Faegre & Benson, Llp v. Purdy, CIV. 03-6472MJDJGL.

Page 1238

367 F.Supp.2d 1238

FAEGRE & BENSON, LLP, Felicia J. Boyd, and John H. Hinderaker, Plaintiffs, v. William S. PURDY, Sr., Please Don't Kill Your Baby, and Does 1-10, Defendants.

No. CIV. 03-6472MJDJGL.

United States District Court, D. Minnesota.

April 27, 2005.

COPYRIGHT MATERIAL OMITTED

John P. Borger, Felicia J. Boyd, Molly K. Beutz, Faegre & Benson LLP, Minneapolis, MN, for Plaintiffs.

Douglas Brian Altman, Altman & Izek, Minneapolis, MN, for William S. Purdy, Sr., for purposes of the contempt hearing.

MEMORANDUM OF LAW & ORDER

DAVIS, District Judge.

I. INTRODUCTION

This matter is before the Court on Plaintiffs' Motion for Order to Show Cause and for Clarification of Injunction. [Docket No. 91] Defendant William Purdy also filed a third motion requesting recusal of Judge Michael Davis. [Docket No. 111] The Court heard oral argument on March 7, 2005.

II. FACTUAL BACKGROUND

A. Procedural Background

Plaintiffs Faegre & Benson, LLP ("Faegre"), Felicia Boyd, and John H. Hinderaker filed a complaint against William S. Purdy, Sr., Please Don't KILL Your Baby ("PDKYB"), and Does 1-10, on December 15, 2003, alleging that Defendants registered numerous internet domain names that are confusingly similar to Faegre's protected mark and that statements on the web sites were defamatory.

On January 5, 2004, the Court issued an order granting Plaintiffs' motion for a preliminary injunction and for a temporary restraining order ("January 5 Order"). The January 5 Order applied to Purdy and stated, in relevant part:

2. Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are also preliminarily enjoined from registering or using any domain name that both (1) incorporates, and is identical or confusingly similar to, Faegre's distinctive and protected marks FAEGRE & BENSON, FAEGRE, FAEGRE.COM or FAEGRE & BENSON LLP or any other marks identical or confusingly similar to any marks used or owned by Faegre, and (2) does not alert the Internet user to the protest or critical commentary nature of the attached web site within the language of the domain name itself.

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5. Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are also preliminarily enjoined from using any trademark that is identical or confusingly similar to Faegre's distinctive and protected marks FAEGRE & BENSON, FAEGRE, FAEGRE & BENSON LLP, and FAEGRE.COM, or any other mark used or owned by Faegre.

6. All Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are temporarily and preliminarily prohibited and enjoined from displaying any web site, the appearance of which is identical or confusingly similar to the trade dress of Faegre's web site at faegre.com.

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11. All Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them who receive actual notice of this Order are ordered to cease illegal appropriation of the names of the Plaintiffs and all individuals associated or affiliated with the Plaintiffs.

Purdy filed an appeal of the January 5 Order with the Eighth Circuit Court of Appeals, and the Eighth Circuit affirmed that Order on April 4, 2005.

On September 1, 2004, the Eighth Circuit issued an opinion affirming a similar injunction against Purdy in the case of Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir.2004). On September 2, 2004, this Court issued an Order ("September Contempt Order"), based on Plaintiffs' first motion for contempt, finding Purdy in contempt of its January 5 Order for 1) failing to transfer ownership of three domain names specifically addressed in the January 5 Order; 2) registering and using a number of domain names that were identical or confusingly similar to Faegre's trademarks in violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"); and 3) illegally appropriating Plaintiff Felicia Boyd's name. [Docket No. 86] Purdy appealed the Court's September Contempt Order, and the Eighth Circuit dismissed Purdy's appeal on November 23, 2004.

On November 16, 2004, Plaintiffs filed this second motion for contempt.

B. Trade Dress

Beginning in March 2004, and continuing until at least February 16, 2005, Purdy has posted a web page at johnkerryspeaks.com that contains portions of Faegre's trade dress. Exh. 60 to Fourth Beutz Decl. (web page as of March 2004); Exh. 68 to Fifth Beutz Decl. (web page as of April 2004); Exh. 96 to Seventh Beutz Decl. (web page as of November 2004); Exh. 126 to Eighth Beutz Decl. (web page as of February 2005). Plaintiffs refer to this web page as "Counterfeit Faegre Page 1." The web page contains large, graphic photographs that purport to show aborted fetuses. The main text on the page discusses Purdy's opinion that Faegre is attempting to silence his speech criticizing its alleged support of abortion. In the upper-left-hand corner of the web page, below the name "Faegre & Benson LLP," is the disclaimer "Critical Satire Parody Page."

In September 2004, Purdy posted an altered version of Faegre's redesigned web page at pleas edontkillyour baby.com/faegre-benson-law-firm-blood-dripping.htm and at the democraticnational committee.com/officialfaegre-bensonlawofficewebsite.htm. Plaintiffs refers to this web page as "Counterfeit Faegre Page 2." Exh. 97 to Seventh Beutz Decl. (web page as of November 2004). The domain name faegre-law-love-democraticjudges michaeldavis-judge annmontgomery.com, which is registered to PDKYB, also directs users to Counterfeit Faegre Page 2. Seventh Beutz Decl. ¶ 4; Exh. 98 to Seventh Beutz Decl.; Exh. 121 to Eighth Beutz Decl. (web page as of February 2005). Counterfeit Faegre Page 2 also contains copying of Faegre's trade dress. In the upper-left-hand corner, under the name "faegre.com," is the phrase "Official Faegre Parody Website." Prominently displayed at the top and center of the web page are graphic pictures that purport to show aborted fetuses. The main text on the page discusses Purdy's opinion that Faegre & Benson is attempting to silence his speech criticizing its alleged support of abortion.

Purdy also posted a third iteration of an altered faegre.com web page at pleasedontkillyour baby.com/faegre-benson-law-firm-blood-dripping.htm, which Plaintiffs refer to as "Counterfeit Faegre Page 3." See Exhs. 101-05 to Seventh Beutz Decl. (web page as of September 2004 through November 2004). Counterfeit Faegre Page 3 also appears at other domain names, such as pleasedontkill yourbaby.com. See Seventh Beutz Decl. ¶ 12; Exhs. 123, 125, 127 to the Eighth Beutz Declaration (multiple versions of web page as of February 2005). Counterfeit Faegre Page 3 contains copying of Faegre's trade dress and is dominated by a large graphic photograph purporting to show a dismembered fetus. In the upper-left-hand corner of the web page, below the name "faegre.com" is the phrase "Official Faegre Website Parody." As on the previous two web pages, the main text on the page discusses Purdy's opinion that Faegre & Benson is supporting abortion and is attempting to silence his speech criticizing its alleged support of abortion.

C. Infringing Domain Names

Purdy has posted web pages at the following four domain names, all of which Faegre alleges violate the ACPA: faegre-benson-tencommandments.com, faegre-benson-vote forpresidentbush.com, john-faegre-kerry.com, and faegre-law-love-democraticjudges michaeldavis-judgeannmontgomery.com. In its September Contempt Order, the Court specifically ordered Purdy to cease using the first three of these domain names. Sept. 2 Contempt Order at 14-15. [Docket No. 86] On January 20, 2005, Purdy ceased to post content at the first three web sites. Eighth Beutz Decl. ¶ 4; Purdy Decl. ¶ 3; Exh. 120 to Eighth Beutz Decl.

D. Metatags

The source code of Purdy's Counterfeit Faegre Pages 2 and 3 contain metatags from faegre.com, including the trademarked terms "Faegre & Benson" and "Faegre and Benson," and some meta-descriptions taken from Faegre's web page. See generally Fifth Scoville Decl. [Docket No. 97]

A `meta tag' is a list of words normally hidden in a web site that acts as an index or reference source identifying the content of the web site for search engines. This has been analogized to the subject index of a card catalog indicating the general subject of a book.

4 McCarthy on Trademarks & Unfair Competition § 25:69 (4th ed.) (footnote omitted). Internet search engines use a variety of factors to rank web pages, including metatags. Id.

Due in part to Purdy's extensive use of Faegre's metatags and the content of the faegre.com web page, certain internet search engines, such as Yahoo, prominently display his web sites in results generated in response to queries that include Faegre's trademarks. See Exh. 11 to Fifth Scoville Decl.; Fifth Scoville Decl. ¶¶ 23-26. Purdy's web pages do not appear as prominent responses to queries in other search engines, such as Google. Altman Aff. ¶ 2. Because Purdy uses the description tags from faegre.com, on some search engines that display the description tags, the description of Purdy's web page includes portions of the description of Faegre's website. See Exh. 10 to Fifth Scoville Decl.

E. John Hinderaker

Plaintiff John Hinderaker publishes a popular internet blog — or web log — entitled "Power Line," located at powerlineblog.com, under the pseudonym "Hindrocket." Hinderaker Decl. ¶ 5. On September 13, 2004, a statement appeared on the discussion board on pleasedontkill yourbaby.com/Discussion that purported to be by Hinderaker. Exh. 107 to Seventh Beutz Decl. Hinderaker did not create or authorize use of the posting attributed to his...