Re: DEC vs AltaVista

Timothy Hughes <thughes[_at_]gtlaw.com.au> wrote:
>
> In late 1996 Digital filed suit against AltaVista Inc in the US
> District Court in Massachusetts arguing that . alleges that ATI's Web
> site confuses Internet users and advertisers as to the source of the
> AltaVista Internet search service.
>
> Does anyone on this list have more information about this action?

I had occasion to write up a small squib on this case, appended here:

     Digital Equipment Corporation has successfully obtained an injunction against AltaVista Technology, Inc.'s use of the "AltaVista" trademark on the ATI web site. Digital operates the well-known and very successful AltaVista search service (http://altavista.digital.com). In March, 1996, Digital purchased an assignment of ATI's rights to the AltaVista trademark, and immediately licensed back to ATI the right to use the AltaVista name as part of ATI's corporate name and as part of ATI's Website address (http://www.altavista.com). The license agreement, however, precluded ATI from using "AltaVista" as "the name of a product or service offering." Shortly thereafter, however, ATI began using the AltaVista name on its own Web site, including at that site, for example, a link that would allow users to "receive demo versions of the AltaVista software." Digital then sued in federal district court (D. Mass), alleging a violation of the license agreement and trademark infringement.

     ATI moved to dismiss the lawsuit on the ground that the Massachusetts court lacked personal jurisdiction over ATI, a California corporation. The district court denied the motion. The court noted the difficulties of applying traditional jurisdictional concepts to Internet activity:

     "The Internet has no territorial boundaries. . . . Physical boundaries typically have framed legal boundaries, in effect creating signposts that warn that we will be required after crossing to abide by different rules. To impose traditional territorial concepts on the commercial uses of the Internet has dramatic implications, opening the Web user up to inconsistent regulations throughout fifty states, indeed, throughout the globe."

This case, however, the court noted, does not raise the difficult issue of whether "any Web activity, by anyone, absent commercial use, absent advertising and solicitation of both advertising and sales, absent a contract and sales and other contacts with the forum state, and absent the potentially foreseeable harm of trademark infringement, would be sufficient to permit the assertion of jurisdiction over a foreign defendant." Here, because of ATI's prior licensing agreement with Digital and its sales of software to Massachusetts residents, the court found that jurisdiction was permissibly exercised. [The court then went on to hold that ATI had breached its license agreement with Digital and had, therefore, infringed the trademark rights that Digital had purchased from ATI.]

David Post
<postd[_at_]erols.com> Received on Thu May 29 1997 - 15:01:42 GMT