The Virtual Lawyer

AOL Latino Suit Continues

A New York federal court has denied, in part, a famous Internet service provider's motion to dismiss a complaint filed by a proprietor who alleged breach of contract and tortious interference against the ISP.

In America Online Latino v. America Online, Inc., et al., 02 Civ. 4796 (LAK)(S.D.N.Y., 3/13/03) the plaintiff, a business proprietor, sued defendants, an ISP, and other entities providing related services, alleging that defendants conspired to deprive the proprietor of his Internet domain name, which incorporated the ISP's domain name with an added word referring to a specific ethnic community. Defendants moved to dismiss the complaint.

The court first held that the name transfer was not precluded by the proprietor's e-mails concerning the lawsuit, since the e-mails did not constitute official documentation of the lawsuit as required to stay the arbitration award. Further, the proprietor admittedly never used the domain name in business and could not deny the ISP's senior use of the name, and thus the proprietor did not own trademark rights in the name and could not claim entitlement to the name.

However, the court went on to rule that the proprietor could potentially establish claims for breach of contracts with individual defendants, and could possibly show improper concerted action to interfere with the proprietor's plan to serve the ethnic community. Defendants' motions to dismiss the complaint were granted in part and denied in part.

Injunction Against COPA Upheld

In ACLU v. Ashcroft, 99-1324 (3rd Cir. 3/6/03), the U.S. District Court for the Eastern District of Pennsylvania granted a preliminary injunction against the enforcement of the Child Online Protection Act (COPA), 47 U.S.C.S. '231, which the Third Circuit affirmed. The United States Supreme Court had vacated and remanded the case for consideration of the narrow question as to whether COPA's use of 'community standards' to identify material that was harmful to minors violated the First Amendment.

The Third Circuit held that the grant of a preliminary injunction, on the grounds that COPA, in failing to satisfy strict scrutiny, had no probability of success on the merits, was not an abuse of discretion. COPA was clearly a content-based restriction on speech. Although it did purport to serve a compelling governmental interest, it was not narrowly tailored, and thus failed strict scrutiny. Moreover, it did not use the least restrictive means to achieve its ends.

The breadth of the 'harmful to minors' and 'commercial purposes' text of COPA, especially in light of applying community standards to a global medium and the burdens on speech created by the statute's affirmative defenses, as well as the fact that Congress could have, but failed to employ the least restrictive means to accomplish its legitimate goal, supported the preliminarily injunction.

The 'community standards' requirement, when viewed in conjunction with the other provisions added to the already wide range of speech swept in by COPA. The circuit court reasoned that Plaintiffs would more probably than not prove at trial that COPA was substantially overbroad. The circuit court affirmed the issuance of the preliminary injunction.

'Freebies' Is ' Free

In Retail Services, Inc. v. Freebies Publishing, 02-1111-A (E.D. VA, 2/27/03), plaintiffs sued defendant publishing company and its owners for a declaration that their Web site did not violate the Anti-Cybersquatting Consumer Protection Act, Pub. L. No. 106-113, 113 Stat. 1501A-545 (1999) and the Lanham Act, 15 U.S.C.S. '1051 et seq. The plaintiffs also sought cancellation of the owners' trademark registration. The owners counterclaimed. The plaintiffs moved for summary judgment.

The owners acquired the rights to the 'freebies' trademark because the prior owner of the company had registered a stylized version of the word 'freebies' as a trademark for use in newspapers. The owners subsequently registered the domain name freebies.com. The plaintiffs developed a Web site called freebie.com. The owners sent the plaintiffs a cease and desist letter. An arbitrator ordered the domain name freebie.com transferred to the owners. The plaintiffs sued to block the transfer. The court found that among Internet users and readers of Internet magazines, 'freebies' had become a generic term that referred to free or almost free goods and services, and that the word was not associated with the company in particular. Therefore, the owners could not maintain trademark protection for their use of the word 'freebies.'

Because both the stylized word 'freebies' and the word itself were included in the owners' registration, the entire trademark registration had to be cancelled under 15 U.S.C.S. '1064(3) because 'freebies' was generic. Thus, the corporations were entitled to summary judgment on the owners' counterclaims, all of which rested on the validity of their trademark.

The corporations' motion for summary judgment was granted and judgment was entered in favor of the corporations as to all counts of the complaint and counterclaim. The court ordered that the trademark registration be cancelled and removed from the Principal Register, that the corporations' use of the domain name did not violate the Anti-Cybersquatting statute, and that the corporations retained ownership of and the right to use the subject domain name.

AOL Latino Suit Continues

A New York federal court has denied, in part, a famous Internet service provider's motion to dismiss a complaint filed by a proprietor who alleged breach of contract and tortious interference against the ISP.

In America Online Latino v. America Online, Inc., et al., 02 Civ. 4796 (LAK)(S.D.N.Y., 3/13/03) the plaintiff, a business proprietor, sued defendants, an ISP, and other entities providing related services, alleging that defendants conspired to deprive the proprietor of his Internet domain name, which incorporated the ISP's domain name with an added word referring to a specific ethnic community. Defendants moved to dismiss the complaint.

The court first held that the name transfer was not precluded by the proprietor's e-mails concerning the lawsuit, since the e-mails did not constitute official documentation of the lawsuit as required to stay the arbitration award. Further, the proprietor admittedly never used the domain name in business and could not deny the ISP's senior use of the name, and thus the proprietor did not own trademark rights in the name and could not claim entitlement to the name.

However, the court went on to rule that the proprietor could potentially establish claims for breach of contracts with individual defendants, and could possibly show improper concerted action to interfere with the proprietor's plan to serve the ethnic community. Defendants' motions to dismiss the complaint were granted in part and denied in part.

Injunction Against COPA Upheld

In ACLU v. Ashcroft, 99-1324 (3rd Cir. 3/6/03), the U.S. District Court for the Eastern District of Pennsylvania granted a preliminary injunction against the enforcement of the Child Online Protection Act (COPA), 47 U.S.C.S. '231, which the Third Circuit affirmed. The United States Supreme Court had vacated and remanded the case for consideration of the narrow question as to whether COPA's use of 'community standards' to identify material that was harmful to minors violated the First Amendment.

The Third Circuit held that the grant of a preliminary injunction, on the grounds that COPA, in failing to satisfy strict scrutiny, had no probability of success on the merits, was not an abuse of discretion. COPA was clearly a content-based restriction on speech. Although it did purport to serve a compelling governmental interest, it was not narrowly tailored, and thus failed strict scrutiny. Moreover, it did not use the least restrictive means to achieve its ends.

The breadth of the 'harmful to minors' and 'commercial purposes' text of COPA, especially in light of applying community standards to a global medium and the burdens on speech created by the statute's affirmative defenses, as well as the fact that Congress could have, but failed to employ the least restrictive means to accomplish its legitimate goal, supported the preliminarily injunction.

The 'community standards' requirement, when viewed in conjunction with the other provisions added to the already wide range of speech swept in by COPA. The circuit court reasoned that Plaintiffs would more probably than not prove at trial that COPA was substantially overbroad. The circuit court affirmed the issuance of the preliminary injunction.

'Freebies' Is ' Free

In Retail Services, Inc. v. Freebies Publishing, 02-1111-A (E.D. VA, 2/27/03), plaintiffs sued defendant publishing company and its owners for a declaration that their Web site did not violate the Anti-Cybersquatting Consumer Protection Act, Pub. L. No. 106-113, 113 Stat. 1501A-545 (1999) and the Lanham Act, 15 U.S.C.S. '1051 et seq. The plaintiffs also sought cancellation of the owners' trademark registration. The owners counterclaimed. The plaintiffs moved for summary judgment.

The owners acquired the rights to the 'freebies' trademark because the prior owner of the company had registered a stylized version of the word 'freebies' as a trademark for use in newspapers. The owners subsequently registered the domain name freebies.com. The plaintiffs developed a Web site called freebie.com. The owners sent the plaintiffs a cease and desist letter. An arbitrator ordered the domain name freebie.com transferred to the owners. The plaintiffs sued to block the transfer. The court found that among Internet users and readers of Internet magazines, 'freebies' had become a generic term that referred to free or almost free goods and services, and that the word was not associated with the company in particular. Therefore, the owners could not maintain trademark protection for their use of the word 'freebies.'

Because both the stylized word 'freebies' and the word itself were included in the owners' registration, the entire trademark registration had to be cancelled under 15 U.S.C.S. '1064(3) because 'freebies' was generic. Thus, the corporations were entitled to summary judgment on the owners' counterclaims, all of which rested on the validity of their trademark.

The corporations' motion for summary judgment was granted and judgment was entered in favor of the corporations as to all counts of the complaint and counterclaim. The court ordered that the trademark registration be cancelled and removed from the Principal Register, that the corporations' use of the domain name did not violate the Anti-Cybersquatting statute, and that the corporations retained ownership of and the right to use the subject domain name.