---------- Forwarded message ---------- Date: Wed, 27 Aug 1997 15:32:36 -0700 (PDT) From: Declan McCullagh <declan@well.com> To: fight-censorship-announce@vorlon.mit.edu 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 <sandi@spiderwebb.com>

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