Nonlawyer at 9th Circuit Beats Toyota on Trademark Law

by: Cheryl Miller, The Recorder
July 09, 2010
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A pro se litigant took on Toyota and won Thursday when the 9th U.S. Circuit Court of Appeals held that her family business's domain names, buy-a-lexus.com and buyorleaselexus.com, did not infringe on the auto giant's trademark.

The trial court's injunction barring Lisa and Farzad Tabari from using the word Lexus in their brokerage's website address was "plainly overbroad," Chief Judge Alex Kozinski wrote for the majority.

"It prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement," Kozinski wrote. "The Tabaris are prohibited from doing business at sites like independentlexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn't believe Toyota sponsors the websites using those domains."

The three-judge panel remanded the case to the district court where "the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris."

Reached at her Mission Viejo, Calif., home Thursday, Lisa Tabari said she was "in shock," as she was focused on preparing for her 12-year-old daughter's birthday party, not a court ruling. "This was the best gift in the world."

She and her husband, Farzad Tabari, ran a mom-and-pop car brokerage that specialized in linking would-be Lexus buyers with dealers. The couple built good relationships with local car lots and thought they had created a thriving business, Lisa Tabari said, until one day when they received a cease-and-desist letter in the mail from Toyota Motor Sales, which sells Lexuses. The company ordered the Tabaris to stop using the Lexus name in their URLs as well as Lexus marks on their website.

"We felt so hurt, so betrayed," Lisa Tabari said. "We kept standing in front of their attorneys saying 'We don't understand what we're doing wrong.'"

Attorneys for Toyota at Greines, Martin, Stein & Richland in Los Angeles were not immediately available for comment Thursday afternoon.

The Tabaris hired a lawyer. But after the legal bills racked up, they decided to go pro se. Neither one has any legal training. Lisa Tabari said she would read and do research on the case at night and then grab some sleep in the morning while her husband watched their two young daughters.

"We decided it's either we're going to throw in the towel or we're going to put our hands together and fight this," she said. "We just decided to put in 150 percent, and we did."

On July 8, 2009, Lisa Tabari approached the three-judge panel for oral arguments "with my legs shaking. It wasn't pretty ... But everyone in the court system, they were so wonderful to us."

The panel held that the Tabaris' use of the word Lexus did not suggest the company sponsored or endorsed the brokerage. The word was descriptive, Kozinski wrote, and a nominative fair use not subject to an infringement claim.

"The wholesale prohibition of nominative use in domain names ... would be unfair," the court held. "The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers."

Kozinski was joined in the majority opinion by Judge N. Randy Smith. Judge Ferdinand Fernandez concurred but said in a brief opinion that he could not condone some of Kozinski's rhetorical flourishes or what he saw as the majority's "gratuitous slap" at counsel for Toyota.

Lisa Tabari said that after the district court barred the use of the Lexus domain names, business slowed to a trickle and the family home is now in foreclosure. But if the 9th Circuit's ruling holds, she said, "Please know that we'll be back in business."