As you might have heard, the famed pranksters The Yes Men were recently involved in something of a parody news story. They printed up and handed out a ton of parody Washington Posts, dated May 1, 2019 (note: a date a few months in the future) with a cover story claiming to be about President Trump being removed from office. People who got their hands on the printed edition said that they looked pretty similar to an actual Washington Post. The pranksters didn't just print out newspapers, they also set up a website at my-washingtonpost.com. The Washington Post itself was not amused and appears to have sent an incredibly stupid cease-and-desist letter from a publication that should know better.
Actually, let's be clear: the Washington Post does know better. As Public Citizen lawyer Paul Levy notes in a post we'll talk more about down below, the Washington Post's double standard shines through based on its reporting on other parodies in comparison:
By an amazing coincidence, on the same morning that the Post parody was distributed, the Post ran this story about a Facebook page spoofing the Maryland state government. The story made clear that the reporter found the whole thing very amusing. The Post's coverage of the parody aimed at itself showed no such sense of humor. “We will not tolerate others misrepresenting themselves as The Washington Post, and we are deeply concerned about the confusion it causes among readers,” Post spokeswoman Kris Coratti said. “We are seeking to halt further improper use of our trademarks.”
While the Washington Post's cease-and-desist claims that it "recognizes there are important First Amendment protections for parody and satire," the rest of the letter appears to forget that. Thankfully, the Yes Men have EFF representing them, leading to quite a response letter written by EFF legal director, Corynne McSherry.
We are frankly disappointed that the Washington Post has chosen to take this approach. Given the content of the site and the physical paper, and the ample publicity the spoof has generated, it is difficult to imagine that any member of the public would be confused. Moreover, given the Washington Post's long history of defending free speech and fair use, we had hoped that your paper would recognize the spoof site is entirely legal critical speech.
But there's something else here that goes unmentioned by either the Washington Post or EFF in its response. And it's that (1) the very same URL that the Post is complaining about was once subject to a different trademark lawsuit (2) the Washington Post told a court that it was absolutely critical that said domain be handed over to it (3) which happened... and most importantly (4) the Washington Post did literally nothing with the domain and allowed it to expire, after which it sat unused for years.
This brings us back to the post that eagle-eyed internet lawyer Paul Levy wrote, highlighting that this domain was actually at the heart of a key trademark/domain name dispute from the early 2000s.
In the case of Coca-Cola Company, et al. v. William S. Purdy Sr., et al. in the 8th Circuit, there was a dispute between a few different companies -- including the Washington Post and Coca Cola among others -- who were angry at anti-abortion activist William Purdy, who had registered a bunch of domains that included the trademarked names of these companies, which he then used to push his activist message. One of the domains on the list? Yup: my-washingtonpost.com. As the 8th Circuit explains, at one point Purdy even set up a... parody Washington Post site at that domain:
For several days in early July 2002 Purdy linked the domain names my-washingtonpost.com and drinkcoke.org to a website displaying what appeared to be a front page originating from washingtonpost.com. The page with this format featured the headline “The Washington Post proclaims ‘Abortion is Murder’ ” and contained graphic images of aborted fetuses next to Coca-Cola's trademark and the words “Things Don't Always Go Better With Coke. Abortion is Murder-‘The Real Thing.’ ” (“It's the Real Thing” is a registered trademark of the Coca-Cola Company.) Sometime after this litigation began, Purdy also linked many of the domain names to his own websites which contained references to a claim that plaintiffs supported abortion, graphic photos of aborted fetuses, and links to abortionismurder.com.
Counsel for the Washington Post entities sent a cease and desist letter to Purdy on July 8, 2002, and it persuaded his Internet service provider (ISP) to stop hosting the website at my-washingtonpost.com. Counsel for McDonald's and Pepsi contacted Purdy and his domain name registrars with similar requests around this time. During a telephone conversation with counsel for the Post entities on July 8, Purdy acknowledged that he had published a counterfeit front page at my-washingtonpost.com and claimed that his actions were protected by the First Amendment. The record indicates that Purdy offered to comply with the request of the Post entities if they would publish something written by him on the Washington Post editorial page, but they declined.4 A few days later Purdy reactivated my-washingtonpost.com with a new ISP and published another counterfeit washingtonpost.com front page with antiabortion headlines and graphic content. He also registered washingtonpost.cc and washingtonpost.ws, linked them to abortionismurder.com, and began using the email address dontkillyourbaby@ washingtonpost.cc.
The lower court had ruled against Purdy, saying that he was violating the law with his cybersquatting, and Purdy (somewhat gleefully, apparently) decided to thumb his nose at the court and kept on registering similar domains for similar purposes -- leading the court to issue an injunction barring him from even registering such domains. Levy and Public Citizen -- back in 2003 -- had sought to file an amicus brief in the case, saying that while the court was right to reject Purdy's use of these sites in these cases, the injunction barring him from registering similar domains went too far (since it was conceivable that he might set up sites that were legitimately about those companies, rather than designed to fool people). The court refused to accept that brief.
However, as Levy noted, during the course of the case, the Washington Post had argued that it was quite important that it gain control over Purdy's my-washingtonpost.com:
The Post (and the other companies), claiming that ownership of my-washingtonpost.com was vital to its business, obtained preliminary and later permanent injunctive relief, persuading the federal court in Minnesota, and then the Eighth Circuit, that Purdy’s having offered to trade the removal of his web site for free op-ed space in the Post to express his anti-choice messages made his a sort of commercial use that was, therefore, subject to Lanham Act and ACPA proscription.
Indeed, the district court ordered that Purdy turn over the domain name my-washingtonpost.com to the Washington Post -- though it looks like Purdy tried to ignore this. Looking over historical whois records, it appears that the domain, after originally being registered in 2002, changed hands on January 2, 2003. Based on the timeline laid out by the Appeals Court (and the fact that there was a contempt hearing a few weeks after this), it may be that the Washington Post used the initial court order to get the domain registrar to transfer it (rather than have Purdy willingly hand it over). From the appeals court ruling:
The plaintiffs also moved on October 1 for an order to show cause why Purdy should not be held in contempt for violating the earlier preliminary injunction. The district court appointed a public defender to represent Purdy for purposes of the contempt motion, and a hearing was held on it in January 2003. The court found that Purdy still had not brought himself into compliance with its injunction and issued an order on January 28, 2003 finding him in contempt. The court listed more than 60 domain names that it found he had registered and/or used in violation of its original injunction.5 It again ordered Purdy immediately to cease using the listed domain names and to transfer the names to the rightful owners within three days. Purdy was also ordered to pay plaintiffs $500 per day from the date of the order until he complied and to pay their fees, costs, and expenses.
The next week a status conference was held to assess Purdy's compliance with the January 28 contempt order. At that time Purdy was still using many domain names that had been specifically found to violate the court's injunctions. Although the plaintiffs had succeeded in forcing the transfer of many domain names registered in the United States, some registered in France had apparently not been transferred and were still linked to content of his choice.
So that suggests that the January 3, 2002 transfer of the domain was from Purdy to the Washington Post (though, not done willingly by Purdy, despite the court order). Looking at the Internet Archive, it is clear that the Washington Post did literally nothing with this domain once it had it in its possession. And, again, looking at the historical record, the Washington Post appears to have let the registration on this domain lapse on August 1, 2006, at which point its DNS pointed to "expireddomainservices.com" which is likely a service to scoop up expired domain names to see if someone wants to pay up to get them back. On January 1, 2007, all domain name servers were removed from the domain... until January 13 of this year, when the domain was registered once again and put to use for this particular parody.
So, perhaps the Washington Post's claims back in the day about how important it was that this domain be handed over to it for its own use were not entirely truthful at the time. Shocking.
It certainly would be interesting from the standpoint of an observer, if there were a second legal fight over a parody Washington Post news story using the exact same domain. Of course, this time around, the Washington Post would likely need to explain why (among other problems with its claims), after apparently owning that particular domain for nearly four years, it let it go.