Successfully Defending Against Trademark Infringement Claims

December 12, 2006 on 11:53 am | In Trademark Infringement | No Comments

Jupiter Hosting Successful in Defending Against Injunction Click on the above title to download Court’s order

Client’s often ask the benefit of doing a search of a name before launching a new company or product. Businesses with a web presence (and who does not have one) often wonder whether a General Commercial Liability policy will cover them in the event they are sued based on their domain name or web site. Both questions can be definitively answered by todays Order by US District Court Judge Claudia Wilkens Denying Jupitermedia’s Motion for Preliminary Injunction against Jupiter Hosting. Jupiter Hosting is represented by Gregory Rutchik. Co-counsel is Roy Gordet.

1) Trademarks in a Crowded Field are Weak. Our successful defense against this injunction was that we “provided substantial evidence that Defendants trademark is positioned in a crowded field.” We were able to present literally hundreds of businesses that use the term JUPITER in either their entity name, product name or domain name. When the Court asked Juptiermedia, the movant, what they knew about these entities, they responded “not much.” That certainly did not help them.

2) The Moving party must show real harm. It did not help Jupitemedia that they did not show that they suffered any harm between October 2001 and today as a result of the use by Jupiter Hosting of the domain name jupiterhosting.com

3) Special insurance offered by the likes of Media Pro for Cyberliability provide much more extensive coverage against a claim of injunctive relief arising from trademark infringement. In fact, had my client not obtained this coverage (brokered by Cal North Insurance www.calnorth.com) they would have had to foot the bill themselves without the support of a policy.

Blogs are great sources for discovery
In a related story, I was recently quoted by Computerworld « (Full Article) about the Legal Risks of Blogging. The bottom line is that whether you are litigating or preparing to do a deal with someone, you should scour the blogs. There is more often than not some great stuff in company blogs. Sometimes, a party denies something in their moving papers or to your face but sure enough the truth comes out in their blog. Blogs by CEO’s of entities can be most damaging when they take an opposite position in their papers. I am all for blogs obviously but I caution companies to consider a policy broad enough to allow them to flourish but detailed enough to prevent your employees and consultants from making statements that are bound to come back and bite.