|
|
|
|
|
|
||||
|
|
|
|
|
|
» Home Page » Members » Practice Areas » Clients   » Publications Articles VIP Newsletter Guide to Registering Read Excerpts  » Events & Speaking » Contact Us » 1-800-343-IDEA |
|
U.S. Intellectual Property and New Media Law Update DILUTING DILUTION Moseley, dba Victor’s Little Secret v. V Secret Catalogue, Inc., (U.S. Supreme Court, March, 2003) TOO FAR BY FAR Young v. New Haven Advocate, et al. (4th Cir. January, 2003) SCRAPE AWAY EF Cultural Travel BV, v. Zefer Corp., Explorica, Inc., et al., (1st Cir. January 2003) RICH MAN, POOR MAN Schmidheiny v. Weber, (3rd Cir. February, 2003) PLEASE NOTE: Steven Bazerman and Beverley Andree of our firm will be attending the INTA Convention in Amsterdam on May 4- 6, 2003. If any of our readers would like to meet, please feel free to e-mail our offices at bdpc@ipcounselors.com and we will try to find a time to say hello. DILUTING DILUTION Moseley, dba Victor’s Little Secret v. V Secret Catalogue, Inc., (U.S. Supreme Court, March, 2003) By now there is not a trademark attorney in the country who does not know Victor's Little Secret. This upset Victoria's Secret. The famous catalog company sued for dilution and the scantily clad facts arrived at the door of the Supreme Court, who then did much to dilute the concept of dilution. The Court first noted the definition of dilution in the statute as the lessening of the capacity of a famous mark to identify and distinguish goods or services. It went on to answer the question whether this requires objective proof of actual injury to the economic value of a famous mark or the statue merely requires a subjective likelihood of dilution. First, it looked at the history of dispute between the Victoria's Secret mark used in connection with their store and catalog house for ladies lingerie and Victor's Secret (later Victor's Little Secret) a small store offering similar but, shall we say, more risque goods. The Supreme Court noted that the Federal Trademark Dilution Act ("FTDA") provides the owner of a famous mark injunctive relief against another person's commercial use of the mark if that use causes dilution of the distinctive quality of the famous mark. They found that the statute unambiguously requires a showing of actual dilution rather than a likelihood of dilution. The mere fact that consumers mentally associated the users mark with a famous mark is not sufficient to establish actionable dilution since this will not necessarily reduce the capacity of the famous mark to identify the goods of its owner. Proposed amendments to the dilution statute are presently being considered to include likelihood of dilution. The decision can be viewed at: http://laws.findlaw.com/us/000/01-1015.html TOO FAR BY FAR Young v. New Haven Advocate, et al. (4th Cir. January, 2003) The question here is whether two Connecticut newspapers and certain of their staff subjected themselves to the personal jurisdiction of Virginia by posting on the Internet news articles discussing the state of Connecticut's policy of housing its prisoners in Virginia institutions, allegedly defaming the warden of a Virginia prison. One of the papers is a free newspaper published once a week in New Haven, Connecticut. It is distributed in New Haven and its surrounding area. The other newspaper defendant, The Courant, is published daily in Hartford, Connecticut and distributed in and around Hartford. The newspaper defendants were centered, concentrated and related solely to the Connecticut market, even though the articles in question did appear on their Internet site, which was available in Virginia. The Virginia long-arm statute extends personal jurisdiction to the extent permitted by the due process clause of the Constitution. The question was whether the defendants had sufficient mininum contacts with the forum such that the exercise of jurisdiction would not offend traditional notions of fair play and substantial justice. This Fourth Circuit noted that when a defendants contact with a forum state is also the basis of the suit, those contacts may establish specific jurisdiction. For specific jurisdiction, the court traditionally asks whether: (1) defendant purposely availed itself of the privileges of conducting activities in the forum state; (2) whether the plaintiff's claims arose out of Defendant's forum related activities; and (3) whether the exercise of personal jurisdiction over the Defendant would be constitutionally reasonable. The Fourth Circuit has emphasized how important it is to look at whether the defendant has expressly aimed or directed its conduct towards the forum state. In other words, the Court required proof that the out of state Defendant's Internet activities is expressly targeted at/or directed to the forum state. In the present case, the Defendant's newspapers did not have an intent to send their website contents to a Virginia audience, thus there is no jurisdiction. The decision can be viewed at: http://laws.findlaw.com/4th/012340p.html SCRAPE AWAY EF Cultural Travel BV, v. Zefer Corp., Explorica, Inc., et al., (1st Cir. January 2003) Plaintiff and Explorica are competitors in the student travel business. Explorica was started in the Spring of 2000 by several of Plaintiff's former employees who aimed to compete in part by copying Plaintiff's prices from Plaintiff's website and setting Explorica's own prices slightly lower. They hired the Defendant to build a scraper tool or robot that would access all of the pricing information for the last several years from its website. In a prior appeal, an injunction against Explorica's use of the scraper information was upheld since the former employees used confidential information to aid in the development of the scraper in violation of the Computer Fraud and Abuse Act ("CFAA"). The present appeal was by the developer of the scraper, which company had no prior relation with EF Cultural Travel. Here the court found that their was no violation of the CFAA by the developer company since there was no proof that it was aware of trade secret violations and the Court felt it was not clear that in accessing a protected computer, they exceeded their authority. The Court said that the best way of indicating the level of access permitted is by a notice by the Plaintiff on its website as to what is authorized and what is not. While the district court found there was a reasonable expectation from the circumstances to indicate that the defendant exceeded its authority, the Court of Appeals thought differently. The appeals court noted that if nothing indicated that the scraping was inappropriate, then the Court would not imply such a requirement. The decision can be viewed at: http://laws.findlaw.com/1st/012001.html RICH MAN, POOR MAN Schmidheiny v. Weber, (3rd Cir. February, 2003) Mr. Schmidheiny has a net worth of $3.1 billion and has been ranked among the wealthiest individuals in the world by Forbes Magazine for the last 3 years. The Defendant, Mr. Weber, acquired the domain name "schmidheiny.com" prior to the enactment of the Anti-Cybersquatting Consumer Protection Act. Mr. Weber sent an e-mail to Schmidheiny's assistant offering to sell Schmidheiny the domain name. The district court decided that the registration of schmidheiny.com was not covered by the Anti-Cybersquatting Consumer Protection Act because the domain name was first registered several months before the date when the statute became effective and the statute references only registrations not re-registrations. The Third Circuit disagreed with the District Court, finding the normal re-registration of a domain name to be registration under the Anti-Cybersquatting Consumer Protection Act and thus actionable. Specifically it found that the creation date of the domain name does not control whether a registration is subject to the Act. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/3rd/021668p.pdf |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|