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Court reverses hotel’s cybersquatting conviction

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A dispute over who could use the designation “Visit Michigan City LaPorte” led to a legal battle between LaPorte County’s visitors bureau and an area hotel-resort, with the trial court ruling in favor of the visitors bureau. But the Indiana Court of Appeals reversed Monday, ruling the bureau didn’t prove it held a valid and protectable trademark.

An employee from Serenity Springs attended a public meeting at which the LaPorte County Convention and Visitors Bureau announced that the phrase “Visit Michigan City LaPorte” had been chosen as the branding identifier for the area. Immediately after the meeting, Serenity registered the domain name “visitmichigancitylaporte.com” and redirected traffic from that site to its hotel website. That same day, the bureau attempted to register the same domain name, but discovered it had been purchased and was used by Serenity.

The visitors bureau sought to prevent Serenity from using the domain and slogan, and filed an application with the Indiana Secretary of State to register the slogan and logo as a trademark. It claimed it first used the words in commerce Sept. 9, 2009, the same day Serenity registered the website. When Serenity wouldn’t voluntarily relinquish the domain name, the visitors bureau sued, alleging trademark infringement, cybersquatting and unfair competition.

The trial court ruled in favor of the visitors bureau, permanently enjoined Serenity from using the designation or domain name, and ordered Serenity to transfer the domain to the bureau.

In Serenity Springs, et al. v. The LaPorte County Convention and Visitors Bureau, 46A03-1205-MI-214, the Court of Appeals reversed because it found the “Visit Michigan City LaPorte” slogan is primarily geographically descriptive and not subject to protection as a trademark. In order to be protectable, the slogan must have acquired secondary meaning, but it did not. The judges rejected the visitors bureau’s claim that its registration with the SOS is sufficient proof of distinctiveness or secondary meaning.

“Secondary meaning is acquired through actual use of a mark, and there is simply no evidence in the record supporting a conclusion that the mark became associated with the Bureau in the minds of consumers on September 9, 2009 in the hours prior to Serenity’s registration of the domain name,” Judge Ezra Friedlander wrote.

The COA reversed and remanded with instructions to vacate the judgment and enter judgment in favor of Serenity on the trademark infringement and cybersquatting claims. But the trial court did not rule on other claims the bureau asserted, including common-law unfair competition. The judges ordered the trial court consider the bureau’s other claims and limit its consideration to the claims and evidence already presented by the bureau.  

 

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  1. in a lawyer discipline case Judge Brown, now removed, was presiding over a hearing about a lawyer accused of the supposedly heinous ethical violation of saying the words "Illegal immigrant." (IN re Barker) http://www.in.gov/judiciary/files/order-discipline-2013-55S00-1008-DI-429.pdf .... I wonder if when we compare the egregious violations of due process by Judge Brown, to her chiding of another lawyer for politically incorrectness, if there are any conclusions to be drawn about what kind of person, what kind of judge, what kind of apparatchik, is busy implementing the agenda of political correctness and making off-limits legit advocacy about an adverse party in a suit whose illegal alien status is relevant? I am just asking the question, the reader can make own conclsuion. Oh wait-- did I use the wrong adjective-- let me rephrase that, um undocumented alien?

  2. of course the bigger questions of whether or not the people want to pay for ANY bussing is off limits, due to the Supreme Court protecting the people from DEMOCRACY. Several decades hence from desegregation and bussing plans and we STILL need to be taking all this taxpayer money to combat mostly-imagined "discrimination" in the most obviously failed social program of the postwar period.

  3. You can put your photos anywhere you like... When someone steals it they know it doesn't belong to them. And, a man getting a divorce is automatically not a nice guy...? That's ridiculous. Since when is need of money a conflict of interest? That would mean that no one should have a job unless they are already financially solvent without a job... A photographer is also under no obligation to use a watermark (again, people know when a photo doesn't belong to them) or provide contact information. Hey, he didn't make it easy for me to pay him so I'll just take it! Well heck, might as well walk out of the grocery store with a cart full of food because the lines are too long and you don't find that convenient. "Only in Indiana." Oh, now you're passing judgement on an entire state... What state do you live in? I need to characterize everyone in your state as ignorant and opinionated. And the final bit of ignorance; assuming a photo anyone would want is lucky and then how much does your camera have to cost to make it a good photo, in your obviously relevant opinion?

  4. Seventh Circuit Court Judge Diane Wood has stated in “The Rule of Law in Times of Stress” (2003), “that neither laws nor the procedures used to create or implement them should be secret; and . . . the laws must not be arbitrary.” According to the American Bar Association, Wood’s quote drives home this point: The rule of law also requires that people can expect predictable results from the legal system; this is what Judge Wood implies when she says that “the laws must not be arbitrary.” Predictable results mean that people who act in the same way can expect the law to treat them in the same way. If similar actions do not produce similar legal outcomes, people cannot use the law to guide their actions, and a “rule of law” does not exist.

  5. Linda, I sure hope you are not seeking a law license, for such eighteenth century sentiments could result in your denial in some jurisdictions minting attorneys for our tolerant and inclusive profession.

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