|March 22 2000
v. Zuccarini, No. 00-494
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
JOSEPH C. SHIELDS, individually : CIVIL
and t/a THE JOE CARTOON CO. :
JOHN ZUCCARINI, individually :
and t/a CUPCAKE CITY : NO. 00-494
Dalzell, J. March 22, 2000
We are faced in this case with one of
the first motions for a preliminary injunction under the new
Anticybersquatting Consumer Protection
Act ("ACPA"), Pub. L. No. 106-113 (1999) (to be codified at 15
U.S.C. 1125(d)). We yesterday held
a hearing on the motion, which defendant John Zuccarini (who also
trades as Cupcake City) vigorously
This memorandum will constitute our
findings of fact and conclusions of law under Fed. R. Civ. P. 52(a).
For the reasons that follow, we will
grant the motion and enjoin Zuccarini from using his variations of the
"Joe Cartoon" domain name during the
pendency of this action.
Plaintiff Joseph Shields, a graphic
artist from Alto, Michigan, creates, exhibits, and markets cartoons under
the names "Joe Cartoon" and "The Joe
Cartoon Co." His creations include the popular "Frog Blender",
"Micro-Gerbil", and "Live and Let Dive"
animations. Shields licenses his cartoons to others for display on
T-shirts, coffee mugs, and other items,
many of which are sold at gift stores across the country. He has
marketed his cartoons under the "Joe
Cartoon" label for the past fifteen years.
On June 12, 1997, Shields registered
www.joecartoon.com as his World Wide Web site and has operated
it ever since. Visitors to the site
can download Shields's animations and purchase Joe Cartoon
merchandise. Since April, 1998, when
it won "shock site of the day" from Macromedia, Joe Cartoon's Web
traffic has increased exponentially,
now averaging over 700,000 visits per month.
In November of 1999, Zuccarini, an Andalusia,
Pennsylvania "wholesaler" of Internet domain names,(1)
registered five World Wide Web variations
on Shields's site: joescartoon.com, joecarton.com,
and cartoonjoe.com. Before Shields filed this action, Zuccarini's sites
featured advertisements for other sites
and credit card companies. Visitors were trapped or
"mousetrapped" in the sites, unable
to exit without clicking on a succession of ads. Zuccarini received
between ten and twenty-five cents from
the advertisers for every click. Immediately after Shields filed this
suit,(2) Zuccarini changed the five
sites to "political protest" pages and posted the following message on
This is a page of POLITICAL PROTEST
- Against the web site joecartoon.com
joecartoon.com is a web site that depicts
the mutilation and killing of animals in a shockwave based
cartoon format -- many children are
inticed to the web site, not knowing what is really there and then
encouraged to join in the mutilation
and killing through use of the shockwave cartoon presented to them.
- Against the domain name policys of
- Against the CyberPiracy Consumer Protection
As the owner of this domain name, I
am being sued by joecartoon.com for $100,000 so he can use this
domain to direct more kids to a web
site that not only desensitizes children to killing animals, but makes
seem like great fun and games.
I will under no circumstances hand this
domain name over to him so he can do that.
I hope that ICANN and Network Solutions
will not assist him to attaining this goal.
If you support in me this -- please
write to ICANN and Network Solutions and tell them how you feel.
- Thank you -
Pl.'s Ex. 3.
Shields's complaint invokes the ACPA
as well as federal and state unfair competition law, and seeks
injunctive relief, statutory damages,
and attorneys' fees. The complaint originally named Network
Solutions, Inc. and the Internet Corporation
for Assigned Names and Numbers as defendants, but on
February 11, 2000, Shields filed a
voluntary notice of dismissal with respect to these defendants.
On March 17, 2000, we denied Shields's
motion for summary judgment, holding that Zuccarini had raised a
material issue of fact under the ACPA.
See March 17, 2000 Order. We also denied Shields's motion to
consolidate the final trial on the
merits with the preliminary injunction hearing, as Zuccarini has only
recently retained counsel and has not
had a full opportunity to take discovery or prepare a defense.
After affording the parties a brief
time for expedited discovery, we held a hearing on the preliminary
injunction motion yesterday at which
we heard testimony from the protagonists.
The ACPA, which became law on November
29, 1999, is designed to "'protect consumers and American
businesses, . . . promote the growth
of online commerce, and . . . provide clarity in the law for trademark
owners by prohibiting the bad-faith
and abusive registration of distinctive marks as Internet domain
names with the intent to profit from
the goodwill associated with such marks -- a practice commonly
referred to as "cybersquatting."'"
Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 495 (2d
Cir. 2000) (quoting S. Rep. No. 106-140,
at 4). The ACPA, which amended 43 of the Lanham Act, provides
(d) Cyberpiracy Prevention.
(1)(A) A person shall be liable in a
civil action by the owner of a mark, including a personal name which is
protected as a mark under this section,
if, without regard to the goods or services of the parties, that
(i) has a bad faith intent to profit
from that mark, including a personal name which is protected as a mark
under this section; and
(ii) registers, traffics in, or uses
a domain name that-
(I) in the case of a mark that is distinctive
at the time of registration of the domain name, is identical or
confusingly similar to that mark;
(II) in the case of a famous mark that
is famous at the time of registration of the domain name, is
identical or confusingly similar to
or dilutive of that mark; or
(III) is a trademark, word, or name
protected by reason of section 706 of title 18, United States Code, or
Section 380 of Title 36, United States
(B)(i) In determining whether a person
has a bad faith intent described under subparagraph (A), a court
may consider factors such as, but not
(I) the trademark or other intellectual
property rights of the person, if any, in the domain name;
(II) the extent to which the domain
name consists of the legal name of the person or a name that is
otherwise commonly used to identify
(III) the person's prior use, if any,
of the domain name in connection with the bona fide offering of any
goods or services;
(IV) the person's bona fide noncommercial
or fair use of the mark in a site accessible under the domain
(V) the person's intent to divert consumers
from the mark owner's online location to a site accessible
under the domain name that could harm
the goodwill represented by the mark, either for commercial gain
or with the intent to tarnish or disparage
the mark, by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement
of the site;
(VI) the person's offer to transfer,
sell, or otherwise assign the domain name to the mark owner or any
third party for financial gain without
having used, or having an intent to use, the domain name in the bona
fide offering of any goods or services,
or the person's prior conduct indicating a pattern of such conduct;
(VII) the person's provision of material
and misleading false contact information when applying for the
registration of the domain name, the
person's intentional failure to maintain accurate contact information,
or the person's prior conduct indicating
a pattern of such conduct;
(VIII) the person's registration or
acquisition of multiple domain names which the person knows are
identical or confusingly similar to
marks of others that are distinctive at the time of registration of such
domain names, or dilutive of famous
marks of others that are famous at the time of registration of such
domain names, without regard to the
goods or services of the parties; and
(IX) the extent to which the mark incorporated
in the person's domain name registration is or is not
distinctive and famous within the meaning
of subsection (c)(1) of section 43.
(ii) Bad faith intent described under
subparagraph (A) shall not be found in any case in which the court
determines that the person believed
and had reasonable grounds to believe that the use of the domain
name was a fair use or otherwise lawful.
(C) In any civil action involving the
registration, trafficking, or use of a domain name under this paragraph,
a court may order the forfeiture or
cancellation of the domain name or the transfer of the domain name to
the owner of the mark.
(D) A person shall be liable for using
a domain name under subparagraph (A) only if that person is the
domain name registrant or that registrant's
(E) As used in this paragraph, the term
"traffics in" refers to transactions that include, but are not limited
to, sales, purchases, loans, pledges,
licenses, exchanges of currency, and any other transfer for
consideration or receipt in exchange
In Bargain Bid v. Ubid, No. CV-99-7598
(E.D.N.Y. Jan. 3, 2000), Judge Leonard Wexler granted a
preliminary injunction under the ACPA
against conduct similar to the actions at issue here. See "Federal
Cybersquatter Law Survives First Test
in N.Y.", The Legal Intelligencer, Jan. 19, 2000, at 4.
Preliminary Injunction Standard
When ruling on a motion for a preliminary
injunction, we consider four factors:
(1) the likelihood that plaintiff will
prevail on the merits at final hearing;
(2) the extent to which plaintiff is
being irreparably harmed by the conduct complained of;
(3) the extent to which defendant will
suffer irreparable harm if the preliminary injunction is issued; and
(4) whether the injunction would serve
the public interest.
See, e.g., Pappan Enters. v. Hardee's
Food Sys., Inc., 143 F.3d 800, 803 (3d Cir. 1998); see also Adams v. Freedom
Forge Corp., App. No. 99-3570, 2000 WL 251639, at *6 (3d Cir. Mar. 7, 2000)
("A court may not grant [preliminary] injunctive relief without satisfying
[elements one and two above], regardless of what the
equities seem to require.").
A. Shields's Likelihood of
Success on the Merits Under the ACPA
We must make three inquiries under the
ACPA. First, we must determine whether "Joe Cartoon" is a
distinctive or famous mark entitled
to protection. Second, we must determine if Zuccarini's domain names
are "identical or confusingly similar
to" Shields's mark. Finally, we must decide if Zuccarini registered the
domain names with a bad-faith intent
to profit from them (and, similarly, if Zuccarini is entitled to
protection under the safe harbor of
1125(d)(1)(B)(ii)). Cf. Sporty's Farm, 202 F.3d at 497-99.
1. "Distinctive" or "Famous"
Under 15 U.S.C. 1125(d)(1)(A)(ii)(I)
and (II), we must first determine if "Joe Cartoon" is a "distinctive" or
"famous" mark and therefore is entitled
to protection under the ACPA. In Sporty's Farm, the Second Circuit
applied the criteria laid out in 15
U.S.C. 1125(c)(1) in making this determination, and we will do the same.
We conclude that, for purposes of the
preliminary injunction motion, "Joe Cartoon" is both distinctive and
famous and therefore is entitled to
The first criterion under 1125(c) is
"the degree of inherent or acquired distinctiveness of the mark." As far
as we (or the parties) know, Shields
runs the only "Joe Cartoon" operation in the nation and has done so
for the past fifteen years. This factor
suggests both the inherent and the acquired distinctiveness of the
mark. Also, the name "Joe Cartoon"
is, in our opinion, unique and colorful, despite the fact that "Joseph"
was the ninth most popular name in
America in the 1990 census.(4) See Ron Word, "Land of Odd Names,
from Cute to Desperate," The Star-Ledger
(Newark), Jan. 19, 1997, at 44.
The second factor under 1125(c) is "the
duration and extent of use of the mark in connection with the
goods or services with which the mark
is used." Shields has used "Joe Cartoon" for the past fifteen years,
and joecartoon.com for the past two
and a half years, in connection with his animations and the sale of
products featuring his drawings. This
is long enough for us to find that "Joe Cartoon" has acquired some
fame in the marketplace.(5) Shields's
success with his mark is also evidenced in a recent New York Times
page one story, which quoted him and
cited Joe Cartoon, see Andrew Pollack, "Show Business Embraces
Web, But Cautiously," The New York
Times, Nov. 9, 1999, at A1, C6 (Pl.'s Ex. 20). This is further evidence
of "Joe Cartoon"'s fame.(6)
The third factor is "the duration and
extent of advertising and publicity of the mark." Joe Cartoon t-shirts
have been sold across the country since at least the early 1990's, and
its products appear on the Website
of at least one nationally known retail
chain, Spencer Gifts. Shields has also advertised in an online humor
magazine with a circulation of about
1.4 million. As the Joe Cartoon Website receives in excess of 700,000
visits per month, it has received wide
publicity and advertising. According to Shields, word-of-mouth also
generates considerable interest in
the Joe Cartoon site.
The fourth factor is "the geographical
extent of the trading area in which the mark is used." It seems
beyond dispute that Shields trades
nationwide in both real and virtual markets. Obviously, Joe Cartoon's
site on the World Wide Web gives it
a global reach.
The fifth factor is "the channels of
trade for the goods and services with which the mark is used." Shields's
cartoons and merchandise are marketed
on the Internet, in gift shops, and at tourist venues. An Internet
user searching for one of Shields's
cartoons would have difficulty locating it without using the words "Joe
Cartoon." As noted, "Joe Cartoon" products
are distributed nationally through the Spencer Gifts Website,
and the joecartoon.com site attracts
almost ten million visitors per year.
The sixth factor is "the degree of recognition
of the mark in the trading areas and channels of trade used
by the marks' owner and the person
against whom the injunction is sought." In contrast to the huge
following Shields has won for his Joe
Cartoon site, Zuccarini's very business existence depends upon his
parasitic use of others' names, ranging
from Gwyneth Paltrow to Jessica Rabbit to Sony Television to Star
Finally, the seventh factor is "the
nature and extent of use of the same or similar marks by third parties."
As we discussed above, neither we nor
the parties are aware of any other Joe Cartoon.
Thus, in light of the above, we conclude
that "Joe Cartoon" is both distinctive and famous. Under the
ACPA, however, a mark is protected
if it is distinctive or famous, see 15 U.S.C. 1512(d)(1)(A)(ii)(I) and
(II), and "Joe Cartoon" therefore need
only be one or the other to be protected.
2. "Identical or Confusingly Similar"
Our next inquiry is whether Zuccarini's
domain names are "identical or confusingly similar to" Shields's
mark. As the domain names are for all
practical purposes identical to "joecartoon.com", and because, as
discussed infra, Zuccarini registered
them for that very reason, we easily conclude that they are
"confusingly similar." Cf. Sporty's
Farm, 202 F.3d at 497-98. Also, Shields has produced evidence of
Internet users who were confused by
Zuccarini's sites, bolstering our conclusion. See, e.g., Pl.'s Ex. 22,
 (a copy of an e-mail message stating,
"I tried to look up you[r] website yesterday afternoon and a
protest page came up. Will I have trouble
entering the site at times because of this?").
3. "Bad Faith Intent to Profit"
Our final inquiry under the ACPA is
whether Zuccarini acted with a bad faith intent to profit from Shields's
distinctive and famous mark. Section
1125(d)(1)(B)(i) provides a nonexhaustive list of nine factors for us
to consider when making this determination,
and 1125(d)(1)(B)(ii) provides a safe harbor for Zuccarini if
he can show that he reasonably believed
that his use of the domain names was fair and lawful.
During his deposition and before us,
Zuccarini admitted that he registered the variations on "Joe Cartoon,"
as well as thousands of other domain
names, because they are confusingly similar to others' famous
marks or personal names -- and thus
are likely misspellings of these names -- in an effort to divert
Internet traffic to his sites.(7) See
Pl.'s Ex. 12, at 42-44, 67-69. For example, he has registered obvious
misspellings of celebrities' names,
such as gwenythpaltrow.com, rikymartin.com, and britineyspears.com.
He also has registered variations on popular product and website names,
like sportillustrated.com, mountianbikes.com, and msnchatrooms.com. This
conduct is compelling evidence of his bad faith. See 15 U.S.C. 125(d)(1)(B)(i)(V)
Also, Zuccarini conducts no bona fide
business and offers no goods or services that have anything to do
with "Joe Cartoon" or with any of the
other sites he has registered, see 15 U.S.C. 1125(d)(1)(B)(i)(III).(8)
He has no trademark or intellectual
property rights in any form of "Joe Cartoon," see 15 U.S.C.
1125(d)(1)(B)(i)(I), and "Joe Cartoon"
is not even close to his personal name, see 15 U.S.C. 1125(d)(1)(B)(i)(II).
Finally, the mark is distinctive and famous, as discussed supra. See 15
Thus, there is overwhelming evidence
that Zuccarini acted with a bad-faith intent to profit when he
registered these five domain names.
He claims, however, that he is entitled to protection under 15 U.S.C.
1125(d)(1)(B)(ii), because he reasonably
believed that his use was lawful and proper. He argues that his
only intent was to protest the graphic
and gruesome depictions of brutality to animals in Shields's
cartoons.(9) We reject this argument,
for several reasons.
First, Zuccarini used his "Joe Cartoon"
websites for purely commercial purposes before Shields filed this
action. We find it incredible that
Zuccarini intended to use the domain names for political speech all along,
yet only happened to get around to
changing the websites' content after Shields sued him for thousands
of dollars and injunctive relief in
Second, the vast majority of Zuccarini's
many websites are not political fora but are merely vehicles for
him to make money. Indeed, most of
his sites suggest that they lead to sexually explicit material, even
though not all do. See, e.g., www.victoriasecretsmodel.com.
It strains credulity to believe that he uses 99.9% of his domain names
for profit but reserves his Joe Cartoon domains for fair and lawful political
Third, while some may find Shields's
cartoons in poor taste, they are hardly realistic and graphic. In fact,
some of the images are rather cute.
See, e.g., the frog in "Frog Blender" or the lemmings competing for
diving medals in "Live and Let Dive".
In any event, this is tame stuff compared with the regular catastrophes
that befall Wile E. Coyote.
We thus find it hard to believe, in
light of all of the graphic, violent, and far more troubling images present
in our popular culture, that Shields's
cartoons so shocked and appalled Zuccarini that he was sincerely
compelled to launch a political protest.
He admitted to us that he did not, for example, protest the frog
apocalypse in Magnolia. He conceded
that he has never before complained about animals' depictions to
anyone. He has never belonged to an
organization that champions animal rights. To the contrary, he maintains
domain names such as www.sexwithanimal.com and www.girlwithanimals.com.
In short, we conclude that Zuccarini's
claim of good faith and fair use is a spurious explanation cooked up
purely for this suit, and we reject
it out of hand. We therefore find that Shields is likely to prevail on
merits of his ACPA claim.(11)
B. Irreparable Harm to Shields
If the Injunction is Not Granted
In Opticians Ass'n v. Independent Opticians,
920 F.2d 187, 196 (3d Cir. 1990), a trademark infringement
case, our Court of Appeals held that
a finding of irreparable injury can be based on a finding of a likelihood
of confusion. Although the standard
under the ACPA is "confusingly similar" rather than a "likelihood of
confusion", we find that the factors
the Opticians Ass'n court looked to -- the threat of damage to the
plaintiff's reputation, and the loss
of trade, good will, and control over one's reputation -- are relevant
There is a real danger that Shields
will suffer damage to his reputation and a loss of good will if Zuccarini
is allowed to operate his offending
websites.(12) Furthermore, this sort of injury is not easily compensable
after the fact, as it will be nearly impossible to discover how many Internet
users did not visit Shields's site because of Zuccarini's domain names.(13)
Also, damage to reputation is not easily quantifiable, nor is the intangible
control over one's reputation.
We therefore conclude that Shields will
be irreparably harmed if we do not grant the injunction. Cf.
Freedom Forge, 2000 WL 251639, at *6.
C. The Balance of Hardships
Also relevant to our inquiry is any
harm Zuccarini will sustain if we grant the injunction. Because content
removed from the sites can be replaced
with a few clicks of the mouse should Zuccarini prevail on the
merits, no irreversible harm will flow
from an order to cease use of the Joe Cartoon sites. Also, because
Zuccarini has converted the sites to
"political protest" pages from which he (presumably) derives no profit,
he will not sustain any economic damage
from an order to stop using them. Nor can he argue that such an
order would violate his First Amendment
right to free speech, as he has plenty of other outlets for his
protest (i.e., just one of the three
thousand domain names he owns would provide a sufficient forum).
Zuccarini has failed to articulate any
way in which he would be harmed if we grant the injunction.
D. The Public Interest
In Opticians Ass'n, 920 F.2d at 197,
our Court of Appeals held that, in trademark cases, "public interest .
. is . . . a synonym for the right
of the public not to be deceived or confused." In the instant case, Zuccarini
admits that he is literally in the
business of profiting on the public's confusion. He makes money with each
Internet user he deceives, and his
revenue stream suggests that he deceives many people. This factor
confirms that Shields is entitled to
Zuccarini's Constitutional Defense
At the hearing yesterday, Zuccarini
argued that a retroactive application of the ACPA (i.e., the application
of the Act to domain names registered
before its passage) is an unconstitutional taking without due
process of law in violation of the
Fifth Amendment. In support of this argument, he cites Armendariz v.
Penman, 75 F.3d 1311 (9th Cir. 1996),
Unity Real Estate Co. v. Hudson, 178 F.3d 649 (3d Cir. 1999), and
Good v. United States, 189 F.3d 1355
(D.C. Cir. 1999).
Zuccarini brought these cases to our
attention for the first time at the close of the hearing and has failed
to articulate how they are even relevant
to the instant action. We are at a loss to see how they could
apply to this case. Good involved the
Government's regulation of a landowner's development of his real
property. Armendariz was a 1983 case
based on Government sweeps of low-income housing units and the subsequent
closings of public buildings. Lastly, Unity was a Coal Act case dealing
with contributions to
employee health and welfare funds by
former coal mine operators.
Much more to the point is Sporty's Farm,
202 F.3d at 502, where the Second Circuit addressed the issue of
the retroactive application of the
ACPA and held that, because an injunction would provide only
prospective relief -- in other words,
would only avoid continuing harm from use of the domain name -- the
new law posed no retroactivity problem.
See also Landgraf v. USI Film Prods., 511 U.S. 244, 273 (1994)
("[A]pplication of new statutes passed
after the events in suit is unquestionably proper in many situations.
When the intervening statute authorizes
or affects the propriety of prospective relief, application of the
new provision is not retroactive.");
Viacom, Inc. v. Ingram Enters., 141 F.3d 886, 889 (8th Cir. 1998)
(holding that trademark dilution was
a continuing wrong and therefore that relief was prospective even if
use of the trademark began before the
enactment of the relevant statute).
Similarly, because any relief we grant
will be designed to redress a wrong that continued after November
29, 1999 -- i.e., Zuccarini's unlawful
use of the infringing domain names -- we at this stage reject his
retroactivity argument. He has failed
to convince us that he is likely to prevail on a retroactivity defense
final hearing. On this limited record
and without the benefit of any briefing, we will not engage in any
further analysis of the ACPA's constitutionality.
We merely hold that Zuccarini has not shown that he is
likely to prevail on a theory that
the ACPA is unconstitutionally retroactive or countenances an
unconstitutional "taking" by a nongovernmental
Zuccarini has engaged in exactly the
type of conduct the ACPA is designed to prevent, and Shields will suffer
irreparable harm unless we enjoin this flagrant violation of his rights.
We entertain no doubt that Shields is entitled to a preliminary injunction.
An Order follows.
IN THE UNITED STATES DISTRICT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
JOSEPH C. SHIELDS, individually : CIVIL
and trading as THE JOE CARTOON :
JOHN ZUCCARINI, individually :
and t/a CUPCAKE CITY : NO. 00-494
AND NOW, this 22nd day of March, 2000,
upon consideration of plaintiff's motion for a preliminary
injunction and defendant's response
thereto, and after expedited discovery and a hearing this day, and for
the reasons stated in the accompanying
Memorandum, it is hereby ORDERED that:
1. The motion is GRANTED;
2. Defendant John Zuccarini, individually
and trading as Cupcake City, and all other persons acting in
concert with him, is ENJOINED during
the pendency of this action from using or abetting the use of the
domain names joescartoon.com, joecarton.com,
joescartons.com, joescartoons.com, cartoonjoe.com, and
any other cognate domain name (the
"Infringing Domain Names");
3. The defendant shall forthwith, and
at his own expense, deactivate the Infringing Domain Names, and
evidence to this Court of such deactivations
by March 31, 2000; and
4. Plaintiff shall post security in
the amount of $1,000.00.
BY THE COURT:
Stewart Dalzell, J.
1. "Wholesaling" refers to the practice
of acquiring multiple domain names with the intent to profit from
2. Shields attempted to resolve this
matter prior to filing, but Zuccarini refused to relinquish control over
the domain names.
3. Because the ACPA is currently unavailable
in the United States Code Annotated, we quote its first major
subsection in full.
4. It appears that the popularity of
the name "Joe" may be waning, at least in the United States. Before
1997, it consistently was one of the
top ten most popular names. See, e.g., "'Michael', 'Sarah' Top
Names," Tulsa World, Jan. 16, 1998,
at 2. "Joseph" was, however, the eighth most common name in
Britain for 1999. See Sam Greenhill,
"Jack Leads the Pack as Chloë puts Zoë in the Shade," Western
Press, Dec. 22, 1999, at 3.
5. Shields testified that he has been
using the name "Joe Cartoon" since he was a boy. His first use of
"The Joe Cartoon Co." was in a birthday
or Valentine's Day card he made for his mother at age fourteen.
He did not begin using the name on
a commercial basis, however, until several years later.
He also testified that he has spent
thousands of dollars putting up and expanding his website.
6. See also the reference to "a frog
pulverized in a blender" in a page one story in The Wall Street Journal.
See Michael J. McCarthy, "Web Surfers
Beware: The Company Tech may be a Secret Agent," The Wall
Street Journal, Jan. 10, 2000, at A1,
A12 (Pl.'s Ex. 21).
7. Specifically, Zuccarini testified
before us that he was amazed to learn "people mistype [sought domain
names] as often as they do," and thus
variants on actual spellings of likely search names would result in
many unintended visitors to Zuccarini's
sites. Actual experience seems rather clearly to have borne out
Zuccarini's analysis, as his click-based
revenue now approaches $1 million per year.
8. It came as little surprise when Zuccarini
admitted in response to our questions that he never bothered
to get permission from, e.g., Gwyneth
Paltrow or Sony Television to use their names.
9. For example, as the blender's speed
is turned up, the hapless frog comes to a whirling, violent end,
apparently an au courant image these
days. See P.T. Anderson, Magnolia (New Line Cinema 1999).
10. In fact, Zuccarini testified that
he put up the protest pages at 3:00 in the morning of February 1, 2000,
just hours after being served with
11. Because of this conclusion, we need
not consider whether Shields is likely to prevail on his federal and
state claims for unfair competition.
12. Shields credibly testified that,
as an artist, his good name is important to him, and he has worked hard
to make it as well-known as it is today.
He understandably does not want it associated with Zuccarini's
13. Zuccarini argues that Shields's
continuing traffic growth belies injury from the offending sites. This
contention misses a fundamental point.
We can never know how much traffic was lost, or how much faster
the traffic would have grown among
those who, unlike the complaining e-mailers of Exhibit P-22, did not
have the fortitude or time to complain
about these sites. Having ourselves been "mousetrapped" in some
of Zuccarini's sites in deciding Shields's
summary judgment motion, we could well understand any similar
victim wanting nothing further to do
with Joe Cartoon once he or she at last escaped those maddening
programs in Zuccarini's cognates.