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Trademark lawsuit over key words in web pages
---------- Forwarded message ----------
Date: Wed, 27 Aug 1997 15:32:36 -0700 (PDT)
From: Declan McCullagh <[email protected]>
To: [email protected]
Subject: Trademark lawsuit over key words in web pages
This is a fascinating lawsuit. Might keywords in web pages -- inserted
like tasty morsels to attract hungry scavenger robots -- violate the law?
Has trademark law become so broad that it violates long-held principles of
free expression? What if my web page criticizes, say, Microsoft's
alliance with Apple -- am I allowed to include "Microsoft sucks" as
keywords? Certainly in this case no person would confuse my web site with
microsoft.com -- but might a robot webcrawler?
-Declan
------------------
http://www.ljx.com/internet/
Patents.com Sues for Trademark Infringement: Can a publisher
infringe a law firm's trademark by including its name in computer
code? A patent law firm is taking the question to federal court.
New York based Oppedahl & Larson, which operates the Internet site
www.patents.com, is suing five companies it claims improperly used the
firm's name to draw business to their web sites.
The firm is charging the companies and three individual defendants
with unfair competition and trademark infringement for including the
firm's name without permission in program coding for their web sites.
Attorneys say some of the coding -- called a meta-tag -- caused
Internet users looking for Oppedahl & Larson to be directed by a
search engine to another company. [...]
------------------
From: Sandi <[email protected]>
>Subject: Re: Competitor Name in Meta-tags Is a No-No
>Date: Wed, 27 Aug 1997 15:31:45 -0600
>
>Dr. Welch of Advanced Concepts (who is being sued) has been
>a online friend of mine for over a year now. In fact, I bought my first
>virtual domain from him and ProWebSite. He is just the nicest
>guy - a dentist in Texas. This whole thing has him quite uptight
>though. I guess you just can't be toooooo careful with those
>pesky Meta Tags...
>
>~Sandi <back to lurk mode>
------------------
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 97-Z-1592
OPPEDAHL & LARSON,
Plaintiff,
v.
ADVANCED CONCEPTS, ROBERT A. WELCH,
CODE TEAM - LBK, INC., GEORGE WILLIAMS,
PROFESSIONAL WEBSITE DEVELOPMENT,
DAVE DEAN, MSI MARKETING, INC., and
INTERNET BUSINESS SERVICES,
Defendants.
[...]
36. Based on an evaluation of the underlying source documents,
Plaintiff has determined that the URLs on defendants' web sites are
using Plaintiff's "OPPEDAHL" and "LARSON" marks to erroneously
identify to search services that these URLs are identifying services
provided by Plaintiff.
37. Notwithstanding plaintiff's well-known and prior use of, and prior
statutory and common-law rights in, the marks "OPPEDAHL & LARSON,"
defendants, without the consent of plaintiff, have adopted, used and
caused to be used in interstate commerce, and continues to use and
cause to be used, the substantially identical mark in connection with
identifying the source of the content of its web pages.
38. Such use by defendants of web pages bearing a substantially
identical mark to plaintiff's mark "OPPEDAHL & LARSON" is misleading
and is likely to cause confusion and mistake, and to deceive the
public into believing falsely that defendants' web pages are connected
with and/or sponsored or authorized by Plaintiff, when in fact
defendants have no connection whatsoever with Plaintiff in regard to
such web pages.
39. Defendants' misleading use of a mark substantially identical to
the mark "OPPEDAHL & LARSON" constitutes false advertising, false
designation of origin, and false representation in and affecting
interstate commerce in violation of Section 43(a) of the Lanham Act,
15 U.S.C. � 1125(a).
40. As a proximate result of the acts of defendants as alleged herein,
Plaintiff has suffered and will continue to suffer great damage to its
business, goodwill, reputation, and profits.
41. Plaintiff has no adequate remedy at law against this unfair
competition. Unless defendants are preliminarily and permanently
enjoined by this Court, plaintiff will continue to suffer irreparable
harm.
Second Cause of Action
(Federal Dilution)
42. Plaintiff realleges and incorporate herein by reference the
allegations of paragraphs 1-37 and 40-41 of the Complaint as set forth
above.
43. As a direct result of plaintiff's long and extensive experience,
care, and skill in producing and marketing legal services and
providing information on intellectual property law under the mark
"OPPEDAHL & LARSON," plaintiff's mark has become famous.
44. Defendants, by using a confusingly similar trademark, are
misleading the public into believing that their services are connected
with Plaintiff's business. On information and belief, the defendants
willfully intended to trade on the reputation of Oppedahl & Larson or
to cause dilution of the "OPPEDAHL & LARSON" mark.
45. Such acts by defendants are likely to deprive plaintiff of the
benefit of the goodwill attached to the mark "OPPEDAHL & LARSON,"
injure plaintiff's business reputation, and dilute the distinctive
quality of plaintiff's trademark in violation of 15 U.S.C. � 1125(c).
46. As a proximate result of the acts of defendants as alleged herein,
plaintiff has suffered and will continue to suffer damage to its
business, goodwill, and reputation.
47. Plaintiff has no adequate remedy at law against this dilution of
and injury to business reputation. Unless defendants are enjoined by
this Court, plaintiff will continue to suffer irreparable harm.
Third Cause of Action
(Unfair Competition - Colorado Common Law)
48. Plaintiff realleges and incorporates herein by reference the
allegations of paragraphs 1-38 the Complaint as set forth above.
49. Plaintiff's mark "OPPEDAHL & LARSON" is inherently distinctive and
has acquired a strong secondary meaning.
50. Defendants' wrongful use of a substantially identical and
therefore confusingly similar trademark as alleged herein is likely to
deceive the public into believing falsely that there is a connection
between plaintiff and defendants. Defendants have unfairly competed
with plaintiff in violation of the Colorado common law.
51. As a proximate result of the acts of defendants as alleged herein,
plaintiff has suffered and will continue to suffer great damage to its
business, goodwill, and reputation.
52. Plaintiff has no adequate remedy at law against this unfair
competition. Unless defendants are enjoined by this Court, plaintiff
will continue to suffer irreparable harm.
53. In acting as alleged herein, defendants have acted with
oppression, fraud, and malice toward plaintiff. Plaintiff is therefore
entitled to an award of punitive damages for the sake of example and
by way of punishing defendants.
Fourth Cause of Action
(Trademark Infringement - Colorado Common Law)
54. Plaintiff realleges and incorporate herein by reference the
allegations of paragraphs 1-38 and 51-53 of the Complaint as set forth
above.
55. Plaintiff has used the mark "OPPEDAHL & LARSON" for providing
intellectual property information over the Internet for many years.
Said mark has become extensively known and associated in the minds of
the public with plaintiff's business and services.
56. Defendants have used the designation "OPPEDAHL" and "LARSON" in
connection with their web pages that is confusingly similar to that
created and used by plaintiff with intentional disregard of
plaintiff's trademark rights. As a result of such acts, defendants are
misleading the public into believing falsely that their web pages are
connected with plaintiff's services, all in violation of the Colorado
common law concerning the protection of trademarks.
57. As a proximate result of the acts of defendants as alleged herein,
plaintiff has suffered and will continue to suffer damage to its
business, goodwill, and reputation.
58. Plaintiff has no adequate remedy at law for the infringements of
the mark "OPPEDAHL & LARSON" alleged herein. Unless defendants are
enjoined by this Court, plaintiff will continue to suffer irreparable
harm.
59. In acting as alleged herein, defendants have acted with
oppression, fraud, and malice toward plaintiff. Plaintiff is therefore
entitled to an award of punitive damages for the sake of example and
by way of punishing defendants.
WHEREFORE, Plaintiff prays for relief as follows:
1. That defendants, their officers, agents, servants, employees and
representatives and all other persons, firms or corporations in
active concert or participation with them, be preliminarily and
thereafter permanently enjoined and restrained from: (1) using in
any manner in connection with any of their web pages, or in
connection with any advertising or promotions of such web pages,
the names and trademarks "OPPEDAHL," "LARSON," and "OPPEDAHL &
LARSON" and any colorable imitation thereof; and (2) doing any act
or thing calculated or likely to cause confusion or mistake in the
minds of members of the public or the trade, or prospective users
of defendants' services, as to the source of services provided,
produced, distributed, sold or offered for sale thereby, or likely
to deceive members of the public or the trade, or prospective
purchasers, into believing that there is some connection between
defendants' and plaintiff or that defendants' web pages are being
produced, distributed, sold or offered for sale with plaintiff's
authorization;
2. That defendants, pursuant to 15 U.S.C. � 1116(a), be directed to
file with this Court and serve upon plaintiff within thirty (30)
days after entry of the injunction, a report in writing under oath
setting forth in detail the manner and form in which they have
complied with the injunction;
3. That defendants, pursuant to 15 U.S.C. � 1118, be ordered to
deliver up for destruction all media, packages, wrappers,
receptacles, and articles in their possession bearing the mark
"OPPEDAHL," "LARSON" and/or "OPPEDAHL & LARSON," or any
reproduction, counterfeit, copy, or colorable imitation thereof,
and all plates, molds, matrices, and other means of making the
same;
4. That defendants account for and pay over to plaintiff all of the
profits realized by defendants, or others acting in concert or
participation with defendant, from the sale and distribution of
their services in connection with the unauthorized use of the
marks "OPPEDAHL," "LARSON" and/or "OPPEDAHL & LARSON," and
defendants' unfair methods of competition as alleged herein;
5. That plaintiff recover its damages sustained as a result of
defendants' unfair competition and infringement of plaintiff's
marks;
6. That plaintiff be awarded three times defendants' profits or three
times plaintiff's damages, whichever is greater, together with its
reasonable attorneys' fees pursuant to 15 U.S.C. �� 1117(a) and
(b);
7. The plaintiff be awarded punitive damages pursuant to Colorado
common law.
8. That plaintiff recover the costs of this action; and
9. That plaintiff be granted such other and further relief as the
Court deems just and proper.
OPPEDAHL & LARSON
Dated: July 23, 1997
Carl Oppedahl
Oppedahl & Larson
611 Main Street
P.O. Box 5540
Frisco, Colorado 80443-5540
(970) 513-9950
Fax (970) 513-9948
Plaintiff
Of Counsel:
Marina T. Larson
Stanley D. Ference III
Oppedahl & Larson
1992 Commerce Street, Suite 309
Yorktown Heights, New York 10598
(914) 245-3252
Fax (914) 962-4330
Address of plaintiff:
Oppedahl & Larson
611 Main Street
P.O. Box 5540
Frisco, Colorado 80443-5540