San Diego Estate Planning Lawyer Blog

In National City, there are many companies which access the internet on a daily basis using Google, Yahoo, MSN and many others as their home page. The below company was not located in National City. Our law firm of Pinkerton, Doppelt & Associates, LLP practices in estate planning and family law. Please feel free to e mail our office for a complimentary and confidential consultation.

An Internet marketing company provided a free software application that keeps track of computer users' activity on the web in order to deliver targeted advertising for its clients. The software uses an unpublished internal directory with thousands of website addresses and keywords for particular interests of consumers. When the computer user types in particular terms in a browser or search engine, a relevant "pop-up" ad is delivered to the computer.

A company in the contact lens business learned that its website was in the internal directory and that the software caused pop-up ads for competing contact lens retailers to appear on the screens of individuals who visited the company's website. The contact lens company sued the marketing firm on the theory that the marketing firm had infringed upon a trademark in violation of federal law. From the plaintiff's standpoint, the actions of the marketing firm were allowing competitors to take a free ride on the plaintiff's website.

A federal court ruled against the plaintiff contact lens company. A successful trademark infringement lawsuit requires a showing of a protected trademark and a use of that trademark in commerce in connection with the sale or advertising of goods or services, without the plaintiff's consent. The use of the mark by the defendant also must be such as to likely cause confusion between the plaintiff and the defendant. The action brought by the plaintiff failed primarily due to the court's ruling that the defendant had never "used" the plaintiff's trademark in a manner like that in a typical infringement case. First, the defendant reproduced the plaintiff's website address, which was similar, but not identical, to its trademark. In addition, the pop-up ads, which appeared in a separate window prominently branded with the marketing company's mark, had no discernible effect on the functioning of the plaintiff's website.

It was not enough for a successful claim that the defendant and its clients were trying to take advantage of the plaintiff's goodwill and reputation, which had led people to the plaintiff's website in the first place. What the defendant was doing was no more legally objectionable than the low-tech counterpart of chain drug stores placing their own store-brand products on shelves next to the higher-priced and trademarked versions of the same products, so as to capitalize on their competitors' name recognition.

In Rancho Bernardo, in our law office of Pinkerton, Doppelt & Associates, LLP we receive many faxes which are soliciting services or products. We believe many other companies in Rancho Bernardo and throughout San Diego city and county also receive these. Below is some information for business owners like ourselves regarding this unwanted use of our paper in our fax machine and our toner. Our law firm practices in estate planning and family law. Please feel free to call or our e mail us with any questions or legal inquiries.

There may be some finality to the formerly unsettled picture on federal regulation of junk fax transmissions. Since the first federal legislation on the subject, in 1991, there has been an "established business relationship" exception allowing the sending of commercial advertising by fax under certain conditions. In 2003, the Federal Communications Commission issued a regulation that would have effectively removed the exception, requiring express written permission from the recipient for sending any commercial ads by fax. Opposition from business groups prompted the FCC to put off enforcement of that rule three times.

Before the restrictive FCC regulation ever became effective, new legislation has reinstated the established business relationship exemption. It is still illegal to send unsolicited fax advertisements to anyone who has requested that they not be sent. However, unsolicited faxes can be sent if the sender has an established business relationship with the recipient and the fax itself has a conspicuous notice on its first page informing the recipient that it can request not to be sent more such faxes. To combat the sale of fax lists to mass marketers, the law requires businesses to obtain fax numbers either directly from the recipient or from a published source, such as a directory, an advertisement, or a website.