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Judge: Outdated caselaw needs revised to handle Internet issues

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A dissenting judge in an unfair competition case involving the near simultaneous registrations of the same Internet domain name urged the Indiana Legislature and Supreme Court to “usher Indiana into the technological realities of the 21st Century.”

Judge Patricia Riley dissented from her colleagues Judge Melissa May and Chief Judge Nancy Vaidik in Serenity Springs, Inc. and Laura Ostergren v. The LaPorte County Convention and Visitors Bureau, by and through its Board of Managers, 46A04-1309-MI-470, a case that’s before the appeals court for the second time in a little more than a year.

The LaPorte County Convention and Visitors Bureau sued area hotel-resort Serenity Springs after the resort registered the domain name “visitmichigancitylaporte.com” just hours of the visitors bureau announced at a public meeting the phrase “Visit Michigan City LaPorte” was selected as the branding identifier for the area. Because Serenity Springs registered that domain name first – and used it to direct traffic to its website – the visitors bureau was unable to acquire it.

In April 2013, the Indiana Court of Appeals reversed the trial court’s holding that permanently enjoined Serenity from using the designation or domain name and ordered the resort to transfer the domain to the bureau. But the trial court hadn’t considered all of the claims before it when it issued that ruling last year, so on remand, the trial court once again ruled in favor of the visitors bureau on its claim of unfair competition and trade name infringement.

The majority, citing Hartzler v. Goshen Churn Ladder Co., 55 Ind. App. 455, 104 N.E. 34 (1914), reversed and ruled in favor of the resort.

“We acknowledge authority from other jurisdictions suggests a ‘single use’ or an ‘initial use’ is sufficient (on an unfair competition claim),” Judge Melissa May wrote. “But even that standard is not met in the case before us; we have only the Bureau’s statement of its intention to commence using that phrase. Serenity Springs’ actions therefore did not amount to unfair competition, and it was error for the trial court to so hold.”

“Visit Michigan City LaPorte,” was not a protectable trade name and Serenity Springs’ use of it was not unfair competition, the majority held.

Judge Patricia Riley, in her dissent, argued that the bureau established a bona fide initial use of the phrase by paying a marketing firm and announcing the results in a televised meeting. But the majority declined to hold paying for a study and announcing its results amounts to even a single or initial “use in trade.”

Riley described Hartzler as “still good law,” but its principles are “difficult to apply to an era where messages can be sent at the speed of light and goods can be purchased by the push of a button.” She noted she could not find a case anywhere that has dealt with the nearly simultaneous registrations of domain names in the context of common law unfair competition, and that Indiana caselaw is extremely sparse with respect to trademarks and trade names.   

“In light of Indiana’s sparse and outdated case law, I would urge our Legislature and supreme court, if the opportunity arises, to look beyond the man and cart method promoted by Hartzler and approved by an out-of-touch majority, and instead usher Indiana into the technological realities of the 21st Century by formulating tools appropriate to handle the complexities of the internet’s realm,” she wrote.

 

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  1. It really doesn't matter what the law IS, if law enforcement refuses to take reports (or take them seriously), if courts refuse to allow unrepresented parties to speak (especially in Small Claims, which is supposedly "informal"). It doesn't matter what the law IS, if constituents are unable to make effective contact or receive any meaningful response from their representatives. Two of our pets were unnecessarily killed; court records reflect that I "abandoned" them. Not so; when I was denied one of them (and my possessions, which by court order I was supposed to be able to remove), I went directly to the court. And earlier, when I tried to have the DV PO extended (it expired while the subject was on probation for violating it), the court denied any extension. The result? Same problems, less than eight hours after expiration. Ironic that the county sheriff was charged (and later pleaded to) with intimidation, but none of his officers seemed interested or capable of taking such a report from a private citizen. When I learned from one officer what I needed to do, I forwarded audio and transcript of one occurrence and my call to law enforcement (before the statute of limitations expired) to the prosecutor's office. I didn't even receive an acknowledgement. Earlier, I'd gone in to the prosecutor's office and been told that the officer's (written) report didn't match what I said occurred. Since I had the audio, I can only say that I have very little faith in Indiana government or law enforcement.

  2. One can only wonder whether Mr. Kimmel was paid for his work by Mr. Burgh ... or whether that bill fell to the citizens of Indiana, many of whom cannot afford attorneys for important matters. It really doesn't take a judge(s) to know that "pavement" can be considered a deadly weapon. It only takes a brain and some education or thought. I'm glad to see the conviction was upheld although sorry to see that the asphalt could even be considered "an issue".

  3. In response to bryanjbrown: thank you for your comment. I am familiar with Paul Ogden (and applaud his assistance to Shirley Justice) and have read of Gary Welsh's (strange) death (and have visited his blog on many occasions). I am not familiar with you (yet). I lived in Kosciusko county, where the sheriff was just removed after pleading in what seems a very "sweetheart" deal. Unfortunately, something NEEDS to change since the attorneys won't (en masse) stand up for ethics (rather making a show to please the "rules" and apparently the judges). I read that many attorneys are underemployed. Seems wisdom would be to cull the herd and get rid of the rotting apples in practice and on the bench, for everyone's sake as well as justice. I'd like to file an attorney complaint, but I have little faith in anything (other than the most flagrant and obvious) resulting in action. My own belief is that if this was medicine, there'd be maimed and injured all over and the carnage caused by "the profession" would be difficult to hide. One can dream ... meanwhile, back to figuring out to file a pro se "motion to dismiss" as well as another court required paper that Indiana is so fond of providing NO resources for (unlike many other states, who don't automatically assume that citizens involved in the court process are scumbags) so that maybe I can get the family law attorney - whose work left me with no settlement, no possessions and resulted in the death of two pets (etc ad nauseum) - to stop abusing the proceedings supplemental and small claims rules and using it as a vehicle for harassment and apparently, amusement.

  4. Been on social security sense sept 2011 2massive strokes open heart surgery and serious ovarian cancer and a blood clot in my lung all in 14 months. Got a letter in may saying that i didn't qualify and it was in form like i just applied ,called social security she said it don't make sense and you are still geting a check in june and i did ,now i get a check from my part D asking for payment for july because there will be no money for my membership, call my prescription coverage part D and confirmed no check will be there.went to social security they didn't want to answer whats going on just said i should of never been on it .no one knows where this letter came from was California im in virginia and been here sense my strokes and vcu filed for my disability i was in the hospital when they did it .It's like it was a error . My ,mothers social security was being handled in that office in California my sister was dealing with it and it had my social security number because she died last year and this letter came out of the same office and it came at the same time i got the letter for my mother benefits for death and they had the same date of being typed just one was on the mail Saturday and one on Monday. . I think it's a mistake and it should been fixed instead there just getting rid of me .i never got a formal letter saying when i was being tsken off.

  5. Employers should not have racially discriminating mind set. It has huge impact on the society what the big players do or don't do in the industry. Background check is conducted just to verify whether information provided by the prospective employee is correct or not. It doesn't have any direct combination with the rejection of the employees. If there is rejection, there should be something effective and full-proof things on the table that may keep the company or the people associated with it in jeopardy.

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