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If you thought the Bush-Gore 2000 presidential election was strange, take a look at the 2002 election for governor of Ohio. One of the major players of this recent election was a duck similar to the character used in commercials by American Family Life Assurance Co. (AFLAC). The “taftquack” commercials prompted litigation by AFLAC alleging trademark dilution, copyright infringement and unfair competition. ‘TAFTQUACK’ In the election, incumbent Gov. Robert Taft ran against challenger Timothy Hagan. Hagan and his campaign created Internet commercials that borrow largely from the well-known AFLAC-Duck commercials in which a white duck quacks the insurance company’s abbreviated name in a distinctive, nasal tone. Hagan’s Internet commercials included a crudely animated character made up of Gov. Taft’s head sitting on the body of a white cartoon duck. The duck quacks “TaftQuack” several times during each commercial. These commercials run on the Web site www.taftquack.com. RUSH TO THE COURTHOUSE Legal action quickly ensued, however –not by incumbent Taft, but instead by AFLAC. AFLAC sued challenger Hagan and his campaign for trademark and service mark dilution, copyright infringement, false designation of origin and unfair competition. AFLAC sought a temporary restraining order barring the further broadcasting of the TaftQuack commercials and discontinuing the use of the www.taftquack.com Web site domain name. U.S. District Judge Kathleen O’Malley of the Northern District of Ohio denied AFLAC’s request, but calendared a more complete hearing on a preliminary injunction motion. Judge O’Malley heard the motion on Oct. 16, and on Oct. 25, she issued a ruling in favor of Hagan. THE COURT’S RULING Much to AFLAC’s dismay, O’Malley once again denied AFLAC’s request for relief. The judge remained unpersuaded that AFLAC had sufficiently proved up its case. O’Malley found at least four matters to be of importance in reaching her decision. First, this is not a case in which the defendants are using a Web site address that is easily mistaken for the Web site address of the plaintiff. Here, Hagan and his campaign were not using a domain name such as www.aflac.org for his campaign Web site. He thus was not “tricking or detouring” users looking for information concerning AFLAC into reading materials posted on his Web site. Second, the TaftQuack commercials make no mention at all of AFLAC, its business practices or the insurance products that it sells. Therefore, according to the judge, the TaftQuack commercials are not a parody of AFLAC or the AFLAC-Duck commercials. Third, here the alleged infringer is “a politician in the midst of a campaign, and he is using the allegedly infringing materials in furtherance of that campaign,” rather than a more common alleged infringer using allegedly infringing materials for commercial purposes. And fourth, and perhaps most significantly, O’Malley found that “there is no substantial likelihood that reasonable members of the public will perceive Hagan” as “affiliated with, connected with, or sponsored by” AFLAC, as alleged by AFLAC. POST MORTEM — ELECTION OVER, BUT CASE GOES ON The election is over and Gov. Taft was re-elected. So, one would suspect that AFLAC’s lawsuit is over as moot — wrong! Indeed, Judge O’Malley has scheduled a status conference for Nov. 20, to establish a discovery schedule and to set a trial date. O’Malley has continued this matter because the issues presented are “capable of repetition, but evading review.” The precise issues raised in this case arose in a controversy between AFLAC and former Georgia Sen. Mack Mattingly. During a campaign for reelection, Sen. Mattingly used television commercials with a white duck that quacked “Back Mack.” Thus, the issues could arise over and over again. Because elections take place sooner than final legal resolution, O’Malley believes that the mootness doctrine should not allow this particular case to escape her judicial resolution. Accordingly, AFLAC will have its full day in court with O’Malley. Yet, is that a good thing? Twice already at preliminary stages she has rejected AFLAC’s claims. Bad luck comes in threes, and that may be true for AFLAC. Eric Sinrod is a partner in the San Francisco office of Duane Morris LLP (www.duanemorris.com), where he focuses on litigation and information technology matters. He can be reached at [email protected]and his Web site is www.sinrodlaw.com.

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