SPRING 2008
Cyberlaw
Course No.: 9200 710 801
Course ID:  17261
Tu 6:30-9:30 p.m.
Room W-215
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
dratler@uakron.edu,
dratler@neo.rr.com
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2008   Jay Dratler, Jr.  
For permission, see CMI.


Notes on Hotmail Corp. v. Van Money Pie, Inc.


1.  Note the plethora of causes of action, all upheld.  For purposes of the preliminary injunction, this court found the defendants liable for: (1) unfair competition, (2) trademark dilution, (3) violation of the Computer Fraud and Abuse Act, (4) breach of contract, (5) fraud and misrepresentation, and (6) trespass to chattels.  Not bad for a bit of computer mischief!  Did the plaintiffs and the court go overboard in sanctioning this conduct, or did the defendants get what they deserved?

We will study the Computer Fraud and Abuse Act later.  For now, focus on the trademark-related claims.

 

2.  What was the basis of plaintiff's unfair competition claim?  Was the "Hotmail" trademark registered?  Did it need to be?  What facts suggest that plaintiff had enforceable rights in the mark even without registration?

 

3.  Was plaintiff's "Hotmail" trademark distinctive?  Where does it fit in the distinctiveness spectrum?  Was it a strong mark?  Are there any special factors that make it strong or weak for use on the Internet?

 

4.  Was there a likelihood of confusion?  Did the court go through all the usual factors, and, if not, would doing so change the result?  Did the court focus on the most relevant factors for the Internet medium?

 

5.  In garden-variety trademark infringement cases, the defendant is said to "pass off" his goods as those of the plaintiff by using the plaintiff's trademark or other symbols and thereby confusing the public into thinking that the defendant's goods are the plaintiff's.  Also actionable is so-called "reverse passing off," in which the defendant uses his own marks on the plaintiff's goods, making the public think that the defenadnt is the source of the plaintiff's goods.  Which description better fits the facts of this case?

 

6. Suppose the defendants had not falsified their return e-mail addresses.  Would there still be a likelihood of confusion?  If so, confusion as to what?  Would plaintiff still have a good cause of action for unfair competition?   for trademark dilution?  Does dilution require a likelihood of confusion?  If not, what does it require, and what specific acts of defendants supplied it here?

 

7.   Subsection (c) of Lanham Act § 43, 15 U.S.C. § 1125(c), was added in 1996.  See Pub. L. No., 104-98, § 3(a), 109 Stat. 985 (Jan. 16, 1996).  Before that time, trademark dilution was a matter of state law.  Some of the major commercial states, such as California, Illinois, and New York, had anti-dilution statutes, but many did not.  Congress thought that uniform, nationwide protection against dilution of trademarks would help protect the public from confusion and trademark owners from others trading on their investment in goodwill and reputation.  Is protection against trademark dilution appropriate on the Internet, or is it overkill?  In this case?  in general?



8.  Remember the Hamidi case, involving multiple e-mails sent to Intel's employees by a disgruntled ex-employee?  That case established a high standard for tresspass-to-chattels claims, at least in California.  Would the facts of this case meet the high standard for such claims established by the Hamidi majority?

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