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Protecting Your Name and Reputation In Federal Court – No Remedy Under Trademark Law

The 7th Circuit Court of Appeals (the federal appeals court for Illinois, Indiana and Wisconsin) ruled that “the good name that a person garners in [] altruistic feats [reported on the Internet] is not what § 43 of the Lanham Act [the Federal Trademark Act] protects: it ‘is a private remedy for a commercial plaintiff who meets the burden of proving that its commercial interests have been harmed by a competitor.’” Stayart v. Yahoo! Inc., Case No. 09-3379 (7th Cir. Sept. 30, 2010) (available here).  Since Beverly Stayart had no commercial interest in her personal name, the Court dismissed her lawsuit.  Stayart claimed that Yahoo! [] violated § 43(a) of the Lanham Act, 15 U.S.C. sec. 1125(a), because Yahoo search results that appeared under her name improperly gave endorsements to pornography and online pharmaceuticals.  The Court said that Stayart had no standing or right to sue under Section 43(a) of the Lanham Act, the Federal Trademark Act.

When Stayart searched for her name with the Yahoo search engine, the search results revealed many links to online pharmaceutical companies (promoting erectile dysfunction drugs such as Cialis and Levitra), links to pornographic websites, and links that directed her to other websites promoting sexual escapades.  Stayart, slip opn. 3.  Understandably, this disturbed Beverly Stayart since she was actively engaged in various charitable and humanitarian efforts on behalf of baby seals, wolves and wild horses, posting “scholarly” comments online on the Internet and authoring two poems posted on a Danish website, as well as engaging in genealogy research.

Stayart sued Yahoo under the Federal Trademark Act, Section 43(a) of the Lanham Act which protects against false designations of origin, false descriptions or false representations.  The Act states:

(a) (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. Section 1125(a), Lanham Act Section 43(a).

The Appeals Court dismissed Stayart’s federal claim for lack of standing to sue because Stayart did not have a reasonable interest to protect a commercial activity. Stayart, slip opn. P. 5, citing Dovenmuehle v. Gilldorn Mortg. Midwest Corp., 871 F.2d 697, 700 (7th Cir. 1989); Berni v. Int. Gourmet Rest. of Am., 838 F.2d 642, 648 (2d Cir. 1988)(standing to sue under §43(a) is limited to a purely commercial class of plaintiffs); and Made in the USA Foundation v. Philips Foods, Inc., 365 F.3d 278, 280 (4th Cir. 2004) (the Lanham Act “is a private remedy for a commercial plaintiff who meets the burden of proving that its commercial interests have been harmed by a competitor”).

The Appeals Court also dismissed Stayart’s state law claims because no federal law was violated.  In Florida, there is a law prohibiting the unauthorized use of a person’s name or likeness for purposes of trade or for any commercial or advertising purpose.  Fla.Stat. 540.08 [available here].  Florida “damages [are available] for any loss or injury sustained by reason thereof [unauthorized use of a person’s name], including an amount which would have been a reasonable royalty, and punitive or exemplary damages.”

In conclusion, a person has little or no rights under federal law to protect his or her reputation on the Internet and stop false associations unless the person is “commercially famous” and uses his or her name to sell goods or services (for example, Paris Hilton).

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