The official Falwell site appears to be here:
http://www.falwell.com/
*******
Date: Mon, 5 Nov 2001 14:48:34 -0800
From: "Gary Cohn" <[EMAIL PROTECTED]>
To: [EMAIL PROTECTED]
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
[EMAIL PROTECTED]
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: [EMAIL PROTECTED] and [EMAIL PROTECTED]
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