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E-Commerce News
EVISA.COM dilutes Visa's Mark; Attorney Rating Web Site Protected As Opinion
February 19, 2008
EVISA.COM DILUTES VISA'S MARK
A domain name that consists of placing an "e" in front of a famous trademark constitutes evidence of actual trademark dilution, according to a federal court in Nevada. That court recently ruled that the Visa credit card mark was diluted by the unauthorized use of the domain name "evisa.com."
Visa International Service Association, the credit card company, and owner of the Visa mark, brought a Federal Trademark Dilution Act against the defendant, who operated language schools in Japan.
Originally, the trial court granted a preliminary injunction, because it determined that the evisa.com domain name was "likely to or has diluted" Visa's mark by "blurring its distinctive quality." Some time after that decision, however, the U.S. Supreme Court, in an unrelated proceeding, held that, in order to demonstrate dilution, a plaintiff must prove actual dilution, not just likelihood of dilution.
As a result of the Supreme Court ruling, the Ninth Circuit Appellate Court vacated Visa’s injunction and sent the case back to the trial court with instructions to reconsider its dilution ruling in light of the Supreme Court's ruling.
On remand, the trial judge found that Visa was entitled to a preliminary injunction under the actual dilution standard. The court felt that the "evisa" mark actually lessened the capacity of Visa to identify and distinguish its goods and services, considering the extent of consumer reliance on the "e" designation for businesses' Web sites. According to the court: "[T]he use of an 'e' before a trademark is commonly used to denote the online version of a business. Thus, internet users entering the domain name would find, in that instance, the Visa mark does not correspond to its payment card services. This dilution therefore reduces the capacity of the VISA mark to identify the goods and services of its owner."
The court did not require Visa to produce any other evidence of dilution.
Requiring a party to demonstrate actual dilution is a demanding standard. The Visa case, however, proves it’s not impossible.
ATTORNEY RATING WEB SITE PROTECTED AS OPINION
A federal court in the state of Washington has recently held that a Web site that provides information about attorneys, including a comparative rating system, is opinion, and as such, is protected from libel claims by the First Amendment. Based on that finding, the court granted a motion to dismiss the case.
The case arose, unsurprisingly, when a lawyer who was rated on the site filed a lawsuit against Avvo (the company that owned the site) challenging the accuracy and validity of the rating system.
Citing the First Amendment’s protection of opinion, Avvo moved to dismiss. Typically, the First Amendment protects true opinion, because it is incapable of being proven true or false. If the "opinion" however, masks a verifiable fact, the statement is capable of being proven false and is therefore subject to a libel claim.
According to the trial court, the key issue to ask when determining whether speech constitutes a First Amendment-protected opinion is whether the challenged statement, viewed as a whole, could "reasonably have been interpreted as stating actual facts." This analysis depends on three basic questions:
-Whether the general tenor of the work negates the impression that the defendant was asserting an objective fact;
-Whether the defendant used figurative or hyperbolic language that negates that impression; and
-Whether the statement in question is susceptible of being proved true or false.
Because the Avvo Web site contained numerous reminders that its rating system was subjective, and described the ratings as an "assessment" or "judgment," the court found that the ratings were implicitly statements of opinion.
According to the court, a reasonable person would understand that two people looking at the same underlying attorney attributes could come up with different ratings based on their subjective view of what attorney attributes were most important, and that a reasonable person would not interpret numerical ratings assigned to attorneys on the Avvo site as being statements of actual fact.
The Web site satisfied the last section of the test because the ratings were "virtually impossible to prove wrong."
Two lessons here – first "ratings" are inherently opinion; and second, watch out for a lawyer with bruised feelings.
This Newsletter is a periodic publication of Graydon Head & Ritchey LLP and should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult your own advisor concerning your situation and any specific legal question you may have.