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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

America Online, Inc. v. IMS, et al.

24 F.Supp.2d 548 (E.D.Va., October 29, 1998)

Defendant sent over 60 million pieces of unsolicited junk e-mail to AOL subscribers over a 10 month period. Much of this e-mail contained a forged header indicating it originated from an "" member account. These mailings generated at least 50,000 subscriber complaints. When defendants refused to stop sending this spam after receiving cease and desist letters, plaintiff AOL brought suit, charging that defendants' activities constituted both a violation of the Lanham Act and an unauthorized trespass to its computer network.

The court agreed, and awarded plaintiff summary judgment. Following Compuserve Inc. v. Cyber Promotions, 962 F. Supp. 1015 (S.D. Ohio 1997) the court found that defendant, by continuing to send spam to plaintiff's subscribers after being told by AOL to cease and desist, had trespassed on plaintiff's computer network in violation of Virginia common law. "[Defendant] Melle admits that he received a cease and desist letter from AOL ... and that, as a result of that letter, he knew his contact with AOL's computer network was unauthorized, yet he continued spamming."

The court further held that defendant's act of forging "" in the headers of his e-mail constituted both a false designation of origin and dilution in violation of federal trademark law. This conduct constituted false designation of origin because "[a]ny e-mail recipient could logically conclude that a message containing the initials "" in the header would originate from AOL's registered Internet domain ... [and thereby be] deceived into thinking that AOL sponsored or approved of [defendant] Melle's bulk mailing activities." This injured AOL's reputation with its subscribers.

This conduct also diluted AOL's famous mark by associating it with the transmission of junk e-mail. Such association tarnished the mark. The court accordingly awarded plaintiff summary judgment on liability. Left for another day was the question of damages. This holding is of interest, because it implies that associating one's mark with the sending of junk e-mail tarnishes the mark.

The full text of the court's decision can be found on a web site maintained by America Online.

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