Citation Edit

Voice-Tel Enters., Inc. v. JOBA, Inc., 258 F.Supp.2d 1353 (N.D. Ga. 2003) (full-text).

Factual Background Edit

Plaintiff, which marketed voice-messaging products and services under the registered VOICE-TEL trademark, sued defendant, one of its franchisees in Florida, for breach of contract and trademark dilution by tarnishment stemming from a hyperlink on defendant’s "" website to a pornographic site. The link in question originally linked to a legitimate site offering website promotion services but that company went out of business and a different entity gained control of the linked site and used it to distribute pornography.

Trial Court Proceedings Edit

The parties filed cross-motions for summary judgment. First, the court granted defendant's motion for summary judgment on plaintiff's breach-of-contract claim. The franchise agreement at issue prohibited defendant from intentionally misusing plaintiff's trademarks or materially impairing the good will associated with them. In granting defendant's motion, the court noted that (a) plaintiff did not provide any evidence showing that defendant was involved in or knew that its website was linked to a pornographic site, (b) defendant promptly removed the link upon notice from plaintiff, and (c) plaintiff did not provide any evidence of actual impairment, let alone material impairment, of its mark.

Second, the court granted defendant’s motion for summary judgment on plaintiff's claim that defendant tarnished plaintiff's trademark by associating it with pornography. Citing Bally Total Fitness v. Faber, defendant argued that, as a matter of law, tarnishment does not occur simply because a website is linked to another site, regardless of how offensive the content of the linked site might be. The court agreed, stating that "to extend a claim for dilution to a hyperlink situation would extend the statute far beyond its intended purpose."

Finally, the court granted defendant’s motion for summary judgment on plaintiff’s request for injunctive relief to prevent defendant from using the VOICE-TEL trademark in any manner. Plaintiff's claim for relief was overly broad because defendant had promptly removed the pornographic link from its website. Moreover, plaintiff's argument that injunctive relief was necessary because Internet archive sites still permitted users to link to the pornographic site from archived versions of defendant's site had no merit because the archived sites were maintained by third parties and presumably not subject to the court's injunctive powers.

Source Edit

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