ILNews

Judge: Outdated caselaw needs revised to handle Internet issues

Back to TopCommentsE-mailPrintBookmark and Share

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.

 

ADVERTISEMENT

Post a comment to this story

COMMENTS POLICY
We reserve the right to remove any post that we feel is obscene, profane, vulgar, racist, sexually explicit, abusive, or hateful.
 
You are legally responsible for what you post and your anonymity is not guaranteed.
 
Posts that insult, defame, threaten, harass or abuse other readers or people mentioned in Indiana Lawyer editorial content are also subject to removal. Please respect the privacy of individuals and refrain from posting personal information.
 
No solicitations, spamming or advertisements are allowed. Readers may post links to other informational websites that are relevant to the topic at hand, but please do not link to objectionable material.
 
We may remove messages that are unrelated to the topic, encourage illegal activity, use all capital letters or are unreadable.
 

Messages that are flagged by readers as objectionable will be reviewed and may or may not be removed. Please do not flag a post simply because you disagree with it.

Sponsored by
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. My husband financed a car through Wells Fargo In dec 2007 and in Jan 2012 they took him to court to garnish his wages through a company called autovest llc . Do u think the statue of limitations apply from the day last payment was received or from what should have been the completion of the loan

  2. Andrew, you are a whistleblower against an ideologically corrupt system that is also an old boys network ... Including old gals .... You are a huge threat to them. Thieves, liars, miscreants they understand, identify with, coddle. But whistleblowers must go to the stake. Burn well my friend, burn brightly, tyger.

  3. VSB dismissed the reciprocal discipline based on what Indiana did to me. Here we have an attorney actually breaking ethical rules, dishonest behavior, and only getting a reprimand. I advocated that this supreme court stop discriminating against me and others based on disability, and I am SUSPENDED 180 days. Time to take out the checkbook and stop the arrogant cheating to hurt me and retaliate against my good faith efforts to stop the discrimination of this Court. www.andrewstraw.org www.andrewstraw.net

  4. http://www.andrewstraw.org http://www.andrewstraw.net If another state believes by "Clear and convincing evidence" standard that Indiana's discipline was not valid and dismissed it, it is time for Curtis Hill to advise his clients to get out the checkbook. Discrimination time is over.

  5. Congrats Andrew, your street cred just shot up. As for me ... I am now an administrative law judge in Kansas, commissioned by the Governor to enforce due process rights against overreaching government agents. That after being banished for life from the Indiana bar for attempting to do the same as a mere whistleblowing bar applicant. The myth of one lowly peasant with the constitution does not play well in the Hoosier state. As for what our experiences have in common, I have good reason to believe that the same ADA Coordinator who took you out was working my file since 2007, when the former chief justice hired the same, likely to "take out the politically incorrect trash" like me. My own dealings with that powerful bureaucrat and some rather astounding actions .. actions that would make most state courts blush ... actions blessed in full by the Ind.S.Ct ... here: https://www.scribd.com/doc/299040839/2016Petitionforcert-to-SCOTUS

ADVERTISEMENT