek an award of attorney 
fees both
   against your client and against his lawyer.  I also reserve the right 
to sue
   your client and his lawyer for malicious prosecution.  Because I live 
and work
   in Illinois, and there is nothing about my web site that would justify 
you suing
   me anywhere else, I assume that lawyer will be somebody other than 
yourself, but
   I would ask you to advise your successor of the risk that he is 
undertaking.

                                                     Sincerely yours,


                                                     Gary William Cohn

---

MIDLEN LAW CENTER
7618 LYNN
CHEVY CHASE, MD 20815-6043


301-656-3000
FAX: 301-656-8262

john () midlen com
http://www.midlen.com


October 26, 2001



Via DHL Worldwide Express and e-mail

Mr. Gary Cohn
Mr. Gary Williams
1954 First Street
Highland Park, IL  60035

Telephone: [Phone number deleted. --DBM]

                        Re:     Jerry Falwell
                                Infringement of Trademarks and Service Marks

Gentlemen:

        This firm is Intellectual Property Counsel to Liberty University, 
Liberty Alliance, Liberty Broadcasting Network, Inc., Old Time Gospel Hour, 
Thomas Road Baptist Church, Jerry Falwell Ministries and Dr. Jerry 
Falwell.  Dr. Falwell is the world famous television evangelist and is a 
founding principal in each of the other listed entities, all of which are 
corporations organized under the laws of the Commonwealth of Virginia or 
the District of Columbia, except for Thomas Road Baptist Church, which is 
an unincorporated religious body, and all of which operate under his guidance.

        Dr. Falwell is the owner of the following marks:  "Jerry Falwell" 
and "Falwell"

        Liberty Alliance, as licensee, is the owner of the following 
mark:  "falwell.com"

Since at least the early 1960s, Dr. Falwell has been a nationally known 
member of the clergy and since at least the mid-1970s he has been 
internationally known in that same role.  He and the organizations he has 
founded have expended a great deal of time and money in establishing 
consumer recognition of, and confidence in, him and the services offered 
under his trademarks and service marks.

        It has come to the attention of our clients (referred to herein 
collectively as Dr. Falwell) that you are using their marks, or confusingly 
similar marks, in connection with two or more web sites.  Specifically, Mr. 
Cohn is the registrant of record and administrative contact for the domain 
name jerryfalwell.com and Mr. Williams is the administrative contact for 
the fictitiously registered domain name jerryfallwell.com.  There is no 
distinction in law between "Jerry Falwell" and your dot com domain names 
with top level suffixes, whether spelled identically or misspelled 
confusingly similarly.  Your continued use of Dr. Falwell's marks is 
unauthorized by him and is unauthorized by any of the organizations 
associated with him.  Moreover, your conduct in using these marks creates a 
likelihood of confusion in the marketplace concerning the source and origin 
of the web sites you offer under the marks and does and will diminish his 
reputation and good will.

        In view of Dr. Falwell's well-known and established reputation in 
his marks, and the harm presented by your unauthorized use of them, your 
conduct constitutes an infringement and violation of Dr. Falwell's 
proprietary rights in his marks, unfair competition, false designation of 
origin and dilution of the distinctive quality of his marks in violation of 
applicable state laws and the Lanham Act (as recently amended by the 
Anticybersquatting Consumer Protection Act and the Federal Trademark 
Dilution Act). This unauthorized and unlawful conduct has caused and will 
continue to cause damage and irreparable injury to Dr. Falwell and the 
organizations associated with him, and diminishes the valuable good will 
associated with his marks.

        Dr. Falwell therefore demands that you immediately cease and 
desist from marketing, selling, or promoting any services or goods under 
his proprietary marks, or any confusingly similar name or mark, and that 
you cease use of the marks in all materials, including but not limited to 
the following: web sites and marketing literature.  Moreover, Dr. Falwell 
demands either the immediate delivery or the destruction of all materials 
bearing the infringing designations.  Should any materials be outside your 
direct control, Dr. Falwell requires the name, address and other 
indentifying information of the parties in whose custody any infringing 
materials may be.  Failure to comply with the terms of this letter may 
subject you to the payment of damages for trademark/service mark 
infringement (which may be trebled by the court), as well as attorneys' 
fees and costs incurred by him in protecting his marks and enjoining your 
unlawful use of his proprietary marks.

        Your infringing domain names are, of course, registered with 
VeriSign, successor to Network Solutions, Inc.  Dr. Falwell demands that 
"jerryfalwell.com" and "jerryfallwell.com" be transferred through VeriSign 
to Liberty Alliance pursuant to VeriSign's Private Transaction Request, the 
form for which is on the web at 
www.greatdomains.com/services/escrow/escrowrequest.asp .  The transaction 
fee charged by VeriSign is $500.00 per domain name, which Dr. Falwell 
agrees to pay.  Moreover, for any costs you may have incurred which are 
reasonable and which you can document, Dr. Falwell will reimburse you.  You 
must also certify that you are not the owner or representative of any other 
domain names that arguably might infringe on Dr. Falwell's marks and you 
must agree not to register any such infringements in the future.  Failure 
to agree to the foregoing will result in Dr. Falwell seeking compulsory 
transfer of the infringing domain names through the World Intellectual 
Property Organization in Geneva, Switzerland.  If your concurrence in 
resolving this matter is not received by the undersigned by the close of 
business, November 12, 2001, a Complaint will be lodged forthwith in 
Geneva, as well as and in addition to the filing of a civil action in 
federal court in the United States.

        Finally, in addition to the rights of Dr. Falwell in his marks, 
you should be aware that many jurisdictions recognize common law rights of 
privacy.  To the extent that Dr. Falwell's name or image appears on your 
web site(s), there may be a common law action against you for the 
infringement of his right to privacy on the basis of your appropriation of 
his name and/or image for your own purposes.

        If you have any questions, I will be happy to discuss this matter 
with you.  If you seek legal counsel, I will be happy to discuss this 
matter with your attorney(ies).  In any event, we anticipate your timely reply.

                                                                Very truly 
yours,


                                                                John H. 
Midlen, Jr.

Cc:  gary () oj com  and  gary () prolife net




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