Charitable Activities Do Not Create Commercial Interests in Untrademarked Names
By Harry Zhou – Edited by Ryan Ward
Stayart v. Yahoo! Inc., __ F.3d __, 2010 WL 3785147, No. 09-3379 (7th Cir. Sept. 30, 2010)
Slip Opinion hosted by Seattle Trademark Lawyer
On September 30, 2010, the Seventh Circuit affirmed the United States District Court for the Eastern District of Wisconsin, dismissing a complaint filed by Beverly Stayart alleging false endorsement under the Lanham Act and various state law claims against Yahoo! Inc. [hereinafter “Yahoo”] and other defendants.
Stayart’s complaint centered on the unfavorable search results generated by Yahoo’s search engine when she used her name as the search string. In finding that Stayart lacked standing under § 43(a) of the Lanham Act, the court held that Stayart’s charitable activities such as protests, publication, and boycotts did not imbue into her name a “commercial interest” necessary for a finding of Lanham Act violation. The court also affirmed the district court’s dismissal of Stayart’s state law claims under the abuse of discretion standard.
Lowering the Bar and Internet Cases offer brief summaries of the opinion. Eric Goldman voices support for the court’s ruling. A summary of the facts leading up to the filing of suit can be found at Seattle Trademark Lawyer.
Beverly Stayart is an animal rights activist who is advocates for the protection of wild horses, wolves, and baby seals. Stayart has published poems about baby seals on the Internet and is actively involved in animal right protests. At some point in time, Stayart searched for her name using Yahoo’s search engine. The results included links to pharmaceutical companies and pornographic websites that presumably bore no relationship to Stayart. After Yahoo refused to remove such results upon her request, Stayart sued under § 43(a) of the Lanham Act, alleging, inter alia, that the search results falsely suggested her endorsement of the unrelated websites. The U.S. District Court for the Eastern District of Wisconsin dismissed her complaint for lack of standing, and Stayart appealed.
The Seventh Circuit reviewed the district court’s dismissal of the complaint de novo. The court explained that to have standing for a false endorsement claim under the Lanham Act, the plaintiff must have a commercial interest to protect. Stayart argued that her online publication of poems for charitable causes and protests for animal rights have created such a commercial interest in her name. The court disagreed, finding that Stayart’s goals, though “passionate and well-intentioned,” did not take on a commercial nature and thus failed to enter the protective scope of the Lanham Act.
As an alternative theory to establish commercial interest, Stayart argued that her charitable work was commercial because it included “commercial activities” such as advocacy and boycotts. The court found Stayart’s argument unconvincing because the cases cited by Stayart were brought under § 32 rather than § 43 of the Lanham Act. Unlike § 43, § 32 requires a plaintiff seeking protection to have a “registered mark.” Given that Stayart never registered a trademark in her name, she would not be able to avail herself of the protection of § 32.
Finally, the court affirmed the district court’s refusal to grant Stayart leave to amend her complaint, finding that allowing Stayart to re-plead her state law claims under diversity jurisdiction would be futile.
This decision demonstrates the unwillingness of the Seventh Circuit to expand the meaning of the term "commercial interest." Plaintiffs asserting a claim under § 43 of the Lanham Act must continue to satisfy the court’s requirements for this term in order to show that they have standing in a trademark infringement suit.
Harry Zhou is a 2L at the Harvard Law School.