Supreme Court of Indiana.
Dr. William M. FELSHER, Appellant (Defendant Below),
v.
UNIVERSITY OF EVANSVILLE, Dr. James S. Vinson, Dr. Stephen G. Greiner, and Dr.
Larry W. Colter, Appellees (Plaintiffs Below).
No. 82S04-0008-CV-477.
Oct. 1, 2001.
University and university officials sued professor, alleging invasion of privacy when professor used their names for e-mail and website addresses. The Vanderburgh Circuit Court, Wayne S. Trockman, J., granted summary judgment for plaintiffs and entered permanent injunction against professor. Professor appealed. The Court of Appeals, Baker, J., affirmed. On petition to transfer, the Supreme Court, Shepard, C.J., held that: (1) university did not have an appropriation of name or likeness claim against professor resting on notions of privacy, but (2) injunction against professor's use of individual's names and likenesses was proper.
Affirmed as modified in part and reversed in part.
Opinion, 727 N.E.2d 783, vacated.
West Headnotes
[1] Appeal and Error 
934(1)
On appeal
of a summary judgment decision, Supreme Court construes all facts and
reasonable inferences drawn from those facts in a light most favorable to the
nonmoving party.
[2] Appeal and Error 863
Supreme
Court carefully reviews the trial court's decision on summary judgment to
ensure that the responding party was not improperly denied his day in court.
[3] Appeal and Error 762
A party
cannot raise an argument for the first time on appeal in his reply brief.
[4] Torts 388
(Formerly 379k8.5(6))
University
whose name and abbreviation was used by professor for website and e-mail
addresses did not have an appropriation of a name or likeness claim resting on
notions of privacy against the professor.
Restatement
(Second) of Torts § § 652A, 652C, 652I.
[5] Torts 396
(Formerly 379k8.5(6))
A
corporation is not entitled to an appropriation claim resting on notions of
privacy.
[6] Trademarks 1435
(Formerly 382k350.1)
Trademark actions for copycat domain name
use on the Internet require commercial use of the domain name. Lanham Trade-Mark Act, § 1 et seq., 15
U.S.C.A. § 1051 et seq.
[7] Torts 241
(Formerly 379k10(3))
[7] Trademarks
1435
(Formerly 382k350.1)
University's
appropriate remedy for the misappropriation of its name or likeness by a
professor for website and e-mail addresses was under state's unfair competition
law and trademark statutes, as well as common law torts unrelated to notions of
privacy, such as tortious interference with business relations. West's
A.I.C. 24-2-1-1 et seq.
[8] Appeal and Error 856(1)
Though state unfair competition law and
trademark statutes, and common law torts unrelated to notions of privacy, might
well suffice as a foundation for injunction against professor's appropriation
of university's name and likeness for website and e-mail addresses, the Supreme
Court would not affirm trial court's injunction on those basses, as they were
not pled.
[9] Trademarks 1709
(Formerly 382k628)
Trial
court did not abuse its discretion in enjoining professor from using university
officials' names for website and e-mail addresses; though professor removed
objectionable e-mail accounts and websites after receiving notice of
plaintiffs' complaint, such actions were only facially remedial, and actions
provided
no assurance professor would permanently discontinue objectionable Internet
activities.
[10] Injunction 189
Injunctions
must be narrowly tailored, and never more extensive in scope than is reasonably necessary to protect the interests
of aggrieved parties.
[11] Injunction 163(7)
(Formerly 382k629)
Trial
court did not abuse its discretion by extending injunction against professor
who had appropriated university officials' names for website and e-mail
addresses to include any other personal or individuals associated with
university, as professor had displayed a propensity to pursue a personal
vendetta against university and its officials.
[12] Trademarks 1709
(Formerly 382k628)
Injunction
was overbroad to the extent it enjoined professor from nominating under his own
name individuals associated with university for positions with other
educational institutions, rather than only enjoining professor from creating
appearance his nominations were from anyone other than himself, and injunction
would be modified accordingly.
[13] Torts 387
(Formerly 379k8.5(6))
Phrase
"name or likeness" is commonly used in the context of
misappropriation, and embraces the concept of a person's character, which is
legally protected against appropriation by another for his own use or benefit.
[14] Trademarks 1709
(Formerly 382k628)
Injunction
that enjoined professor from appropriating likenesses as well as names of
university officials for website and e-mail addresses was not overbroad; though
professor had misappropriated names, it was reasonably foreseeable that he
would also misappropriate photographs, images or other representations of
identity.
*590 William M. Felsher, pro se,
Evansville, IN, Attorney for Appellant.
Thomas
O. Magan, Scott F. Hill, Kahn, Dees, Donovan
& Kahn, LLP, Evansville, IN, Attorneys for Appellees.
Daniel
P. Byron, Steven
D. Hardin, Jennifer
F. Perry, Brad
R. Maurer, McHale, Cook & Welch,
Indianapolis, IN, Attorneys for Amici Curiae, Hoosier State Press Assn., LIN
Television Corp., National Assn. of Broadcasters, and Society of Professional
Journalists.
*591
SHEPARD, Chief Justice.
We live in an age when technology pushes us
quickly ahead, and the law struggles to keep up. In this case, we encounter for the first
time assumption of identity via the Internet.
A number of existing statutes and common law precepts seem to serve
surprisingly well in this dramatic new environment.
Dr. William Felsher appeals the trial court's
grant of summary judgment in favor of his former employer, the University of Evansville,
and its officials. The court's order permanently enjoined Felsher from engaging
in certain Internet activity including the creation and use of e-mail addresses
and websites having an appearance of association with the University. He raises several issues, which we restate
as:
I. Whether the
University of Evansville is entitled to bring an action for invasion of
privacy, and
II. Whether the
injunction placed upon Felsher was necessary and proper.
We thus
address protection afforded to corporations and individuals against
unauthorized and retaliatory use of private or personal names on the Internet.
Facts and Procedural History
The University of Evansville is a
not-for-profit corporation, originally founded at Moores Hill, Indiana, in
1854. [FN1] Felsher was formerly a professor of
French. The University terminated him
in 1991.
FN1. University of
Evansville, About The University of Evansville, at
http://www.evansville.edu/ visitors/aboutue.asp (last visited Aug. 8, 2001).
In 1997, Felsher created Internet websites and
electronic mail accounts containing portions of the names of Dr. James S.
Vinson, President of the University; Dr.
Stephen G. Greiner, Vice President for Academic Affairs; and Dr. Larry W. Colter, Dean of the College
of Arts and Sciences. [FN2] Each of these
addresses also contained the letters UE, which is a common abbreviation for the
University of Evansville.
FN2. The e-mail
addresses were: [email protected]; SGreinerUE @aol.com; and [email protected]. (R. at 45-47, 84.) The web sites contained the following
URL: http://www.dynasty.net/
users/JSVinsonUE; later replaced by
http://members.aol.com/ LWColterUE/Colter.htm;
and http:// members.aol.com/ SGreinerUE/SGGWebPage.htm. (Id.)
Felsher featured articles that he had written
on the websites he created. The articles
alleged wrongdoings by Vinson and other University employees. One article alleged that President Vinson
violated the University Faculty Manual. In another article Felsher stated that
one UE professor had publicly declared himself unqualified to teach one of his
courses. (R. at 54-55.)
Using the e-mail accounts he created, Felsher
sent mail to several universities nominating each of the University officials,
in turn, for various academic positions.
In his e-mail message, Felsher directed the reader to one of the web
pages he had created as a reference for the nominee's activities.
The University, Vinson, Greiner and Colter
filed this lawsuit alleging invasion of privacy, and Felsher then removed the
e-mail addresses and the websites. Felsher
later created another twelve websites containing roughly the same information
as had appeared on the previously removed sites.
Pending resolution of the suit, the University
sought and obtained a preliminary injunction prohibiting Felsher from engaging
in certain Internet activities. The
court denied Felsher's motion to remove *592 the University as a
plaintiff. The trial court ultimately
granted summary judgment in favor of the University and its officials,
concluding that they have "a
protectable privacy interest in their rights to the exclusive use of their
identities .... [and that Felsher] invaded this interest when he appropriated
the[ir] names ... for use in e-mail correspondence .... and for his benefit in
creating the Internet web sites...."
(R. at 281-82, 291.)
The court's order permanently enjoined Felsher
from (1) "[a]ppropriating the names and likenesses" of the
University, Vinson, Greiner, Colter, "or the name of any other person or
individual associated with the University [ ] for any purpose"; (2) "USING THE E-MAIL ADDRESSES" he
created "or any other e-mail address that incorporates the [plaintiffs']
names ... [including] 'UE' ... or the name of any other person or individual
associated with the University"; (3) "[m]aintaining any web
site" with a URL or address containing any of the plaintiffs' names,
including UE, "or the names of any person or individual associated with
the University ..."; and (4)
"[n]ominating [ ] Vinson, [ ] Greiner, [ ] Colter or any person or
individual associated with the University for positions with any other schools,
colleges, or universities." (R. at 281-82.) [FN3]
FN3. Ironically, Dr.
Greiner has in fact recently taken up a new position, as president of Virginia
Intermont College. And Dr. Colter gave
up his position as Dean of the College of Arts and Sciences, though he remains
a UE professor and administrator.
Patricia Swanson, UE Vice President
of Academic Affairs to Leave, Evansville Courier & Press, Aug. 18,
2001, at B3. Dr. Vinson retired from
his post in mid-2001.
The Court of Appeals affirmed. Felsher
v. Univ. of Evansville,
727 N.E.2d 783 (Ind.Ct.App.2000). We grant Felsher's petition to transfer.
Standard of Review for Summary Judgment
[1][2] Summary judgment is proper if the evidence shows there is
no genuine issue of material fact and the moving party is entitled to judgment
as a matter of law. Ind.
Trial Rule 56(C);
Ind.
Dep't of Env't Mgmt. v. Med. Disposal Servs., Inc.,
729 N.E.2d 577 (Ind.2000). On appeal, we construe all facts and
reasonable inferences drawn from those facts in a light most favorable to the
nonmoving party. Butler
v. Peru,
733 N.E.2d 912 (Ind.2000). We carefully review the trial court's
decision to ensure that the responding party was not improperly denied his day
in court. Id.
I. Invasion of Privacy and Corporations
Felsher first argues that the trial court
erred because the University is not entitled to an invasion of privacy claim. [FN4] (Appellant's Br. at 13.) Felsher asserts that
the right to privacy has an "intensely personal nature" and therefore
applies to real persons and not to corporations. (Id. at 16.)
FN4. Felsher, pro se,
asserts that the University, "as with any corporation,
cannot be a party to any Invasion of Privacy action." (Appellant's Br. at
12.) We do not interpret Felsher's
statement literally to suggest that a corporation cannot be a defendant in an
invasion of privacy action.
Representatives of several news organizations,
as amici curiae, support Felsher's petition to transfer stating, "[W]ell
established privacy law ... precludes corporations from bringing an action for
invasion of privacy." (Amici Curiae Br. at 3.) [FN5] *593 Amici
accurately assert that no other state has recognized a claim for invasion of
privacy by a corporation. (Id. at 2.)
FN5. The amici curiae
include Hoosier State Press Association, LIN Television Corporation, National
Association of Broadcasters, and Society of Professional Journalists. (Amici Curiae Br. at 1-2.)
The issue of whether a corporate entity is
entitled to an invasion of privacy claim is one of first impression in
Indiana. We begin our analysis by
acknowledging the position taken in the Restatement
(Second) of Torts, § 652A(1) (1977): "One who
invades the right of privacy of another is subject to liability for the
resulting harm to the interests of the other."
This Court has previously observed that the
term "invasion of privacy" is a label used to describe "four
distinct injuries: (1) intrusion upon
seclusion, (2) appropriation of [name or] likeness, (3) public disclosure of
private facts, and (4) false-light publicity." Doe
v. Methodist Hosp.,
690 N.E.2d 681, 684 (Ind.1997) (citing Restatement
(Second) of Torts, § 652A (1977)). In Doe, we examined the genesis of the privacy
tort, apparently originating in an 1890 law review article written by Samuel
Warren and future U.S. Supreme Court Justice Louis Brandeis. Id.
Professor William Prosser later characterized the authors as heralding
"the emergence of a new, if ill-defined, right to privacy" signaled
by several decisions granting relief "on the basis of defamation or
invasion of some property right, or a breach of confidence or an implied
contract." Id. (quoting
William L. Prosser, Privacy, 48 Cal.L.Rev. 383, 384 (1960)).
In Doe, we also noted the Second
Restatement's view that the four injuries involved in the privacy tort are
"only tenuously related." Doe,
690 N.E.2d at 684. We explained that the four wrongs were
separate and "united only in their common focus on some abstract notion of
being left alone." Id.
(citing Restatement
(Second) of Torts, § 652A cmt. b (1977)). We
indicated that "recognizing one branch of the privacy tort does not entail
recognizing all four." Id.
at 685. Our discussion of this history
and the Second Restatement served as a prelude to our decision not to recognize a branch of the tort involving the
public disclosure of private facts. Id.
at 682, 693.
[3] The only injury at issue here is appropriation. [FN6] The University
argues that it may maintain an action for appropriation because the claim
addresses a property interest rather than personal feelings. (Appellees' Br. at 8 (citing Restatement
(Second) of Torts, § 652C cmt. a (1977) ("right created by [appropriation rule]
is in the nature of a property right....")).) The University also relies
on Restatement § 652I, which
says, "Except for the appropriation of one's name or likeness, an action
for invasion of privacy can be maintained only by a living individual whose
privacy is invaded." (Appellees' Br. at 8.)
FN6. Felsher also
contests the separate claim of invasion of privacy by Greiner and Colter for
placing them in a false light before the public. (Appellant's Reply Br. at 13.) Because he raised this issue for the first
time in his reply brief, it is waived. Ind.
Appellate Rule 8.3(A)(7) (now Ind.App. R.
46(A)(8); see also Ind.App. R.
46(C)("No new issues shall be raised in the reply brief.")); Senco
Prod., Inc. v. Riley,
434 N.E.2d 561, 569 (Ind.Ct.App.1982) (citation
omitted) ("Party cannot raise an argument for the first time on appeal in
his reply brief.").
[4][5] While we agree that
an appropriation claim involves a privacy issue "in the nature of a
property right," we think the University's reliance on the exception set
forth in the Restatement is misplaced.
Each of the comments to Restatement § 652I negates
the inference that a corporation is entitled to an appropriation claim.
*594 The first comment states that the
privacy right is personal. The
comment then states a rule:
"The cause of action is not assignable, and it cannot be maintained
by other persons...." Restatement
(Second) of Torts, § 652I cmt. a (1977). The
appropriation exception that follows addresses this rule, not the
personal character of the right.
The second comment discusses the general
requirement that "the action for the invasion of privacy cannot be
maintained after the death of the individual whose privacy is
invaded." Id., cmt. b. This comment states an exception for
appropriation actions due to its "similar[ity] to [an] impairment of a
property right...." The exception
is clarified as a recognition of survival rights in an appropriation action.
Finally, the third comment declares, without
exception, "A corporation, partnership or unincorporated association has
no personal right of privacy." Id., cmt. c. The comment then states that a corporation
has "no cause of action for any of the four forms of invasion covered by §
§ 652B to 652E." Id.
The following sentence in the comment indicates that although these
sections (including § 652C) do not
entitle a corporation claim, a corporation has "a limited right to the
exclusive use of its own name or identity in so far as they are of use or
benefit, and it receives protection from the law of unfair competition." Id.
This comment suggests the existence of an analogous right that
corporations may be afforded by the law of unfair competition. [FN7] See id.
("[T]his may afford it the same rights and remedies as those to which a
private individual is entitled under the rule stated in § 652C.").
FN7. Indiana's Unfair
Competition law "regulate[s] the trade practices in the business of
insurance" and is not applicable in this case. See Ind.Code
Ann. § 27-4-1-1 (West 1993).
Therefore, we think these Restatement sections
do not support the position that a corporation may bring an appropriation claim
resting on notions of privacy.
Our assessment of the Second Restatement is
consistent with an overwhelming majority of other states that have addressed
the issue of corporate actions for invasion of privacy.
Among the most recent of these is Warner-Lambert
Co. v. Execuquest Corp., 427
Mass. 46, 691 N.E.2d 545 (1998). The Supreme Judicial Court noted that it had
not previously been presented with the issue of "whether a corporation has
a corporate right to privacy entitled to the protection of [Massachusetts
privacy right law]." [FN8] Id.
at 548.
The court held that because "[a] corporation is not an 'individual'
with traits of a 'highly personal or intimate nature,' " its privacy law
did not extend protection to the corporation.
Id. Justice Margaret
Marshall [FN9] noted that
other jurisdictions have "unanimously den[ied] a right of privacy to
corporations." Id. (citations omitted). See also N.O.C.,
Inc. v. Schaefer,
197 N.J.Super. 249, 484 A.2d 729, 730-31 (1984)
(corporation is incapable of the emotional suffering the privacy tort
addresses: "humiliation and
intimate personal distress"); L.
Cohen & Co. v. Dun & Bradstreet, Inc.,
629 F.Supp. 1425, 1430 (D.Conn.1986) ("The
law of privacy is [ ] concerned with the reputational interests of individuals
rather than the less substantial reputational interests of
corporations."); *595Ion
Equip. Corp. v. Nelson,
110 Cal.App.3d 868, 168 Cal.Rptr. 361,
366 (1980) ("A corporation is a fictitious
person and has no 'feelings' which may be injured in the sense of the
tort."). [FN10]
FN8. The
Massachusetts statute provides, in part, "A person shall have a right
against unreasonable, substantial or serious interference with his privacy." Warner-Lambert
Co.,
691 N.E.2d at 548 n. 6 (citing Mass.
Gen. Laws Ann. ch. 214, § 1B).
FN9. Justice Marshall
has since become Chief Justice.
FN10. We discovered
just one opinion to the contrary. In H
& M Associates v. City of El Centro,
109 Cal.App.3d 399, 167 Cal.Rptr. 392, 399-400 (1980), the court stated that "regardless of their legal
form, [businesses] have zones of privacy which may not be legitimately
invaded." The case specifically involved a limited partnership that
claimed only economic loss. Id.
We note that the same court later explained in Ion
Equip.,
168 Cal.Rptr. at 366, that there was no
California case law that recognized a corporation's right to privacy.
Although the Second Restatement suggests that
unique circumstances may "give rise to the expansion of the four forms of
tort liability for invasion of privacy," Restatement
(Second) of Torts, § 652A cmt. c (1977), we decline to do so today. Instead, we explore the nature of relevant
Internet activities and look to business law for protection against the
misappropriation of a corporation's name.
II. The Internet and Misappropriation
The
Internet offers its subscribers access to a myriad of functions. These functions include the opportunity to
communicate, share and even exploit intellectual property. As a prelude to our examination of business
law provisions applicable to misappropriation on the Internet, we discuss the
nature of the Internet and the deceptive activities that it confronts.
Internet 101. The Internet is an international aggregation
of networks that connects numerous individual computer networks and computers. [FN11] This system of networks, also called the
World Wide Web (WWW), has been described as "a highly diffuse and complex
system over which no entity has authority or control." [FN12]
FN11. See Lockheed
Martin Corp. v. Network Solutions,
985 F.Supp. 949, 951 (C.D.Cal.1997), aff'd,
194
F.3d 980 (9th Cir.1999).
FN12. Id.
(citing ACLU
v. Reno,
929 F.Supp. 824, 830-45 (E.D.Pa.1996), aff'd,
521
U.S. 844, 117 S.Ct. 2329, 138 L.Ed.2d 874 (1997)).
Most North American websites on the Internet
register with an organization called InterNIC and receive a unique identifying
number called an Internet Protocol (IP) address. For convenience, most of these numeric
addresses are also assigned corresponding
textual addresses. For example,
Microsoft's IP address is 131.107.1.7, which can also be accessed by its
textual address, microsoft.com. This
textual address is referred to as the domain name. WWW registrants frequently select domain
names that identify the registrant's name or interest, for the same reasons
businesses and individuals have historically sought telephone numbers that were
easy to remember. As visitors to
websites delve further and further into a website beyond its home page, each
web page is stored and accessed as a separate file located by a unique address
called a Uniform Resource Locator (URL).
The last three letters of most domain names
are the highest level domain reference and serve as the primary information
Internet computers use to locate and identify the website sought. Current highest level domains include
".com" for businesses, ".net" for Internet services,
".edu" for educational institutions, ".gov" for government
agencies, ".mil" for military connections, and ".org" for
non-profit organizations. Therefore, an
Internet user can connect to the White House's website by typing in the address
field the following:
http://www.whitehouse.gov. [FN13]
FN13. The White
House, Welcome to the White House, at http:// www.whitehouse.gov (last
visited Aug. 8, 2001).
In
addition to supporting the Web, the Internet also facilitates personalized
communication *596 through electronic mail (e-mail). The portion of e-mail addresses to the left
of the "@" symbol is the user identification and typically identifies
the account owner, while that portion of the address to the right of the
"@" symbol is the domain name of the mail server. For example, a person can e-mail the
President by addressing the message to [email protected]. [FN14]
FN14. The White
House, Contacting the White House, at http:// www.whitehouse.gov/contact
(last visited Aug. 8, 2001).
Nearly anyone can create a website or an
e-mail address. Using readily available
software, the task requires little skill or investment. An individual can currently acquire and
register a unique domain name (web address), a customizable website and a
corresponding e-mail address for about $70 a year. [FN15] Such ease and affordability have stimulated
commercial businesses, educational institutions, organizations and individuals
to participate in Internet communication.
FN15. Network
Solutions, Starter Web Page Package, at http:// www.networksolutions.com/
en_US/catalog/dotcomessentials/ (last visited Aug.
8, 2001).
People purchase websites, register domain
names, and establish e-mail addresses to efficiently and effectively market and
promote products, services and ideas to the literal "world" of the
WWW. The ease of initiating these
transactions also tempts the interests of wrongdoers, particularly in the
context of domain name registrations. [FN16]
FN16. G. Gervaise
Davis III, Internet Domain Names and Trademarks: Recent Developments in
Domestic and International Disputes:
Enabling Electronic Commerce, at 609, 615-16 (PLI Pat., Copyrights,
Trademarks, & Literary Prop. Course, Handbook Series No. G0-00CW, 2000).
As alluded to earlier, the organization in
charge of maintaining the registration of North American domain names is
InterNIC. Initially, registration of
domain names occurred on a first-come, first-served basis. This policy was
discontinued after more businesses began registering names and conflicts in
requested names multiplied. [FN17] The original policy
permitted many enterprising individuals to attain domain names that were
identical or significantly similar to trademarked names that had not yet been
registered on the Internet. [FN18] These individuals, sometimes referred *597 to as cyberpredators, may
be further sub-categorized according to their purpose for registering a popular
name.
FN17. Id. at
548-49. To address this issue, the
Internet Corporation for Assigned Names and Numbers formed the Uniform Dispute
Resolution Procedure (UDRP) to provide an "expedited, electronic and
inexpensive dispute resolution[s]" to those organizations that have
adopted this method of dispute resolution.
See Philip G. Hampton, II, Legal Issues in Cyberspace, at
587, 619 (PLI Pat., Copyrights, Trademarks, & Literary Prop. Course,
Handbook Series No. G0-00OV, 2001).
UDRP utilizes single judges and slightly more expensive three-judge
panels. Julia Angwin, Are Domain
Panels the Hanging Judges of Cyberspace Court?, Wall St.J., Aug. 20, 2001,
at B1. A study by Michael Geist, a
professor at the University of Ottawa Law School, indicated that eighty-one
percent of the 3,094 cases decided since the formation of UDRP in 1999 resulted
in favor of the complaining party, i.e., the trademark holder. Id.
The study also revealed that a trademark holder has a greater chance at
a favorable result with a three judge panel.
Id.
FN18. Registration
policies now require applicants to: (1)
"warrant that their use of the domain name w[ill] not interfere with or
infringe the right of any third party in any
jurisdiction with respect to trademark, service mark, trade name, company name,
or any other intellectual property right";
(2) "indemnify the NSI from any third party claims"; and (3) "agree to relinquish a domain
name if competing claimants present evidence that the granted domain name is
identical to a valid and subsisting ... trademark...." Richard D. Harroch,
Legal Issues Associated with the Creation and Operation of Web Sites, at
537, 548-49 (PLI Pat., Copyrights, Trademarks, & Literary Prop. Course,
Handbook Series No. G0-00D6, 2000).
"Cybersquatters" are individuals who
register domain names that are well known, not to use the addresses, but to
re-sell them at a profit. For example,
the domain name "wallstreet.com" was sold for $1 million.
Cybersquatters who register previously trademarked names rarely prevail in
litigation between the squatter and the holder of the trademark. [FN19]
FN19. See Panavision
Int'l v. Toeppen,
141 F.3d 1316 (9th Cir.1998). In addition to previously existing trademark
law, this problem is also remedied under the Anticybersquatting Consumer
Protection Act (ACPA), 15
U.S.C. § 1125(d)(1999). The ACPA creates
liability for the registration or use of a domain name that is "identical
or confusingly similar" to a distinctive mark where the registration or
use is motivated by a "bad faith intent
to profit from that mark." 15
U.S.C. § 1125(d)(1)(A)(1999).
Unlike cybersquatters, "copycats"
register a domain name and use the address to operate a website that
intentionally misleads users into believing they are doing business with
someone else. Copycats either beat the
legitimate organization to a domain name or register a close variation of an
organization's domain name. The latter
most frequently occurs when a unique spelling of an organization's name and/or
domain name makes a close, but different spelling believable to a web user.
Copycat domain name use is "intentionally
inimical to the trademark owner."
For example, in Planned Parenthood Federation of America, Inc. v.
Bucci, No. 97 Civ. 0629(KMW) 1997
WL 133313, at *1, *12 (S.D.N.Y. Mar.24, 1997), aff'd,
152
F.3d 920 (2d Cir.1998), cert. denied, 525
U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998),
the defendant was enjoined from using the domain name plannedparenthood.com,
which he had previously registered and used to display anti-abortion material.
Similarly, in Jews
for Jesus v. Brodsky,
993 F.Supp. 282, 290-91, 313 (D.N.J.1998), the
defendant was enjoined from using the registered domain name
"jewsforjesus.org," where he had previously created a website for the
purpose of contradicting the teachings of the actual Jews for Jesus
organization. Our previous example,
whitehouse.gov, has also fallen prey to a
notorious, though unlitigated, example of copycat use.
Felsher's Folios. Felsher's actions seem to fall in this
second category of cyberpredators. He
created the imposter websites and e-mail addresses for the sole purpose of
harming the reputation of the University and its officials.
Thus, it might seem appropriate to grant the
University the relief gained by the plaintiffs in Planned Parenthood and
Jews for Jesus. These plaintiff
organizations, however, based their claims on provisions of the Lanham
Trade-Mark Act, 15
U.S.C. § § 1114, 1125(a),
(c) (trademark infringement, trademark dilution,
unfair competition and false designation of origin). Planned
Parenthood,
1997 WL 133313, at *3; Jews
for Jesus,
993 F.Supp. at 294.
[6] These trademark actions require commercial use of the
domain name. See 15
U.S.C. § 1125(c)(4)(B) (1999) (noncommercial use of a mark is not actionable under this
section). Courts have held, "The
mere registration of a domain name, without more, is not a 'commercial use' of
a trademark." Jews
for Jesus,
993 F.Supp. at 307 (citations omitted). The Lanham Act does not include claims for
non-commercial use of a trademark in order to "prevent courts from
enjoining constitutionally *598 protected speech." Id. (citing Panavision
International, L.P. v. Toeppen,
945 F.Supp. 1296, 1303 [C.D.Cal.1996] ).
In any event, the plaintiffs here do not
assert a right to relief under the Lanham
Act, so we need not debate whether the "commercial use" requirement
for trademark actions is satisfied by domain name registration and
corresponding presentation of information on a website.
[7] Applicable Law.
Amici curiae argue that an appropriate remedy for the misappropriation
of a corporation name or likeness is found under the state unfair competition
law and trademark statutes, as well as common law torts unrelated to notions of
privacy, such as tortious interference with business relations. [FN20] (Amici Curiae Br.
at 5.) We agree.
FN20. Amici also
suggest that a corporation may protect intellectual property interests in
federal trademark and copyright law.
(Amici Curiae Br. at 5.)
Indiana Unfair Competition. Indiana courts have created a cause of
action for unfair competition, defined as "the attempt to create confusion
concerning the source of the unfair competitor's goods." Westward
Coach Mfg. Co. v. Ford Motor Co.,
388 F.2d 627, 633 (7th Cir.1968), cert.
denied, 392
U.S. 927, 88 S.Ct. 2286, 20 L.Ed.2d 1386 (1968)
(citations omitted). See Rader
v. Derby,
120 Ind.App. 202, 89 N.E.2d 724 (1950); Hartzler
v. Goshen Churn & Ladder Co.,
55 Ind.App. 455, 104 N.E. 34 (1914). This common law tort was historically
considered "a subspecies of the class of torts known as tortious interference with business or
contractual relations." William L.
Prosser, Prosser, Law of Torts 956 (4th ed. 1971). [FN21]
FN21. The elements
of tortious interference with business relationships are "(1) the
existence of a valid relationship; (2)
the defendant's knowledge of the existence of the relationship; (3) the defendant's intentional interference
with that relationship; (4) the absence
of justification; and (5) damages
resulting from defendant's wrongful interference with the
relationship." Levee
v. Beeching,
729 N.E.2d 215, 222 (Ind.Ct.App.2000).
In Hartzler, our appellate court
described unfair competition as "any conduct, the natural and probable
tendency and effect of which is to deceive the public so as to pass off the
goods or business of one person as and for that of another...." 55
Ind.App. at 464, 104 N.E. at 37 (citation
omitted). The court further explained:
Unfair competition is always a question of fact. The question to be determined in every case
is whether or not, as a matter of fact, the name or mark used by defendant has
previously come to indicate and designate plaintiff's goods, or to state it
another way, whether defendant, as a matter of fact, is by his conduct passing
off his goods as plaintiff's goods, or his business
as plaintiff's business.
55
Ind.App. at 465-66, 104 N.E. at 38 (citation
omitted).
Professor Prosser's successor has characterized
such causes of action in the following manner:
Unfair competition ... does not describe a single course of
conduct or a tort with a specific number of elements; it instead describes a general category into
which a number of new torts may be placed when recognized by the courts. The
category is open-ended, and nameless forms of unfair competition may be
recognized at any time for the protection of commercial values.
W. Page Keeton, Prosser and Keeton on the
Law of Torts, 1015 (5th ed. 1984).
Professor Prosser himself illustrated unfair competition this way: "Though trade *599 warfare may be
waged ruthlessly to the bitter end, there are certain rules of combat which
must be observed. The trader has not a
free lance. Fight he may, but as a
soldier, not as a guerilla."
William L. Prosser, Prosser, Law of Torts 956 (4th ed. 1971).
Indiana Trademark Act. The Indiana Trademark Act, contained in
Indiana Code chapter 24-2-1, adopts a similar test for the infringement of
trademarks registered in the state. The
act does not "adversely affect the rights or the enforcement of rights in
trademarks acquired in good faith at any time at common law." Ind.Code
Ann. § 24-2-1-15 (West 1995). The
act provides:
(a) use, without the consent of the registrant, any
reproduction, counterfeit, copy, or colorable imitation of a trademark
registered under this chapter in connection with the sale, offering for sale,
or advertising of any goods or services on or in connection with which such use
is likely to cause confusion or mistake or to deceive as to the source or
origin of such goods or services ... shall be liable to a civil action by the
owner of such registered trademark for any or all of the remedies provided in
... this chapter....
Id. at § 24-2-1-13.
The act defines a "trademark" as "any word, name, symbol,
or device or any combination thereof adopted and used by a person to identify
goods or services made, sold, or rendered by him and to distinguish them from
goods or services made, sold, or rendered by others." Id. at § 24- 2-1-2(a). Registration of the trademark with the
office of the Secretary of State provides the registrant a remedy against the
infringement of the registered trademark.
Id. at § § 24-2-1-4, 13,
14. [FN22]
FN22. "Any owner
of a trademark registered under this chapter may proceed by suit to enjoin the
manufacture, use, display, or sale of any counterfeits or imitations thereof,
and any court of competent jurisdiction may grant injunctions to restrain such
[activity]...." Id. at
§ 24-2-1- 14(a).
[8] It is frequently
feasible to pour new wine into old legal bottles. A number of these statutes
and common law rules might well suffice as a foundation for the relief sought
by the University. They have not been
pled, however, and we find it difficult to use them here as a basis to sustain
the trial court's judgment, as we sometimes do, "on any grounds apparent
in the record." [FN23]
FN23. See Wilkinson
v. State,
743 N.E.2d 1267, 1269 (Ind.Ct.App.2001) (citing Alford
v. State,
699 N.E.2d 247, 250 (Ind.1998)).
III. Injunctive
Relief
Felsher argues that the trial court's grant of
summary judgment and order permanently enjoining him was erroneous because it
was unnecessary and too broad.
(Appellant's Br. at 17, 20.)
Necessity of Injunction. Felsher argues that the plaintiffs were not
in danger of irreparable harm in absence of either the temporary or permanent
injunction. (Appellant's Br. at
21.) Felsher asserts that this danger
does not exist because he voluntarily removed his website and e-mail addresses
and "promise[d] to cease nominating."
(Appellant's Br. at 20.)
The trial court based its decision to grant
injunctive relief on its finding that
Felsher composed and sent e-mail messages purposefully appearing to have been
authored by either Vinson or Colter. (R.
at 289.) Felsher used the e-mail to
nominate Greiner and Colter for employment *600 and refer recipients of
the mail to contrived web sites containing resumes of each nominee. (R. at 289-90.) The court also found that the recipients of
the e-mail mistakenly believed that the messages were sent by Vinson or
Colter. (R. at 289.) The court recognized the plaintiffs' injury
by finding:
15. The
misappropriation of Plaintiffs' names and reputations was for Defendant's
advantage in that it enabled him to pursue a personal vendetta against the
University.
16. Defendant's unauthorized misappropriation of
Plaintiffs' names, reputations and likenesses has invaded Plaintiffs' rights to
privacy, and as a direct and proximate result of [D]efendant's acts, Plaintiffs
have suffered irreparable injury.
(R. at 290.)
The reasonable inference that may be drawn
from these findings is that Felsher might well continue his retaliatory
endeavors via the Internet if he is not enjoined from doing so. Felsher removed the objectionable e-mail
accounts and websites only after he received notice of the plaintiffs'
complaint. His assertion that this
voluntary action, along with his promise, relieves any necessity for an
injunction is unsupported. Removed
e-mail accounts and websites are easily
replaced. Felsher's actions are only
facially remedial and provide no assurance that he will permanently discontinue
his Internet activities against the University and its officers.
[9] The trial court's findings and the reasonable inferences
that they provide confirm that the trial court acted within its discretion when
it enjoined Felsher.
Scope of Injunction. The trial court enjoined Felsher from
appropriating the name, or using or maintaining a website or e-mail address
incorporating the name, of the plaintiffs and also "any other person or
individual associated with the University ... for any purpose." (R. at 281.)
The court also enjoined Felsher from nominating the plaintiffs "or
any other person or individual associated with the University ... for positions
with any other schools, colleges or universities." (R. at 281.)
Felsher argues that the court's permanent
injunction was "unreasonably overbroad in its inclusion of an infinite
number of anonymous non-plaintiffs."
(Appellant's Br. at 17.) Felsher
asserts that the injunction should have been limited to the individuals named
in the complaint: Vinson, Greiner and
Colter.
[10][11] Injunctions must be narrowly tailored, and never more
extensive in scope than is reasonably necessary to protect the interests of
aggrieved parties. Day
v. Ryan,
560 N.E.2d 77, 83 (Ind.Ct.App.1990). The reputation of the University is directly proportional to
the reputation of the individuals it employs.
Having noted Felsher's propensity to continue his pursuit against the
University and the University officers, the trial court did not abuse its
discretion by extending its injunctive order in paragraphs 1-3 to include
"any other person or individual associated with the University...."
(R. at 281.)
[12] However, the fourth paragraph of the permanent injunction
requires revision. It enjoins Felsher
from "[n]ominating Dr. James S. Vinson, Dr. Stephen G. Greiner, Dr. Larry
W. Colter or any other person or individual associated with the University of
Evansville for positions with any other schools, colleges or
universities." (Id.) Taken literally, the order prevents Felsher
from sending nominations even under his own name. This relief is unnecessary to protect the
University officers from misappropriations by Felsher and thus exceeded the
trial court's discretion. *601
This error can be resolved by modifying the paragraph to clarify that Felsher
is enjoined from creating the appearance that his nominations are from anyone
other than himself.
Felsher also argues that the trial court erred
when it enjoined him from appropriating the "names and likenesses" of
the University, its officials or any other person associated with the
University. (Appellant's Br. at 19; R. at 281.)
Felsher's misappropriation involved only the use of the plaintiffs'
names. He essentially argues that the
order was too broad because the plaintiffs
did not present evidence indicating that he misappropriated any
"likenesses." (Id.)
[13] The phrase "name or likeness" is commonly used
in the context of misappropriation. See
Restatement
(Second) of Torts, § 652C (1977). It embraces the
concept of a person's character, which is legally protected against
appropriation by another for his own use or benefit. The terms are appropriately paired due to
their similar purpose and function: identification. [FN24]
FN24. "The
first form of invasion of privacy to be recognized by the courts consists of
the appropriation, for the defendant's benefit or advantages, of the
plaintiff's name or likeness." W.
Page Keeton, Prosser and Keeton on the Law of Torts 851 (5th ed.
1984). "[I]t is the appropriation
of identity that is important."
David A. Elder, The Law of Privacy 393 (1991).
[14] The trial court's findings indicate that Felsher
intentionally invaded the privacy of the plaintiffs by creating and modifying
websites and e-mail addresses containing their names. It is reasonably foreseeable that Felsher
will misappropriate the likenesses of the plaintiffs by further availing
himself of the Internet's capacity to feature photographs, images or other representations of identity. Therefore, the trial court properly included
the phrase "names and likenesses" when it enjoined Felsher.
Conclusion
We affirm the trial court's injunction on
behalf of the three University officers, and other individuals, with the modest
modification just mentioned.
Concluding that the University itself has no
claim in the nature of common law privacy, we reverse that portion of the
injunction relating to the institution, noting that it may be entitled to
similar relief under other law not so far pleaded.
DICKSON, SULLIVAN, BOEHM, and RUCKER, JJ., concur.
755 N.E.2d 589, 157 Ed. Law Rep. 289, 60
U.S.P.Q.2d 1983, 29 Media L. Rep. 2581
END OF
DOCUMENT