Sucks sites have proven more than a place to vent. For example, pepsibloodbath.com declared victory and closed itself down after the Pepsi-Cola Company quit advertising Pepsi at bullfights. Adbusters Magazine is deciding what to do with cokespotlight.org now that the Coca-Cola Company has pledged to make its coke machines friendlier to the environment.

Legal experts caution, however, that defeats in the form of costly lawsuits are also possible.

Although U.S. law affords ample room for criticism of companies on the Internet, free speech rights have limitations. Copyright, trademark, and defamation can interfere with a site's ability to say, "This company sucks."

Wired News interviewed a number of legal experts who offered general legal tips for would-be sucks site operators:

If a sucks site uses a company's trademark for noncommercial criticism purposes, it doesn't run afoul of trademark law so long as consumers are not confused or tricked into believing that the site is sponsored by or affiliated with the company, said Robin Gross, a staff attorney with the Electronic Frontier Foundation.

"If you want to say that 'Gap sucks' that's your First Amendment right, and just because Gap has a registered trademark doesn't necessarily mean that they have a right to stop people from saying 'Gap sucks,'" Gross said. "You're not violating the trademark because there is no consumer confusion if the consumer is well aware that it's a criticism site."

Mark Radcliffe, an attorney with Gray Cary Ware & Freidenrich, said that surfers, on first glance, should know from the basic look and feel that it's a criticism page done by a third party.

Preferably, the word "sucks" or some variant should be incorporated into the domain name -- especially if the URL uses a company's trademarks.

Also, no matter how clear and unconfusing a site may be, the experts warned that owners of famous trademarks may bring suit under a trademark dilution theory if a sucks site "tarnishes" a mark by associating it with negative things such as drugs or prurient sexual activity.

Like trademarks, a copyright does not grant authors or companies absolute ownership over their copyrighted materials. The concept of fair use allows the public to make limited uses of otherwise copyrighted works.

Congress codified the judicially created fair use doctrine into the Copyright Act of 1976. In the act, "criticism" is the first in a short list of uses that Congress specifically noted as fair.

However, rote reproduction of copyrighted works -- even if for fair use purposes -- is considered a no-no by the courts, Radcliffe said. Instead, a copyrighted work should be transformed from its original state into something new that still suggests the old.

Want to copy that image file? Better modify it with an image-editing program first. Want to upload company documents? Break them up into chunks with commentary interspersed in between.

Sixth Circuit Supports Sucks Sites

Martin H. Samson, Esq., Partner, Phillips Nizer LLP, Internet Library Case Update, February 20, 2003

Reversing the court below, the Sixth Circuit dissolved an injunction which enjoined defendants from using plaintiff's trademarks in conjunction with the word "sucks" in the domain name of several "complaint" sites, as well as in the domain name of a non-commercial "fan" site. (....) Plaintiff The Taubman Company ("Taubman Co.") built a shopping mall (the "Mall") it named "The Shops At Willow Bend". Taubman Co. holds trademarks in the marks "Taubman" and "The Shops At Willow Bend."

Defendant Henry Mishkoff ("Mishkoff"), a web developer, registered the domain name "shopsatwillowbend.com," at which domain he operated what he described as a "fan" website, featuring a description of the Mall and links to the websites of its tenants. Mishkoff's site also contained links to the website of a shirt business operated by his girlfriend, as well as the homepage of his website development business, Webfeats. Mishkoff's site contained a disclaimer indicating it was not the official web site of the Mall, as well as a link to that site."

Upon discovering Mishkoff's activities, Taubman Co. requested that Mishkoff cease using the "shopsatwillowmall.com" domain name, asserting that Mishkoff's use infringed plaintiff's mark. Taubman Co. also offered to purchase this domain name for $1,000, an offer Mishkoff initially accepted under threat of litigation. When Mishkoff later refused to sell the domain name, Taubman Co. commenced this lawsuit. Mishkoff responded by registering five additional domain names, which featured Taubman Co. trademarks in conjunction with the word sucks (i.e. Taubmansucks.com, theshopsatwillow-bendsucks.com). Each of these five domains were linked to the same website, which contained a history of the litigation Taubman Co. commenced against Mishkoff, along with Mishkoff's editorial comments on the proceedings.

The District Court then issued a preliminary injunction enjoining defendants from continuing to use either shopsatwillowmall.com or the various [trademark] sucks.com domain names, on the ground that Taubman Co. was likely to prevail on its Section 1114 Lanham Act claims. On appeal, the Sixth Circuit reversed, and dissolved the injunction issued below.

To be entitled to injunctive relief in the Sixth Circuit, a plaintiff must show "a likelihood of success on the merits" of its claims. Finding Taubman Co. was not likely to succeed on its §1114 Lanham Act claim, the Sixth Circuit found Taubman Co. was not entitled to injunctive relief.

Section 1114 of the Lanham Act imposes liability for infringement of trademarks on:
Any person who shall, without the consent of the registrant
a) 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....

The hallmark of a claim under §1114 is likelihood of consumer confusion.

Said the Court:
"The only important question is whether there is a likelihood of confusion between the parties' goods or services. Under Lanham Act jurisprudence, it is irrelevant whether customers would be confused as to the origin of the websites, unless there is confusion as to the origin of the respective products.
The Court first addressed Taubman Co.'s §1114 claim arising out of Mishkoff's use of the domain name "Shopsat-willowmall.com." The Sixth Circuit held that there was no likelihood that this activity would confuse consumers as to the source of the parties' respective products. In reaching this conclusion the Court relied heavily on a disclaimer Mishkoff posted on his website, which indicated that it was not the official site of the Mall, as well as a link from Mishkoff's site to the Mall's official home page.

Indeed, the court noted that Mishkoff's activities actually helped Taubman Co., by directing some users to its official site (at theshops-atwillowmall.com) who might otherwise have received nothing more than an error message upon arriving at Mishkoff's 'shopsatwillowmall.com' url.

To establish a violation of §1114, a plaintiff must also show that the defendant was using its mark "in connection with the sale ... or advertising of any goods or services." The Sixth Circuit held that the presence on Miskoff's site of links to both his girlfriend's shirt business and his own website development company satisfied this "in connection with" requirement. However, removal of these links would negate the "in connection" with requirement sufficiently to bar the issuance of injunctive relief.

Said the Sixth Circuit:
"As long as Mishkoff has no commercial links on either of his websites, including links to shirtbiz.com, Webfeats, or any other business, we find no use "in connection with the advertising" of goods and services to enjoin, and the Lanham Act cannot be properly invoked."

The Court also found that Taubman Co. was not likely to succeed on its claim that Mishkoff's use of Taubman Co.'s marks, in conjunction with the word 'sucks' in the domain name of complaint sites, violated §1114 of the Lanham Act. The Court again rested its holding on a finding that such use was not likely to confuse consumers.

Said the Court:
"Taubmansucks.com" removes any confusion as to source. We find no possibility of confusion and no Lanham Act violation."

The Court further held that, in the context of an injunction application, speech critical of plaintiff's business was protected by the First Amendment, and could not be blocked by the Lanham Act.

"We find that Miskoff's use of Taubman's mark in the domain name 'taubmansucks.com' is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. Such use is not subject to scrutiny under the Lanham Act. In fact, Taubman concedes that Mishkoff is "free to shout 'Taubman Sucks!' from the rooftops....Essentially, this is what he has done in his domain name. The rooftops of our past have evolved into the internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it."

In its decision, the Court also rejected Mishkoff's claim that the injunction should be vacated because the District Court lacked personal jurisdiction over him. The Court found that Mishkoff had waived his right to make this objection because he had failed to assert it in his answer, filed pro se [for himself].