UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

CAREER AGENTS NETWORK, INC., )

)

Plaintiff, )

)

v. ) Case No. 09-CV-12269-DT

)

careeragentsnetwork.biz, )

careeragentnetwork.biz, )

LAWRENCE R. WHITE, and )

AEROMEDIA MARKETING, INC., )

)

Defendants. )

(CORRECTED) MEMORANDUM IN SUPPORT OF

DEFENDANTS’ MOTION FOR AN AWARD OF ATTORNEY FEES

Statement of Issues and Principal Supporting Authorities............................... ii

Table of Authorities. ........................................................... iii

Facts and Proceedings to Date. .................................................... 1

ARGUMENT.................................................................. 8

I. White Should Be Awarded His Attorney Fees Because Career Agents Network

Brought a Groundless Case to Suppress Critical Speech and Used Abusive Litigation

Tactics to Oppress a Small Adversary.. ....................................... 8

II. The Court Should Award $36,324.82 in Attorney Fees and Expenses... . . . . . . . . . . . . . 15

Conclusion. .................................................................. 17
-iiSTATEMENT OF ISSUES AND PRINCIPAL SUPPORTING AUTHORITIES

1. Should attorney fees be awarded because plaintiff brought a groundless case to suppress

critical speech and used abusive litigation tactics to oppress a small adversary?

Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003)

Lucas Nursery and Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004)

Eagles, Ltd. v. American Eagle Foundation, 356 F.3d 724 (6th Cir. 2004)

Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2004)

Door Sys. v. Pro-Line Door Sys., 126 F.3d 1028 (7th Cir. 1997)

Defendants answer yes; argument on this issue begins on page 8.

2. Should defendants be awarded $36,324.82 in fees and expenses?

Imwalle v. Reliance Medical Products, 515 F.3d 531, 551-552 (6th Cir. 2008)

Defendants answer yes; argument on this issue begins on page 15.
-iiiTABLE OF AUTHORITIES

CASES 

Ale House Management v. Raleigh Ale House,

205 F.3d 137 (4th Cir. 2000). ........................................... 11, 14

Balance Dynamics Corp. v. Schmitt Industrial,

208 F.3d 212 (6th Cir. 2000). ............................................... 9

Blum v. Stenson,

465 U.S. 886 (1984)...................................................... 16

Bosley Medical v. Kremer,

403 F.3d 672 (9th Cir. 2005). .............................................. 10

Cairns v. Franklin Mint Co.,

292 F.3d 1139 (9th Cir. 2002). ............................................. 10

Cedar Crest Health Center v. Bowen,

129 F.R.D. 519 (S.D. Ind. 1989). ........................................... 11

DaimlerChrysler v. The Net Inc.,

388 F.3d 201 (6th Cir. 2004). ............................................... 8

Door Systems v. Pro-Line Door Systems,

126 F.3d 1028 (7th Cir. 1997). .......................................... 10, 14

Eagles, Ltd. v. American Eagle Foundation,

356 F.3d 724 (6th Cir. 2004). ............................................. 8, 9

Finance Investment Co. v. Geberit AG,

165 F.3d 526 (7th Cir. 1998). ............................................... 9

Fogerty v. Fantasy, Inc.,

510 U.S. 517 (1994)....................................................... 8

Geier v. Sundquist,

372 F.3d 784 (6th Cir. 2004). .............................................. 16

Gonter v. Hunt Valve Co., 

510 F.3d 610 (6th Cir. 2007). .............................................. 15
-ivImwalle v. Reliance Medical Products,

515 F.3d 531 (6th Cir. 2008). .............................................. 14

Jorgenson v. County of Volusia,

846 F.2d 1350 (11th Cir.1988). ............................................ 11

Lamparello v. Falwell,

420 F.3d 309 (4th Cir. 2005). .............................................. 10

Lighthouse Ministry v. Foundation for Apologetic Information and Research,

527 F.3d 1045 (10th Cir. 2008). ............................................ 10

Lucas Nursery and Landscaping v. Grosse,

359 F.3d 806 (6th Cir. 2004). .......................................... passim

Maine Audubon Social v. Purslow,

907 F.2d 265 (1st Cir. 1990). .............................................. 11

Mattel, Inc. v. Walking Mountain Productions,

353 F.3d 792 (9th Cir. 2004). .............................................. 15

McCombs v. Meijer, Inc.,

395 F.3d 346 (6th Cir. 2005). .............................................. 14

National Association of Professional Baseball Leagues v. Very Minor Leagues,

223 F.3d 1143 (10th Cir. 2000). ........................................... 10

Noxell Corp. v. Firehouse No. 1 Barbeque Restaurant,

771 F.2d 521 (D.C. Cir. 1985).............................................. 13

Taubman v. Webfeats,

319 F.3d 770 (6th Cir. 2003). .......................................... passim

TMI v. Maxwell,

368 F.3d 433 (5th Cir. 2004). .............................................. 10

Universal Communication Systems v. Lycos, Inc.,

478 F.3d 413 (1st Cir. 2007). .............................................. 14

Wal-Mart Stores v. Samara Bros., 

529 U.S. 205 (2000)...................................................... 15
-vWeisenberger v. Huecker,

593 F.2d 49 (6th Cir. 1979). ............................................ 15, 16

Woodhaven Homes & Realty v. Hotz,

396 F.3d 822 (7th Cir. 2005). .............................................. 15

Yankee Candle Co. v. Bridgewater Candle Co.,

140 F. Supp. 2d 111 (D. Mass. 2001), 

aff’d, 259 F.3d 25 (1st Cir. 2001). .......................................... 10

CONSTITUTION, LEGISLATIVE MATERIALS AND RULES 

United States Constitution 

First Amendment. ................................................ 8, 9, 10, 14

Lanham Act,

15 U.S. C. §§ 1051 et seq.............................................. passim

Section 35(a), 15 U.S.C. § 1117(a). .......................................... 7

Section 43(c)(2)(A),15 U.S.C. § 1125(c)(2)(A).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

S. Rep. No. 93-1400 (1974), reprinted in 1974 U.S.C.C.A.N. 7132, 7136. . . . . . . . . . . . . . . . . . . 8

Michigan Rules of Professional Responsibility

Rule 3.3(d). ............................................................ 11
This is a classic case of oppressive litigation being used to stifle free speech: a suit in which

a company that holds itself out as helping people set themselves up in the recruiting business brought

a spurious trademark lawsuit to punish a dissatisfied customer for using its name to identify it as a

company that should not be trusted with a substantial investment. It obtained a preliminary

injunction from this Court in an ex parte proceeding in which it failed to identify the controlling

circuit precedent that precluded its lawsuit, then told the defendant that he should pay $40,000 to

cover damages that had been sustained as a result of his public criticism. It pointed to the Court’s

ruling on the preliminary injunction to show that it was going to prevail on the merits. And when

the customer would not pay, the company sent him repeated text messages, even at night or in the

early morning, telling him how much his house was worth, making clear that he was under

surveillance, and threatening to join his sick fiancee as a party even though she was not involved in

the domain name or web site. The customer resisted this pressure and hired a lawyer to stand up for

his free speech, ultimately incurring tens of thousands of dollars in legal bills. Because the

trademark lawsuit was utterly groundless and oppressive, and because, unless the defendant receives

an award of attorney fees, the plaintiff will have succeeded in making him pay an unfair price for his

free speech, the Court should grant his motion for an award of statutory attorney fees under the

Lanham Act.

Facts and Proceedings to Date

Defendant Lawrence White, through his company, defendant Aeromedia Marketing, Inc.

(jointly identified in this brief as “White”), is a dissatisfied investor in a business now owned by

plaintiff Career Agents Network (“CAN” or “plaintiff”). He and his fiancee, Lorie Brady, invested

$49,900 with a company called Health Career Agents (“HCA”) to buy a “business in a box” that was

supposed to provide them with the resources needed to become successful recruiters in the healthcare
-2-

field. Summary Judgment Opinion (DN 62) at 2-3. After White and Brady made this investment,

plaintiff CAN, “an international consortium of recruiting companies [that] represents candidates for

high-level jobs in a number of industries,” DN 11 ¶ 9, purchased the assets of HCA. White and

Brady soon concluded that this investment had been a waste of their hard-earned savings. Id.

To express his disapproval of plaintiff, and to warn future victims, White created a web site

that said, in its entirety, 

WARNING

If you are considering investing in this “opportunity”, be aware that it is highly

improbable that you will earn enough to cover your investment. If you proceed with

this company you have been warned by those that know and have lost

$20,000-$150,000 by trusting them and their “plan” 

Id.

The web site did not contain any linksto any other web site, and did not even mention White’s name

or provide a means for contacting White. White Deposition (attached to Clos Affidavit as Exhibit

E), at 26. It was a pure act of non-commercial speech criticizing plaintiff’s business. To identify

plaintiff as the target of his critical speech, White chose the domain names

“careeragentsnetwork.biz” and “careeragentnetwork.biz,” and registered them through a domain

name registrar that allowed him to remain anonymous. Id. at 25. White also used a search engine

optimizing company to raise the “search rank” of his critical web site when Internet users enter the

term “career agents network” into a search engine. Id. at 26; DN 62 at 3-4.

Plaintiff CAN was worried about the impact that this critical speech — in the words of

plaintiff’s owners, this “cyberslander campaign” — could have on its business, and claimed that it

had lost hundreds of thousands of dollars because of the critical speech contained on the web site.
-3-

White Aff., Exh. A. However, it did not sue for defamation, no doubt because the factual statements

cited on the web site were true, and the site otherwise expressed a constitutionally protected opinion.

Instead, CAN sued for trademark infringement and cybersquatting, claiming that the use of its name

to identify a web site about itself was impermissible under the trademark laws. It sought a temporary

restraining order (“TRO”) and preliminary injunction both locking the domain names and requiring

that the domain names be turned over to plaintiff for the duration of the litigation. Had this relief

been granted, plaintiff could have removed the critical speech from the Internet without having to

show that it was false or otherwise actionable. 

Plaintiff’s trademark claims were squarely precluded by circuit precedent. In Taubman v.

Webfeats, 319 F.3d 770 (6th Cir. 2003), the Sixth Circuit held both that the Lanham Act does not

reach noncommercial web sites that simply provide information, favorable or unfavorable, about a

trademark holder, and that the use of a trademark as the domain name for a web site about the

trademark holder is not infringement so long as the underlying web site does not create confusion

about whether the trademark holder is its sponsor. And in Lucas Nursery and Landscaping v.

Grosse, 359 F.3d 806, 811 (6th Cir. 2004), the Sixth Circuit held that the cybersquatting amendment

to the Lanham Act cannot be used to enjoin the use of a trademark as the domain name of a “gripe

site” about the trademark holder.

Because plaintiff was proceeding ex parte, in that the defendants had not yet been identified,

it knew that the precedents it cited might well be the only cases that the Court considered in deciding

whether to grant a preliminary injunction suppressing the critical speech. However, plaintiff did not

see fit to cite and try to distinguish the governing precedents. Instead, its memorandum in support

of preliminary relief cited only cases in which defendants had been enjoined from using trademarks
-4-

as domain names to sell competing goods and services. DN 2, Mem. at 4-7. Although the

memorandum recited language from the web site, it did not disclose to theCourt the crucial facts that

the site did not contain any attempt to sell goods or services, or any links to any commercial web

sites. Id. at 3. Similarly, although plaintiff’s papers contended that the use of its trademark “dilutes

and tarnishes” plaintiff’s mark,” Byndas Aff. ¶ 7, and claimed that plaintiff’s mark was “famous,”

Memorandum in Support of Preliminary Injunction, at 5, it did not point the Court to the Lanham

Act’s definition of the term famous, which requires that the mark be “widely recognized by the

general consuming public of the United States,” 15 U.S.C. § 1125(c)(2)(A), and it did not

acknowledge that Charlotte Byndas,CAN’s co-owner, had no idea what fraction of the public would

recognize her company’s name. Byndas Dep. at 80 (Clos Aff., Exh. D).

The Court granted the requested relief in part, enjoining any transfer of the domain name for

the duration of the litigation, and ordering that the domain name registrar provide plaintiff with the

identity of those who had registered the domain name. DN 9, at 3 ¶ B. However, the Court did not

grant the part of the requested relief that would have placed the domain names under plaintiff’s

control for the duration of the litigation. DN 2, Motion at 2. Instead, it ordered that the domain

names be transferred into the registry of the Court. DN 9, at 3 ¶ A. 

Plaintiff then took advantage of its preliminary victory to mount a full court press that was

designed to coerce White into giving up his free speech rights without having the opportunity to

defend his free speech (or even to consult legal counsel). Plaintiff’s counsel, Michael Khoury, sent

White copies of the papers that had been filed so far, and warned White that this Court had already

ruled in plaintiff’s favor, suggesting that any legal resistance was futile. White Aff. ¶ 3. Although,

before retaining counsel, White considered dropping his web site in order to avoid having to defend
-5-

a lawsuit, and came close to agreeing to a proposed settlement with Charlotte Byndas, one of

plaintiff’s co-owners, ultimately he decided not to do so. Id. ¶ 4. Byndas then warned White that,

if he defended the lawsuit, he would be dragging Lorie Brady through his troubles even though

Brady was “struggling to get well.” Id. ¶ 5 and Exh. A. At the time, Brady had faced numerous

cancer challenges and was struggling with continuing health-related issues. Id. ¶ 5. Plaintiff also

sent an email to those of its members who it believed had worked with White before, to tell them

about how, in plaintiff’s opinion, White had hurt their business as well as CAN through his

“cyberslander.” Byndas Dep. at 81-83 and Exhibit 13, attached to Clos Aff. as Exh. D.

White consulted a lawyer, Larry Bowerman, to get advice about how to respond to this

barrage. White Aff. ¶ 6. While he was sitting in Mr. Bowerman’s office, White had a conversation

with Byndas and Paul Helm, plaintiff’s co-owners, who warned White that the case was as good as

over given the Court’s preliminary injunction, and that White faced the prospect of such large

damages that the $40,000 being demanded in settlement was a good deal. White told Byndas and

Helm that, given the amount of money that he had already invested, he couldn’t afford to pay another

$40,000. Byndas, however, said that she would take his house if necessary to collect the damages

that White’s web site had caused to the plaintiff, and that he had better settle quickly. Id. and Exh.

B. Mr. Bowerman acknowledged that trademark law was outside his area of expertise, but warned

that the case would be expensive to litigate, and recommended that White take the least expensive

way out by settling the case. Id. ¶ 8. 

Following this conversation, Helm sent White an email demanding that White give up what

Helm called his “cyberslander campaign.” Helm demanded that White, inter alia, surrender the

domain names, apologize for his criticisms, promise never to criticize plaintiff or any of its
-6-

employees in the future, and pay $40,000 to cover plaintiff’s legal fees as well as part of what Helm

claimed was the hundreds of thousands of dollars of damages that had been caused by White’s

critical speech. Id. ¶ 7 and Exh. C. The terms that Helm sought to dictate also included a

requirement that White sign an agreement with plaintiff that would have waived all possible claims

against Health Career Agents for misrepresentations. Id. Exh. D, ¶ 2. 

White was worried about the expense of the litigation, as well as about the impact that the

litigation might have on Brady given her health. Id. ¶¶ 5, 9. When White did not comply

immediately, Byndas began a campaign of repeated and harassing text messages to White’s cell

phone. Id. ¶¶ 12, 13. One of the messages warned White that Brady might herself be added to the

litigation if White did not give in. White wrote back to implore Byndas to leave Brady out of the

litigation. Byndas responded that Brady would be left out only if White immediately agreed to all

of the demanded settlement terms: “If not we will have to include her in everything.” Id. ¶ 13 and

Exhibit E. Byndas then sent multiple additional text messages to White, including messages early

in the morning (such as before 6 AM) and into the evening, even after 9 PM. Some of the messages

contained nothing but a “smiley face” (the “:-)” emoticon); others warned White that Byndas had

been in his neighborhood checking on the value of his house, and looking at his neighbors’ garden,

so that she knew he could afford to pay the amount of damages that had been demanded. Byndas

Dep., Exh. 14 (attached to Clos Aff. as Exh. D). Byndas also threatened to deluge White with

hundreds of phone calls if he did not surrender. Id.

In the end, White decided that he had done nothing wrong, and Brady agreed that she was

willing to face the impact of the litigation on their lives. White Aff. ¶ 11. He hired a new lawyer,
White also asked undersigned counsel Mr. Levy to take the case pro bono so that White 1

would not have to pay for private representation. As explained in his affidavit, ¶ 11, Mr. Levy

decided not to take over the case on the merits, although he offered informal guidance to Mr. Clos.

Public Citizen agreed to take the case for this fee application because of its concern about the impact

of meritless trademark litigation on the right to criticize private companies, and the need for fee

awards to encourage consumers to stand up for their rights as well as discouraging the misuse of the

trademark laws to quash dissent.

-7-

Charles Clos. Id. Plaintiff filed an amended complaint that added a count for trademark 1

infringement to the count for cybersquatting. DN 11. The parties undertook discovery from each

other and defendants moved for summary judgment, citing Taubman and Lucas Nursery as well as

many cases from other circuits showing the general judicial consensus that the domain name for a

web site that criticizes the trademark holder may properly use the plaintiff’s trademark so long as

the web site itself is either non-commercial or not confusing about whether it is the trademark

holder’s own web site. DN 43. In its briefs opposing summary judgment, as well as supporting its

cross-motion for summary judgment, DN 54, plaintiff finally acknowledged the existence of Sixth

Circuit precedent relevant to its complaint, but tried to distinguish those cases by arguing that White

runs a rival business, that White’s web sites supposedly were a lure for business prospects, and that

his use of the domain names could be confusing because the site lacked an express disclaimer of

affiliation with plaintiff. Id. at 8-9. The Court rejected those distinctions both as a matter of fact and

as a matter of law, and entered summary judgment for defendants. DN 62.

However, White’s defense of his free speech came at a substantial price — he incurred

roughly $20,000 in legal fees. White Aff. ¶ 11. Seeking to recover those fees, as well as the fees

for this fee application, White now asks the Court to award his fees and expenses as a prevailing

party under the Lanham Act.
-8-

ARGUMENT

I. White Should Be Awarded His Attorney Fees Because Career Agents Network Brought

a Groundless Case to Suppress Critical Speech and Used Abusive Litigation Tactics to

Oppress a Small Adversary.

The Lanham Act provides for awards of attorney fees to prevailing parties in “exceptional

cases.” 15 U.S.C. § 1117(a). Congress included this provision both to protect plaintiffs against

deliberate infringements and “to ‘provide protection against unfounded suits brought by trademark

owners for harassment and the like.’” Eagles, Ltd. v. American Eagle Foundation, 356 F.3d 724,

729 (6th Cir. 2004), quoting S. Rep. No. 93-1400 (1974), reprinted in 1974 U.S.C.C.A.N. 7132,

7136. The Supreme Court held in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), that the standards

for fee awards in copyright cases must treat prevailing plaintiffs and prevailing defendants in an

even-handed fashion, and that “defendants who seek to advance a variety of meritorious copyright

defenses should be encouraged to litigate them to the same extent that plaintiffs are encouraged to

litigate meritorious claims of infringement.” Id. at 527. 

Recognizing the similarity between the copyright and trademark laws — both reflect a

balance between protecting intellectual property owners while at the same time protecting the free

speech interests of the public domain and of fair use — the Sixth Circuit in Eagles Ltd. cited

Fogerty‘s even-handedness requirement as controlling authority in trademark fee litigation as well.

However, the Sixth Circuit said that in applying even-handedness, fee awards in favor of prevailing

plaintiffs and prevailing defendantsfocus on different acts — when the plaintiff prevails, the courts

focus on the exceptional quality of the infringement, but when the defendant prevails, the courts

must focus on the exceptional nature of the litigation. Drawing on a previous unreported Sixth

Circuit decision which, in turn, rested on a line of authority concerning fee awards in Lanham Act
-9-

cases from the Seventh Circuit, the Eagles Court held that a prevailing defendant should be awarded

fees “where a plaintiff brings a suit that could fairly be described as ‘oppressive.’” 356 F.3d at 728,

citing Balance Dynamics Corp. v. Schmitt Indus., 208 F.3d 212 (6th Cir. Feb. 25, 2000) (mem.) and

Finance Inv. Co. v. Geberit AG, 165 F.3d 526, 533 (7th Cir. 1998).

This case “could fairly be described as oppressive” in several respects. First, it was

completely groundless. The Lanham Act cybersquatting provision could not have applied here

because that statute was intended to prevent the use of domain names with a bad faith intent to profit

“by either ransoming the domain name back to the trademark holder or by using the domain name

to divert business from the trademark holder to the domain name holder.” DaimlerChrysler v. The

Net Inc., 388 F.3d 201, 204 (6th Cir. 2004). It is not cybersquatting when a trademark is placed in

a domain name for a web site used by a dissatisfied customer to “inform . . fellow consumers of

one’s experience with a particular service provider. “ Lucas Nursery, supra. This case was thus

foreclosed at the outset by Lucas Nursery, yet plaintiff never had any explanation that could

distinguish that case. 

The Lanham Act infringement claim, in turn, was clearly precluded by Taubman v. Webfeats,

319 F.3d 770 (6th Cir. 2003), for two independent reasons. First, the careeragentsnetwork.biz web

site was completely non-commercial, and Taubman held that, to be consistent with the First

Amendment, the Lanham Act is limited to commercial uses of trademarks. Id. at 774-775. Second,

the domain name was used to identify the subject of criticism on a web site that had zero potential

for creating confusion about whether CAN was the sponsor of the site, but Taubman held that

trademark infringement claims can only be brought when there is a likelihood of confusion about

the source or affiliation of the parties’ goods and services. Id. at 774, 776. Nobody, even the most
Lighthouse Ministry v. Foundation for Apologetic Info. & Research, 527 F.3d 1045 (10th 2

Cir. 2008); Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); Bosley Medical v. Kremer, 403

F.3d 672 (9th Cir. 2005); TMI v. Maxwell, 368 F.3d 433 (5th Cir. 2004).

-10-

gullible Internet user, could be confused about whether White’s site was sponsored by plaintiff. 

Indeed, in the years since Taubman and Lucas Nursery were decided, several other circuits

have endorsed the Sixth Circuit’s analysis, holding that trademarks in domain names may lawfully

and properlybe used for non-commercial web sites expressing opinions about the trademark holder.2

As the Sixth Circuit said in Taubman, White is free to shout his opinion of CAN “from the

rooftops,” 319 F.3d at 778, and 

the rooftops of our past have evolved into the internet domain names of our present.

We find that the domain name is a type of public expression, no different in scope

than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his

opinion about Taubman, and as long as his speech is not commercially misleading,

the Lanham Act cannot be summoned to prevent it.

Id.

The sheer groundlessness of the trademark claims in this case provides an important basis for an

award of attorney fees. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002); National

Ass'n of Professional Baseball Leagues v. Very Minor Leagues, 223 F.3d 1143, 1147 (10th Cir.

2000). The suit’s lack of merit, combined with the deliberate imposition of the cost of defending

on the defendant, can alone be a sufficient basis for finding the case “exceptional” and awarding

Lanham Act fees. Door Systems v. Pro-Line Door Systems, 126 F.3d 1028, 1032 (7th Cir. 1997);

Yankee Candle Co. v. Bridgewater Candle Co., 140 F. Supp.2d 111, 121-122 (D. Mass. 2001) aff’d,

259 F.3d 25 (1st Cir. 2001).

In addition to having brought a groundless lawsuit, plaintiff pursued the litigation in an

oppressive manner. It began the case by seeking a TRO and preliminary injunction, and it obtained
 Plaintiff has indicated that it plans to argue that the inclusion in the Court’s preliminary 3

injunction order of a finding that success on the merits was likely shows that it had a colorable basis

for bringing this action. Given that the finding was made ex parte, and in response to briefs that

-11-

those orders through misleading representations of the facts and the law to the Court. Even though

the Sixth Circuit has two decisions on point, neither was cited in plaintiff’s memorandum of law in

support of the TRO and preliminary injunction. The facts stated in support of the request for

emergency relief also contained significant omissions (for example, no copy of the actual web page

was provided, which would have shown that there were no hyperlinks to any commercial web sites)

and misstatements (for example, Byndas averred that her company’s mark was “famous,” and

plaintiff asserted that its mark had been diluted). Even in its opposition to the motion for summary

judgment, CAN tried to obscure the fact that it had no way to distinguish Taubman by mentioning

the case only in its discussion of the cybersquatting claim, while omitting the case entirely from its

discussion of infringement. Courts have relied on miscitation or disregard of governing law as one

factor that renders trademark litigation oppressive. Ale House Management v. Raleigh Ale House,

205 F.3d 137, 144 (4th Cir. 2000).

When, as here, a party seeks ex parte relief, it has an especial obligation to bring potentially

adverse facts and authority to the Court’s attention. Maine Audubon Soc. v. Purslow, 907 F.2d 265,

268-269 (1st Cir. 1990); Jorgenson v. County of Volusia, 846 F.2d 1350, 1352 (11th Cir. 1988);

Cedar Crest Health Center v. Bowen, 129 F.R.D. 519, 525 (S.D. Ind. 1989). Indeed, Rule 3.3(d),

Michigan Rules of Professional Responsibility, expressly requires a lawyer to make a balanced

presentation of relevant facts in an ex parte proceeding, “whether or not the facts are adverse,”

making specific reference to TRO motions, because otherwise the lawyer may, as here, lead the court

to an unjust result. Plaintiff began this case in complete disregard of this ethical requirement. 

3
omitted both controlling law and adverse facts, that argument should not be accepted. 

-12-

Plaintiff then tried to take unfair advantage of the TRO and preliminary injunction by

presenting them to White as showing that the Court had already ruled for plaintiff, and thus that he

had no choice but to accept its onerous settlement terms, including a waiver of any claims for

misleading procurement of his investment, a non-disparagement clause, and the payment of $40,000

in attorney fees and damages. Both plaintiff’s lawyer and its co-owner made this spurious claim to

White, without explaining to him that the order did not reflect a decision by the Court on the merits

of the case, let alone that it had been obtained by a misleading presentation to the Court of the facts

and the law. Indeed, plaintiff misrepresented to White the extent to which the Court had ruled in its

favor, because although plaintiff’s memorandum asked the Court to order that the domain names be

turned over to plaintiff for the duration of the litigation, DN 2, Mem. at 7, the Court only ordered that

the domain names be placed on hold.

And then, when White did not immediately accept the terms that had been demanded of him,

plaintiff embarked on a campaign of harassment, threatening to broaden the suit groundlessly to

include Lorie Brady as a defendant, even though she had no involvement in the selection of the

domain names or the creation of the web site, even though plaintiff had no evidence that she was

involved, and even though plaintiff knew that she had faced numerous cancer challenges and was

struggling with continuing health-related issues, and hence was particularly vulnerable. And when

that was not enough, plaintiff threatened that it would seize White’s house for the payment of its

damages and attorney fees, then told himhis residence was under surveillance and sent harassing text

messages to his cell phone, including messages in the early morning hours and at night, and

threatened to inundate his phone with telephone calls. Having discovered White’s identity, plaintiff
-13-

also sent an email denouncing him to members of its network who had worked with him and who,

plaintiff apparently believed, could be persuaded to express their anger to him. The oppressive

manner in which plaintiff tried to force a settlement of its utterly groundless lawsuit is yet another

reason supporting the conclusion that this lawsuit was “exceptional.”

Moreover, the evidence plainly shows that the litigation was not motivated by any genuine

concern about the possibility that members of the public might experience confusion about whether

his web site was sponsored by plaintiff, but was intended as a remedy for the critical speech posted

on the web site. Plaintiff’s co-owner, Charlotte Byndas, admitted this during her deposition when

interrogated about her harassing text messages: “[R]eally the thrust of this was to get the

information on the Internet down. And so, I mean, up to this point, he was not very cooperative in

helping us get the information down, and so, you know, we were trying desperately to get him to do

that.” Clos Aff, Exh. D, at 97. Byndas’ email to some of plaintiff’s members, which was attached

to her deposition as Exhibit 13 (and is provided as part of Exhibit D of the Clos Affidavit), explained

that plaintiff had brought suit against White over his “cyber slander.” The email did not express any

concern about the possibility that Internet users might be confused about the source of the statements

on the site and mistakenly attribute them to plaintiff, but rather complained about the “false

information” on the web sites and White’s involvement in “cyber slander” that posed a risk to the

reputation of her company. Both Byndas and her co-owner Paul Helm told White that the damages

they wanted him to pay were intended as compensation for the damages caused to plaintiff’s business

by White’s criticism rather than by use of the mark, White Aff. ¶ 6 and Exh. A, C, and it was no

coincidence that the settlement agreement that they sought to impose on him included an apology

for the criticism and a non-disparagement commitment — typical relief in a defamation case, but not
-14-

in a trademark case. As the court said in Universal Communication Systems v. Lycos, Inc., 478 F.3d

413, 423 (1st Cir. 2007), the injury to the trademark holder’s reputation caused by criticism that uses

the trademark holder’s name is simply not trademark injury and hence cannot be remedied by a

trademark lawsuit. The bringing of this spurious trademark claim for the ulterior purpose of

quashing White’s critical speech strongly supports the motion for an award of attorney fees.

One more factor should be considered in the award of attorney fees in this case. Although

plaintiffs have a natural incentive to bring meritorious trademark cases because they can hope to

secure awards of damages that may offset the costs of litigation, a defendant has no countervailing

financial incentive to defend a trademark case, even when the case is utterly groundless. Indeed, in

a case like this one, where White created a web site and used the trademark, not to draw customers

to his business, but to criticize plaintiff, he gets nothing from a successful defense besides the

patriotic pleasure of having stood up for his First Amendment rights. Indeed, the prospect of

expensive litigation to defend free speech rights that stood to earn him not a dime came close to

deterring White from defending this case. White Affidavit ¶¶ 8-9.

Courts have recognized the need to create incentives for the defense of trademark litigation

when the defense advances the public good by preventing the misuse of trademark law to suppress

speech, even when it is just commercial speech, as a large company picks on an underfunded

opponent in the hope that the mere cost of a self-defense will drive the defendant into submission.

Noxell Corp. v. Firehouse No. 1 Barbeque Rest., 771 F.2d 521, 526-527 (D.C. Cir. 1985); Ale House

Mgmt. v. Raleigh Ale House, 205 F.3d 137, 144 (4th Cir. 2000). See also Door Sys. v. Pro-Line

Door Sys., 126 F.3d 1028, 1032 (7th Cir. 1997) (“a suit can be oppressive because of lack of merit

and cost of defending even though the plaintiff honestly though mistakenly believes that he has a
-15-

good case and is not trying merely to extract a settlement based on the suit’s nuisance value”);

Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 214 (2000) (noting problem of “anti-competitive

strike suit[s]” invoking trademark claims). 

As the Seventh Circuit said in Woodhaven Homes & Realty v. Hotz, 396 F.3d 822, 824 (7th

Cir. 2005), “[w]ithout the prospect of such an award, [a defendant] might be forced into a nuisance

settlement or deterred all together from exercising his rights.” Although Woodhaven was decided

under the Copyright Act, similar considerations apply when a trademark defendant successfully

defends against a suit aimed at his free speech rather than at vindicating interests genuinely protected

by the trademark laws. Similarly, the Ninth Circuit remanded for consideration of an award of

attorney fees when a huge national company brought an action against an artist who created parodies

of its trademarked “Barbie” character. Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 816

(9th Cir. 2004). Noting that the defendants’ “use constituted nominative fair use and was protected

by policy interests in free expression,” the court directed the district court to decide whether the

plaintiff’s claims were “groundless or unreasonable.” Id. So, too, this was an exceptional case

brought to suppress White’s free speech, and the Court should award attorney fees.

II. The Court Should Award $36,324.82 in Attorney Fees and Expenses.

The amount of attorney fees to be awarded is determined by the lodestar method, whereby

the Court assesses the number of hours reasonably expended on the case as shown by the lawyers’

time records, and multiplies that by the reasonable hourly rates of the attorneys involved. Imwalle

v. Reliance Medical Products, 515 F.3d 531, 551-552 (6th Cir. 2008); Gonter v. Hunt Valve Co., 

510 F.3d 610, 617 (6th Cir. 2007); McCombs v. Meijer, Inc., 395 F.3d 346, 361 (6th Cir. 2005).

Fees should also be awarded for time spent litigating the issue of attorney fees. Weisenberger v.
White’s affidavit, ¶ 6, reveals that, when he was first deciding whether to surrender his 4

rights, he paid LarryBowerman, Esquire, $350 for two hours of his time in evaluating the prospects

for defending the litigation. 

-16-

Huecker, 593 F.2d 49, 53-54 (6th Cir. 1979).

The attached affidavits of Charles Clos and Paul Alan Levy, and the time records attached

to those affidavits, lay out the time spent by each of their firms on the case, the qualifications of

counsel, and the reasonable hourly rates for each. Detailed information regarding the skill and

expertise of defendants’ counsel is contained in their affidavits. White’s legal team included counsel

with extensive experience in litigation at the intersection of intellectual property and free speech,

who has handled many of the cases that set the precedents on which defendants’ arguments were

based, as a local practitioner with twenty years of litigation experience. The experience and

specialized expertise of counsel enabled defendants to pursue this case successfully and efficiently.

Hourly rates “are to be calculated according to the prevailing market rates in the relevant

community.” Blum v. Stenson, 465 U.S. 886, 895 (1984); Geier v. Sundquist, 372 F.3d 784, 791 (6th

Cir. 2004). This evidence produces the following table summarizing the fees sought in this case:

Attorney Hourly Rate Hours Fees

Charles E. Clos $210 30 $6,300.00

Charles E. Clos $190 27.5 $5,225.00

Shannon L. Wirth $175 35.7 $6,247.50

William M. Clos $140 6 $840.00

Messenger $15 4.8 $72.00

Larry Bowerman $175 2 $350.00 4

Paul Alan Levy $465 36.5 $16,972.50

Totals 142.5 $36,007.00
-17-

The Clos affidavit also details the $417.82 in expenses incurred in defending this case on the merits

(exclusive of the deposition transcript costs that have already been taxed by the clerk).

CONCLUSION

The Court should award defendants their attorney fees and expenses in the amount of

$36,324.82.

Respectfully submitted,

 /s/ Paul Alan Levy 

Paul Alan Levy (DC Bar 946400)

Gregory A. Beck (DC Bar 494479)

 Public Citizen Litigation Group

 1600 20th Street, N.W.

 Washington, D.C. 20009

 (202) 588-1000

 plevy@citizen.org

 /s/ Charles Clos 

Charles Clos (P43380)

CLOS RUSSELL & WIRTH, P.C.

35551 Ford Road, Suite 100

Westland, Michigan 48185

(734) 326-2101

cclos@lawyersmichigan.com

Attorneys for Defendants

March 26, 2010
CERTIFICATE OF SERVICE

I hereby certify that, on this date, I electronically filed the foregoing paper with the Clerk of

the Court using the electronic filing system which will send notification of such filing to the

following:

Joan Lowenstein, Esquire

Michael Khoury, Esquire

All parties in the case are represented by counsel who receive service through the ECF system.

 /s Paul Alan Levy 

Paul Alan Levy (DC Bar 946400)

 Public Citizen Litigation Group

 1600 20th Street, N.W.

 Washington, D.C. 20009

 (202) 588-1000

 plevy@citizen.org

Attorney for Defendants

March 26, 2010