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Judge: Outdated caselaw needs revised to handle Internet issues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. Indianapolis employers harassment among minorities AFRICAN Americans needs to be discussed the metro Indianapolis area is horrible when it comes to harassing African American employees especially in the local healthcare facilities. Racially profiling in the workplace is an major issue. Please make it better because I'm many civil rights leaders would come here and justify that Indiana is a state the WORKS only applies to Caucasian Americans especially in Hamilton county. Indiana targets African Americans in the workplace so when governor pence is trying to convince people to vote for him this would be awesome publicity for the Presidency Elections.

  2. Wishing Mary Willis only God's best, and superhuman strength, as she attempts to right a ship that too often strays far off course. May she never suffer this personal affect, as some do who attempt to change a broken system: https://www.youtube.com/watch?v=QojajMsd2nE

  3. Indiana's seatbelt law is not punishable as a crime. It is an infraction. Apparently some of our Circuit judges have deemed settled law inapplicable if it fails to fit their litmus test of political correctness. Extrapolating to redefine terms of behavior in a violation of immigration law to the entire body of criminal law leaves a smorgasbord of opportunity for judicial mischief.

  4. I wonder if $10 diversions for failure to wear seat belts are considered moral turpitude in federal immigration law like they are under Indiana law? Anyone know?

  5. What a fine article, thank you! I can testify firsthand and by detailed legal reports (at end of this note) as to the dire consequences of rejecting this truth from the fine article above: "The inclusion and expansion of this right [to jury] in Indiana’s Constitution is a clear reflection of our state’s intention to emphasize the importance of every Hoosier’s right to make their case in front of a jury of their peers." Over $20? Every Hoosier? Well then how about when your very vocation is on the line? How about instead of a jury of peers, one faces a bevy of political appointees, mini-czars, who care less about due process of the law than the real czars did? Instead of trial by jury, trial by ideological ordeal run by Orwellian agents? Well that is built into more than a few administrative law committees of the Ind S.Ct., and it is now being weaponized, as is revealed in articles posted at this ezine, to root out post moderns heresies like refusal to stand and pledge allegiance to all things politically correct. My career was burned at the stake for not so saluting, but I think I was just one of the early logs. Due, at least in part, to the removal of the jury from bar admission and bar discipline cases, many more fires will soon be lit. Perhaps one awaits you, dear heretic? Oh, at that Ind. article 12 plank about a remedy at law for every damage done ... ah, well, the founders evidently meant only for those damages done not by the government itself, rabid statists that they were. (Yes, that was sarcasm.) My written reports available here: Denied petition for cert (this time around): http://tinyurl.com/zdmawmw Denied petition for cert (from the 2009 denial and five year banishment): http://tinyurl.com/zcypybh Related, not written by me: Amicus brief: http://tinyurl.com/hvh7qgp

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