Planned Parenthood Federation of America, Inc. v. Bucci

Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997), an early Internet domain trademark infringement case heard in the United States District Court for the Southern District of New York, established the theory that hosting a site under a domain name that was the registered trademark of a third party constituted trademark infringement. The case was also important in determining what constitutes “Use in Commerce” under the Lanham Act in cyberspace. Although these holdings were modified and overruled by various American courts following the decision, Bucci stands as a seminal case for being one of the first cases to address these issues.

Parties

Planned Parenthood Federation of America, Inc. is the U.S. affiliate of the International Planned Parenthood Federation. The organization receives its funding from governmental grants and contracts as well as private contributions.

Planned Parenthood has been using the Planned Parenthood mark since as early as 1922 and registered the mark in the 1950s. At the commencement of the action, the Planned Parenthood mark was considered strong, famous, and incontestable under federal trademark law.

Richard Bucci, at the time of the decision, operated a daily Catholic Radio program in Syracuse, New York. Bucci operated websites at www.catholicradio.com and www.lambofchrist.com.

Background information

On August 28, 1996, Bucci registered the domain www.plannedparenthood.com. The site's homepage, as operated by Bucci, contained the text “Welcome to the PLANNED PARENTHOOD HOME PAGE!” The page also included a scanned cover of the book The Cost of Abortion by Lawrence Roberge. The site also included a text version of the book's foreword and afterword, quotes about the book, a section about the author, and the author's contact information.

Planned Parenthood filed a request for preliminary injunction citing trademark infringement under §§ 1114, 1125(a) and 1125(c) of the Lanham Act.

Opinion of the court

The question before the court was whether Bucci’s use of the PLANNED PARENTHOOD trademark in the website’s domain name violated the Lanham Act’s provisions.

Trademark Infringement: Federal trademark law makes it a violation for a party to “use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.” ^[1]

The court interpreted the “Use in Commerce” provision broadly to be co-extensive with Congress’ commerce clause power under the Constitution. Accordingly, even though Bucci wasn’t selling anything on his website, the court held that he violated this provision. First, the court held Bucci was in violation because he was helping Roberge “plug” his book. Second, by promoting anti-birth control information, Bucci was providing a “service” to site viewers. Third, because Bucci had the domain name, people looking for Planned Parenthood’s services may abandon their search for the legitimate Planned Parenthood site, and this interfered with Planned Parenthood’s services.^[2]

Trademark Dilution: The Lanham Act also provides that the owner of a famous mark can enjoin a party’s “commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.” ^[3]

Although Bucci claimed that his use of the mark was not commercial, the court held that the use was commercial for three reasons: 1) Bucci was involved in promoting a book; 2) Bucci was a non-profit activist who solicited funds; 3) Bucci’s actions were designed to do commercial harm to Planned Parenthood.

Because these actions were held to be commercial, the court found that the domain name diluted the PLANNED PARENTHOOD trademark.

Impermissible Implied Sponsorship: Under Federal trademark law, a party infringes a mark if the use “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”^[3] The court held that because Bucci offered information relating to anti-abortion materials and solicited funds, he was acting commercially and therefore violated this provision.

Likelihood of confusion: Finding that Lanham §§ 1114, 1125(a) and 1125(c) were applicable, the court applied Second Circuit’s eight factor Polaroid balancing test in determining if the use was likely to cause confusion.^[4] Because the bulk of the factors weighed in favor of Planned Parenthood, the court decided that a preliminary injunction was appropriate.

Bucci’s Defenses: Bucci argued that he was protected because his usage of the mark was both parody and protected by the First Amendment. As for the parody defense, the court held that it did not apply because the initial site viewing did not contradict an internet user’s assumption that the site was operated by Planned Parenthood. For the First Amendment defense, the court held that because Planned Parenthood wanted only to restrain Bucci’s usage of their mark as a domain, and not his actual speech, the defense did not apply.

Conclusion

The defendant was barred from using the Planned Parenthood mark, making "colorable" imitations, representing the defendant (by offering information, products, or services), and from taking any other action in creating confusion for internet users or consumers in relation to the Planned Parenthood mark.

Subsequent proceedings

Bucci appealed to the United States Court of Appeals for the Second Circuit. In a non-substantive summary order,^[5] the Second Circuit affirmed the trial court’s reasoning and upheld the injunction.

Bucci then appealed to the Supreme Court of the United States, but certiorari was denied.^[6]

Following the denial of certiorari, the domain was transferred to Planned Parenthood in early 1999.^[7]

Subsequent legal developments

In Ford Motor Co. v. 2600 Enterprises, 177 F. Supp. 2d 661 (E. D. Mich. 2001), the court narrowed the Bucci holding by stating that the mere usage of a mark in a domain name in itself is not commercial, emphasizing Bucci’s plugging of the book.^[8][9]

In Taubman Co. v. Webfeats, 319 F. 3d 770 (6th Cir. 2003), the Sixth Circuit declined to strictly follow the Bucci holding by stating that one of the reasons Bucci infringed was that Bucci adopted another party’s mark without any other changes in the domain name and that the mere incorporation of a trademark into a domain was not, in itself, infringement.^[10][11]

In Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005), the Ninth Circuit looked not just at the nature of a potentially infringing webpage, but also the nature of the outbound links from the page, before determining that there was not a use in commerce.^[12]

Because there has been no Supreme Court decision on the issue of what exactly constitutes a “Use in Commerce” under the Lanham Act with regard to the incorporation of a trademark into a domain name, it is difficult to say whether the Bucci case is still good law. However, because there have been so many divergent opinions and fact specific determinations from subsequent cases, it is not likely that the case would be strictly followed by other courts.

See also

• People for the Ethical Treatment of Animals v. Doughney

References