Subject: link to www.xenu.net freely; use their trademarks too, with disclaimer
Date: Sat, 03 Apr 1999 00:58:06 GMT

This decision has significance to linking to sites that contain portions of the alleged intellectual property of the criminal cult of scientology.

Link to www.xenu.net and say "fuck you" to the 'ho.

Intellectual Property Litigation Reporter October 14, 1998

Copyright Infringement:Bernstein v. J.C. Penney

Judge Dismisses Copyright Claims Based on Linking

Without comment, a California federal judge has dismissed, with prejudice, copyright infringement allegations against defendants who maintained links that eventually led to a Swedish web site where allegedly infringing photographs were displayed. Bernstein v. J.C. Penney, Inc. et al., No. 98-2958-R (CD CA, dismissal Sept. 22, 1998).

This is believed to be the first decision on copyright liability for linking to other sites that display infringing materials.

Background

Gary Bernstein is a professional photographer who has taken pictures of actress Elizabeth Taylor. The defendants include Elizabeth Arden Inc., which manufactures perfume under the trademark PASSION and has retained Taylor as a spokesperson for the product; J.C. Penney, Inc., which sells PASSION; and Internet Movie Database Ltd. (IMDB), which maintains an Internet site devoted to information about movies and movie stars.

Bernstein alleges that a Swedish university web site has published two photos of Taylor that infringe his copyrights. He says people who visited J.C. Penney's web site could, through a series of links through the Penney and IMDB sites, eventually reach the Swedish site, referred to as "SUNET." He seeks to hold Arden liable because its product PASSION is advertised on the J.C. Penney web site. Arden moved for dismissal.

"Bizarre and Unprecedented"

In its supporting brief, Arden says Bernstein's suit is based on a "bizarre and unprecedented theory" that, if accepted, would destroy the Internet as a means of worldwide communication.

Arden cannot be held liable for the content of a third party's web site, such as Penney's, just because its product is advertised on the site. But even if such liability could somehow be imposed, Arden says, J.C. Penney could still not be accountable for infringement that occurs on a site that is several links removed.

Arden recites the chain of links that a user would need to follow from Penney's site to reach the allegedly infringing photographs: from Penney's main home page to (1) "Elizabeth Taylor's Passion," a part of the Penney's site, to (2) "Biography," a part of the "Passion" site containing information about Taylo r's life, to (3) "work on screen," which took the user to (4) the IMDB movie database site, a completely separate site with no connection to Penney's, to (5) "FTP," a link on the IMDB site that took the user to the SUNET site, from where he or she could (6) access the infringing photographs.

According to Arden, Bernstein's theory would require web site owners to not only screen the sites they link to, but also all of the sites that those "second tier" sites link to, and so on. Rather than take on this impossible task, or face the risk of litigation, Arden argues, web site owners will simply stop linking, which would destroy the web's usefulness. Even search engines like Alta Vista and Lycos would not be able to function, the company avers.

In any case, Arden says, J.C. Penney disconnected the link to the IMDB site as soon as it was notified of the alleged infringement taking place on SUNET.

Bernstein's Response

Bernstein insists that J.C. Penney deliberately designed the web site so that visitors would be able to see the two disputed images of Elizabeth Taylor, and so that J.C. Penney and Arden would benefit from their use without paying a royalty. The defen dants had previously licensed one of the images, Bernstein contends, raising an inference that they were trying to cash in on the images without paying for them.

The cases cited by Arden involved Internet service providers and web site hosts who could not be expected to know about or control all the content on their systems, Bernstein maintained. On the other hand, says the plaintiff, the defendants in this case did have the ability to control what users could access through the J.C. Penney website.

The defendants also argue that linking is protected by the First Amendment, and that linking has "substantial non-infringing uses," but these contentions are irrelevant, Bernstein maintains. The complaint involves allegations of copyright and trademark infringement, which are not protected activity, he argues. And the "substantial non-infringing use" defense is fact-intensive and best resolved on either summary judgment motions or at trial, says Bernstein.

Arden is represented by Roger R. Myers, Karren M. Shorofsky and Noel C. Johnson of Steinhart & Falconer in San Francisco. Bernstein is represented by Patrick J. Grannan of Kramer, Kaslow & Grannan in Long Beach, CA, and David E. Wheeler of the Law Offices of David E. Wheeler in Los Angeles.

(Call 800-345-1101 for Arden's 29-page memorandum in support of the motion to dismiss, Bernstein's 20-page opposition brief, and Arden's 22-page reply brief.)

###

Trademarks, metatags and websites:

"It is an established principle in trademark law that a reference to a competitor's trademark in connection with legitimate comparative advertising is a fair use of the trademark. See G.D. Searle & Co. v. Hudson Pharmaceutical Corp., 715 F.2d 837, 841 (3d Cir. 1983). No case so far has treated a situation in which a site designer places a competitor's trademark in a metatag because the site contains legitimate comparative advertising. In such a case, the site designer could make the argument that the use of the trademark in the metatag is not dilutory because the site itself describes the differences between the goods of the site owner and the goods of the competitor."

"It is a fundamental principle... that, although trademark rights may be acquired in a word or image with descriptive qualities, the acquisition of such rights will not prevent others from using the word or image in good faith in its descriptive sense, and not as a trademark." Car-Freshner, 70 F.3d at 269. This principle forms the basis for the fair use defense codified in Section 33(b)(4) of the Lanham Act. This statutory provision states that it shall be a defense to proof of infringement that:

the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.

15 U.S.C. @ 1115(b)(4)(1994). n2 The Second Circuit has made clear that it is not necessary that the plaintiffs mark be classified as "descriptive" within the four-fold hierarchy of trademark types (generic, descriptive, suggestive, and arbitrary or Iancitul). See Car-Freshner, 70 F.3d at 269-70. Instead, what matters is whether the defendant has used the mark (1) in good faith, and (2) in its descriptive sense. See Cosmetically Sealed, 125 F.3d at 30-31; Car-Freshner, 70 F.3d at 269-70. n3"

"Richards v. Cable News Network, Inc., No. 98-3165 (E.D. Pa. July 28, 1998)

THE HOLDER OF the federal trademark "World Beat," which was registered in connection with the sale of prerecorded music, was not entitled to enjoin the defendant's use of the mark either as the name of a TV program presenting news concerning a variety of music styles from around the globe, or in a companion web site.

The court held that the plaintiff, a successful reggae musician who operated a record label that sold only reggae music, was not likely to prevail on his infringement claim, because there was no evidence that consumers were likely to be confused by the defendant's use of the mark as to the origin of goods or services, and because the defendant's use of the mark in connection with the operation of a music news program not related solely to reggae music was not within the use--the sale of prerecorded reggae music--for which the plaintiff had registered and used the mark.

Alternatively, the court held that the plaintiff's claim, insofar as it sought to stop the defendant from using the mark to describe a style or type of music, must fail, because the mark had become a generic description of a style of music."

"Intellectual Property November 16, 1998

'Gunsareus' In Domain Name Not Likely To Cause Confusion With Toys 'R' Us, N.Y. Court Says

Use of the domain name gunsareus.com to identify a Web site associated with a firearms retail store is not likely to cause confusion with the registered trademark Toys 'R' Us used by a national chain of toy stores, a federal judge ruled Oct. 28 (Toys 'R' Us Inc., et al. v. Richard Feinberg, et al., No. 98-2780, S.D. N.Y.)."

"When designing a Web site, use caution if you plan to use, in any way on form, the trademarks of others. If your site includes the trademarks of others, consider using a legal disclaimer on the site stating that no implied endorsement of your products is intended. If your own marks are included on the Web site, mark at least the first reference of each mark with the (R), TM or symbol. This will alert all Web participants that you are claiming exclusive rights to the mark. In addition, warranty and indemnity clauses should be included in each Web Site Development Agreement for proposed Web sites, providing warranties and indemnification against any infringement claim arising from unauthorized insertion of trademarks in the computer readable code."

Click here for some additional truth about the Scientology crime syndicate: XENU.NET

Further facts about this criminal empire may be found at Operation Clambake and FACTNet.