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Among the aspects of the Internet that have fueled its success are the many ways to communicate instantly with others, including e-mail, instant messaging (IM), chat rooms, message boards and blogging. Because the e-mail addresses and screen names used for these modes of communication are largely self-assigned, Internet users have the ability to use almost anything to identify themselves. Sometimes they decide to use another’s personal name, business name or trademark in their e-mail addresses or screen names. Whether they intend to make money, make a point or make a joke, their actions nonetheless may implicate trademark law. As a result, courts are increasingly addressing whether the use of e-mail addresses and screen names run afoul of the trademark laws. Two recent cases-one involving a law firm’s use of a former partner’s name in e-mail addresses and one involving an employee’s use of his employer’s trademark in an e-mail address and IM screen name to promote a competing organization-highlight the importance of these emerging issues. So do earlier decisions involving e-mail addresses and screen names in the context of trademark claims. A law firm’s continued use of a former name partner’s name in e-mail addresses provoked a lawsuit in Tillery v. Leonard & Sciolla LLP, 437 F. Supp. 2d 312 (E.D. Pa. 2006). M. Kelly Tillery became a name partner in the defendant law firm in 1992. After Tillery announced his resignation in April 2005, the firm renamed itself Leonard Sciolla. About a week before Tillery departed, the firm began using a new domain name, leonardsciolla.com, for its Web site and all outgoing e-mail. But the firm maintained the domain name leonardtillery.com, which, at first, automatically forwarded users to the new www.leonardsciolla.com site. The firm later posted a page at www.leonardtillery.com stating that Tillery was no longer at the firm and announcing the firm’s name change. The firm also continued to receive “ [email protected]” e-mail as usual except for e-mails sent to “ [email protected].” The firm initially forwarded Tillery’s e-mails to him but later sent automatic responses advising that Tillery was no longer at the firm and providing his new e-mail address. Tillery sued and alleged that the firm’s continued use of the leonardtillery.com domain name and “ [email protected]” e-mail addresses constituted infringement. The court denied his motion for a preliminary injunction, holding that, even assuming he could establish trademark rights in the mark “ Tillery,” he did not show a likelihood of confusion. As noted above, clients or would-be clients sending e-mails to [email protected] were instantly informed that Tillery was no longer with the firm and told how to contact him. Moreover, the balancing of the harms favored the firm, which showed that it would suffer “some harm from the initial frustration” of clients trying unsuccessfully to contact the firm. And Tillery conceded that he did not lose any clients and that his practice had not been harmed. The firm’s continued use of “ [email protected]” could not harm Tillery for the reasons discussed above, and Tillery could not explain how he was harmed when a firm employee received a “ [email protected]” e-mail. Use of ‘Playboy’ marks In two cases, pornographers used Playboy’s trademarks in e-mail addresses containing Playboy’s trademarks. In Playboy Enters. Inc. v. Universal Tel-A-Talk Inc., 1998 U.S. Dist. Lexis 17282 (E.D. Pa. Nov. 2, 1998), the defendant operated a Web site at www.adult-sex.com/ playboy, which prominently featured Playboy’s marks. The defendant also invited Internet users to send e-mail messages to “ [email protected].” After the court entered a temporary restraining order and then preliminarily enjoined the defendant’s use of Playboy’s marks, the case went to trial. The court held that the defendant’s use of Playboy’s trademarks constituted infringement and dilution. It permanently enjoined the defendant from, among other things, using the “Playboy” mark as a domain name, directory name or other computer addresses. The court did not specifically list e-mail addresses but its reference to “other computer addresses” likely included e-mail addresses. Similarly, in Playboy Enters. Inc. v. AsiaFocus Int’l Inc., 1998 U.S. Dist. Lexis 10359 (E.D. Va. Feb. 2, 1998) (magistrate judge’s recommendation and report), 1998 U.S. Dist. Lexis 10459 (E.D. Va. April 10, 1998) (order adopting magistrate judge’s recommendation and report), Playboy sued two companies that used the “Playmate” and “Playboy” trademarks for adult-entertainment Web sites. The court entered default judgment, holding that the defendants’ actions constituted infringement and dilution. Regarding dilution, the court found that the defendants’ activities diminished the capacity of Playboy’s famous marks to identify its goods and services. These activities included using Playboy Enterprises Inc.’s “Playmate” mark in their e-mail address [email protected] and promoting the sale of collateral merchandise that could be ordered via e-mail. The use of another’s trademark in spam e-mail has been at issue in several cases. Most recently, in Classified Ventures LLC v. Softcell Mktg. Inc., 109 F. Supp. 2d 898 (N.D. Ill. 2000), the owner of the trademark and domain name cars.com sued after the defendant sent at least 100,000 e-mail messages to America Online subscribers. The defendant’s e-mails contained advertisements for pornography and bore the false return address “ [email protected].” Pursuant to a permanent consent injunction, the court found that the defendant’s use of the cars.com mark in its e-mails constituted infringement, dilution and unfair competition. The court enjoined the defendant from sending any e-mail containing “cars.com.” See also Hotmail Corp. v. Van$ Money Pie Inc., 47 U.S.P.Q.2d 1020 (N.D. Calif. 1998); Am. Online Inc. v. IMS, 24 F. Supp. 2d 548 (E.D. Va. 1998); Am. Online Inc. v. Prime Data Sys. Inc., 1998 U.S. Dist. Lexis 20226 (E.D. Va. Nov. 20, 1998). A disgruntled consumer used the plaintiffs’ trademarks in domain names and e-mail addresses to criticize the plaintiffs in Bear Stearns Cos. Inc. v. Lavalle, 2002 U.S. Dist. Lexis 23117 (N.D. Texas Dec. 3, 2002). The plaintiffs operated the Bear Stearns investment company and EMC mortgage company. After losing a lawsuit over foreclosure of his parents’ home, the defendant registered and used various domain names containing the plaintiffs’ marks to criticize the plaintiffs (e.g., emcmortgagecomplaints.com and bearstearnscriminals.com). The defendant used these Web sites and the e-mail address [email protected] to solicit litigants and lawyers to prosecute lawsuits against the plaintiffs. The court granted the plaintiffs’ motion for a preliminary injunction, finding that the defendant’s use of EMC in an e-mail address with a term similar to the “mortgage” portion of the plaintiffs’ mark (i.e., “foreclosure”) was likely to cause confusion. It enjoined the defendant from using the “ [email protected]” e-mail address and other “ EMC” e-mail addresses except for addresses that on their face were unmistakably critical of plaintiffs (e.g., [email protected]). In another case, an employee used an e-mail address similar to his “official” work e-mail address to solicit business for a competing organization. In Freedom Calls Foundation v. Bukstel, 2006 WL 845509 (E.D.N.Y. March 3, 2006), the plaintiff operated a nonprofit organization called “Freedom Calls,” which helped soldiers on active military duty communicate with their families. The Web address was www.freedomcalls.org. The defendant, a former officer and director of the plaintiff, used the e-mail address [email protected] while employed by the plaintiff. Unbeknownst to the plaintiff, the defendant registered the domain name www.freedomcalls.us while still employed by the plaintiff and used this name for a Web site titled “Freedom Calls Volunteers,” which featured content from the plaintiff’s Web site and pictures of the plaintiff’s supporters and clients. The defendant used the e-mail address [email protected] to e-mail the plaintiff’s current clients and supporters. The court granted the plaintiff’s motion for a preliminary injunction on infringement, holding that the “Freedom Calls” mark was distinctive and had acquired secondary meaning, and that the freedomcalls.us domain name and [email protected] e-mail address were confusingly similar to the plaintiff’s “Freedom Calls” marks. The court thus enjoined the defendant from using any e-mail address including “freedomcalls.” Screen names Screen names, like e-mail addresses, enable communication using a self-assigned online persona. In two cases, the defendants used screen names to post comments criticizing the plaintiff. In N.Y. Stock Exch. Inc. v. Gahary, 196 F. Supp. 2d 401 (S.D.N.Y. 2002), the defendant used variations of the name of the New York Stock Exchange’s (NYSE) then-chairman, Richard Grasso, as screen names in investor chat rooms and posted messages allegedly to parody Grasso. These screen names included “richardgrasso” and “dickgrasso.” The parties filed cross-motions for summary judgment on the NYSE’s infringement claim. The NYSE asserted that Grasso’s name was a protectable trademark because it had attained secondary meaning, whereas the defendant argued that his use of Grasso’s name was a parody protected by the First Amendment. The court denied both motions, finding insufficient evidence of secondary meaning or of a likelihood of confusion. It also found that the defendant’s use of Grasso’s name may constitute a parody and that it did not matter if the parody failed. Indeed, it appeared that the attempted parody failed because too few posters knew who Richard Grasso was. Moreover, even if the defendant’s actions did not qualify as a parody, the court noted that they might still qualify for First Amendment protection as part of a communicative message. In Highfields Capital Management L.P. v. Doe, 385 F. Supp. 2d 969 (N.D. Calif. 2005), an investment-fund management firm and the largest shareholder of Silicon Graphics Inc. (SGI), sued an unknown poster on Yahoo!’s message board for SGI. Using the screen name “highfieldscapital,” the defendant posted comments on the SGI message board with obvious sarcasm about dissatisfaction with SGI’s stock performance and the quality of the plaintiff’s investment advice. The court observed that many of the thousands of postings on the SGI message board were “crude, indecent, or transparently laughable,” many purported to predict the future price of SGI stock, and many implied access to inside information. Moreover, many screen names used on the SGI board suggested some connection to SGI. The plaintiff sued for infringement, defamation and disparagement. It served a subpoena on Yahoo! to disclose the defendant’s identity, but the court quashed the subpoena. It held that, to discover the defendant’s identity, the plaintiff must show “a real evidentiary basis” that the defendant had engaged in wrongful conduct that caused “real harm” to the plaintiff’s interests. Regarding trademark infringement, the court held that the plaintiff failed to show that the defendant’s conduct was “commercial” because the postings were not “commercial” or driven by some “competitive” purpose; they did not sell or promote any goods or services or contain links to other Web sites; and nothing in them helped viewers in determining the defendant’s identity and receptiveness to business overtures. Moreover, although the defendant’s screen name was similar to the plaintiff’s “Highfields Capital” mark, the court believed the context in which the defendant used the name substantially undercut the risk of likelihood of confusion. Users understood that a sophisticated, federally regulated investor like the plaintiff would not use message boards to provide free and possibly illegal investment advice. And many obviously bogus impersonations riddled the board. In fact, the defendant’s use of the plaintiff’s mark in its screen name was “necessary” to make the parody. The balance of harms clearly favored the defendant. According to the court, “[a]nonymity liberates,” and allowing users to post with screen names similar to registered trademarks with “some message-related resonance or cachet contributes to the First Amendment ends of enriching the substance of the speech and of getting the message to a wider audience.” Id. at 980. Moreover, allowing the subpoena would chill such commentary by causing public exposure and financial and legal liability for the defendant. Finally, in the Freedom Calls case, discussed above, the defendant also used the plaintiff’s “Freedom Calls” mark in the instant-message screen name “freedomcallsbukstel.” The court enjoined the defendant from using any instant-messaging account containing “freedomcalls.” As these cases show, the largely self-assigned nature of e-mail addresses and screen names and the ease of obtaining them have given rise to a number of trademark disputes. Just as courts have applied the basic principles of “bricks-and-mortar” trademark law to the then-new problems of domain names, metatags and keywords, courts have continued to look to the bedrock principles of trademark law to evaluate and decide trademark claims involving e-mail addresses and screen names. David M. Kelly chairs the trademark practice group at Washington-based Finnegan, Henderson, Farabow, Garrett & Dunner, which specializes in intellectual property law. Taylor C. Foss is a law clerk with the firm.

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