BY OVERNIGHT DELIVERY
January 8, 2001
Honorable Richard M. Berman
United States District Court
40 Centre Street
New York, New York 10007
Re: Alitalia v. Porta, No. 00-CIV-973
Dear Judge Berman:
I write to you to request a short extension of time for the defendant to respond to the complaint, and a pre-motion conference with your Honor. Simply put, we intend to move to dismiss or for summary judgment in lieu of answering, but need a slight additional amount of time to find local counsel in New York, and additionally to be able to file our motion after complying with the pre-motion conference requirement. Because the initial pretrial conference in the case has been scheduled to be held January 30, it would be our suggestion that this date be the date for the pre-motion conference, and that the time for responding to the complaint be set for shortly thereafter. Plaintiff’s counsel does not consent, for reasons which I set forth after first explaining what the case is about and what the basis for the motion will be.
This is a free speech case arising out of a dispute between plaintiff, an international air carrier, and one of its former customers. The defendant flew on Alitalia to India this past fall to be the best man at a friend’s multi-day wedding ceremony in Goa, India. His trip was less happy than it might otherwise have been because his luggage, containing various formal clothing which the defendant required for his duties at the wedding, was lost in transit. The defendant was promised on various occasions that he would receive recompense, in various forms, and these promises were not kept. Defendant ultimately wrote a letter to plaintiff, dated October 26, 2000, detailing his concerns. In the end, however, plaintiff stood on what it conceived to be its rights under the liability limitations of the Warsaw Convention to offer defendant him a small portion of that which defendant believed he had been promised.
Defendant, unhappy about the delay in responding to his complaints, established a web site at http://www.alitaliasucks.com, on which he placed October 26 letter. Plaintiff sues on the theory that the use of its name in the domain name for the web site violates various trademark laws – the Anticybersquatting Consumer Protection Act, the Lanham Act, and the state common law of trademark. The complaint does not allege that anything on the web site is untrue, but simply objects to the use of "alitalia" as part of the Uniform Resource Locator or "URL" for the site, because, the plaintiff alleges, this act tends to confuse consumers into believing that Alitalia itself is the source of the web site.
Our motion will raise several issues. First, the trademark laws don’t apply to non-commercial "gripe sites" such as the defendant’s. Second, no rational consumer would be confused by defendant’s site, or indeed by defendant’s domain name, into believing that a site entitled "Alitalia Sucks" was sponsored by Alitalia. Third, the way in which the trade name is juxtaposed to the word "sucks" is a fair use of the trade mark to denominate the company that the web site criticizes (an alternate doctrinal approach addressing the same basic point is that defendant’s is a nominative use rather than a trademark use). Finally, the First Amendment protects the defendant’s use of the name in this critical fashion.
We trust that the plaintiff would admit that, if the defendant had the wherewithal to purchase a series of billboards ringing Kennedy Airport with the words "Alitalia Sucks" in ten foot high letters, or a full page advertisement in the New York Times bearing the same legend, there is nothing in the trademark laws that would entitle it to any relief, and indeed the First Amendment would protect his right to do that. What the defendant has done here is turn-of-the-century equivalent of this hypothetical.
I have not included the various citations that will be part of the motion, but I am prepared to present them if the Court or plaintiff’s counsel would like. In this regard, although there are a large number of cases that have barred the registration of domain names that couple a company’s trademark with ".com," the few cases that have addressed the subject have held that the use of plainly critical domain names – such as the trademark coupled with the word "sucks" – are entirely lawful.
The plaintiff appears to rely on two additional matters which, in our judgment, are entirely irrelevant. First, the plaintiff says that it has met its obligations under the Warsaw Convention. But even assuming that its analysis of the Convention is correct, and even assuming that the Warsaw Convention would preempt defendant’s claim of a contract right to enforce the promises made by its agents after he got off its plane, the fact remains that the First Amendment protects the defendant’s right to criticize the plaintiff for standing on the Convention, and to try to bring public opinion to bear to induce the plaintiff to honor its promises.
Second, the plaintiff alleges in its complaint that, in a conversation with its agent, the defendant offered to refrain from registering the site, and from listing the site with numerous search engines, if the defendant would pay him more money. The complaint alleged that defendant registered the site after this supposedly extortionate request was rejected, and plaintiff treats this as "bad faith." The defendant will dispute the factual underpinnings of this argument, and indeed some of the factual claims are demonstratively false.fn1. However, we do not believe that this factual dispute – assuming that plaintiff can adduce evidence to support it – will bar summary judgment, because the facts do not demonstrate bad faith in the sense used by the cybersquatting statute. In any event the defendant is entitled to use his free speech rights to bring the pressure of public opinion to bear on the plaintiff in an effort to resolve his complaints against it.
That, then, is what will be at issue on our motion. As the letterhead on this letter reflects, I am a lawyer at a Washington, D.C. public interest law firm. As it happens, I am a member of the New York bar, but I do not belong to the Court’s bar, and I need to obtain local counsel for the case. In addition, although defendant was served on December 26, 2000, and his response to the complaint is due on January 16, 2001, he is currently out-of-state on vacation, and in any event the requirement of a pre-motion conference would make it difficult to file our motion by January 16. Accordingly, upon being asked by defendant to handle the case, I immediately contacted plaintiff’s counsel, Nicholas Pantelopoulos, Esquire, to ask for a brief extension of time. Counsel refused to agree to any extension of time unless the defendant would agree to take down his web site in the meantime, as well as agreeing not to register the site with any search engines. Mr. Pantelopoulos explained that he might move for a preliminary injunction, or even a temporary restraining order. I explained to Mr. Pantelopolous that the relief he was asking for could never be granted on a preliminary basis – in addition to the grounds set forth above, such a TRO would raise serious questions of prior restraint – but that I would be willing to raise with my client the question of some other temporary self-constraint. Mr. Pantelopoulos stated that his conditions were non-negotiable. Because the defendant is unwilling to waive his First Amendment rights as demanded, we ask the Court to extend the time for filing our motion for approximately two weeks, so that defendant, who lives outside the Southern District, can obtain local counsel and a pre-motion conference can be held.fn2.
The Court has scheduled an initial pre-trial conference in this case, to be held on January 30. I intend to attend that conference. At that conference, the issues pertaining to the motion can be aired, in addition to the other matters that are customarily considered at the initial pretrial. Defendant will be ready to file his motion for summary judgment within days following that conference.
Paul Alan Levy
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