AMERICA ONLINE, INC.,
IMS et al.,
AOL sued six defendants under five causes of action: false designation of origin under the Lanham Act (Count I); dilution of interest in trademarks and service marks under the Lanharn Act (Count II); violation of the Computer Fraud and Abuse Act (Count III); violation of the Virginia computer Crimes Act (Count IV); and trespass to chattels under Virginia Common Law (Count V). Of the six defendants, only Melle filed an answer to the complaint, and the Court found the remaining defendants to be in default. After entry of those defaults, Melle stipulated to a permanent injunction against him. AOL filed its summary judgment motion on September 2. 1998, and agreed to dismiss the remaining counts of the complaint against Melle, if summary judgment were granted in its favor. Melle filed his opposition on September 10, 1998.
Courts have begun to recognize that the unauthorized mailing of unsolicited bulk e-mail may constitute a trespass to chattels under state law. See Compuserve, Inc. v. Cyber Promotions. Inc., 962 F. Supp. 1015 (S.D. Ohio 1997) (finding that bulk e-mailing by the defendants caused "the value of [Compuserves equipment to be] diminished even though it is not physically damaged by defendants conduct," id. at 1022). The facts of Compuserve are nearly identical to the facts of the case at bar. In both cases, the defendants sent unsolicited e-mail advertising to hundreds of thousands of Internet users, many of whom were subscribers of the respective plaintiffs Internet services. Both defendants concealed the origin of their messages by forging header information. Both plaintiffs alleged that processing the bulk e-mail cost them time and money and burdened their equipment. both plaintiffs contended that they received complaints from subscribers, and both contended that the bulk e-mailers continued to send messages even after they were notified that bulk e-mailing was unauthorized. Indeed, because the Compuserve case is so strikingly similar to the current litigation and the trespass law of Virginia is so close to that of Ohio, we will rely on the reasoning of Compuserve. [FN2]
In the instant case, Melles conduct fully satisfies all the elements of AOLs claim of trespass to chattels. It is undisputed that Melle intentionally caused contact with AOLs computer network by sending bulk e-mail messages; Melles contact with AOLs computer network was unauthorized; and Melles contact with AOLs computer network injured AOLs business goodwill and diminished the value of its possessory interest in its computer network. Melle has provided no evidence whatsoever to counter the facts as alleged by AOL. In fact, he admits to contacting intentionally AOLs computer network by sending over 6o million pieces of unsolicited bulk e-mail over a ten-month period. Melle Depo. at 51-52, 6l, Melle admits that he received a cease-and-desist letter from AOL dated October 15, 1997, and that as a result of the letter, he knew his contact with AOLs computer network was unauthorized, yet he continued spamming. Melle Depo. at 107. Finally, Melle offers no evidence to rebut AOLs allegation that its reservoir of goodwill and its possessory interest in its computer network have been diminished by the bulk e-mailing. Levitt Decl. ¦¦ 14-17; Korn Decl. ¦¦ 21-25; Price Decl. ¦ 7. There is, therefore, no factual dispute as to whether Melle committed a trespass to chattels against AOLs computer network. As such, AOL is entitled to summary judgment on Count V.
"any false designation of origin . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." 15 U.S.C. ¤ 1125(a) (1) (a) (1994)The elements of a false-designation violation under the Lanham Act are three-fold: (1) the alleged violator must employ a false designation; (2) the false designation must deceive as to origin, ownership or sponsorship; and (3) the plaintiff must believe that "he or she is or is likely to be damaged by such [an) act." Id. ¤ 1125 (a) (1)
As for the first element, it is undisputed that many of Melles messages contained the letters "aol.com" in their headers, thereby creating a false designation. The initials "AOL" have been a registered trademark and service mark of America Online since 1996; AOL has used "AOL" as a trademark and service mark to identify its products in various forms since 1989. Any e-mail recipient could logically conclude that a message containing the initials "aol.com" in the header would originate from AOLs registered Internet domain, which incorporates the registered trade and service mark "AOL." Many of the 6O million messages transmitted by Melle contained the registered trade and service mark "AOL" -- in the form of "aol.com" -- in the header of the email message. Levitt Decl. ¦¦ 25-26.
Second, AOL members were deceived into thinking that AOL sponsored or approved of Melles bulk e-mailing activities, Korn Decl. ¦ 18. Third, Melles false designation caused damage to AOL. Korn Decl. ¦¦ 16, 22-25; Levitt Decl. ¦ 26.
In his motion opposing summary judgment, Melle failed to dispute any material fact that supports AOLs factual allegations. Instead, he merely claimed that he did not know why his e-mail program, Stealth Mass Mailer, put "aol.com" in the header of his e-mail messages. Melles Argument Against America Onlines Summary Judgement at 4-5. However, Melle offered no evidence to support his claimed lack of knowledge. Further, Melle admitted that after he was alerted that the letters "aol.com" were in his headers, he continued to send e-mail with aol.com" in the message header. Melle Depo. 118-119. Therefore, even if we accepted Melles argument that he did not initially knowingly use "aol.com", there is no doubt that at some point his use became intentional. Moreover, under the Lanham Act, false designation of origin does not have a scienter requirement. See Ames Publg Co. v. Walker-Davis Publications, 372 F. Supp. 1 (S.D. Pa. 1974); Parkway Baking Co. v. Freihofer Baking Co., 255 F.2d 641, 648 (3d Cir. 1958) ("[T]here is no reguirement that the falsification occur willfully and with intent to deceive.") Thus, Melles alleged lack of intent does not cure his violation of federal law, and therefore, AOL is entitled to summary judgment on Count I.
Both elements of a dilution claim are satisfied in the case at bar. First, AOL clearly owns the distinctive "AOL" mark. See AOLs Mem. Exhibit G. The mark is registered with the United States Patent and Trademark Office, and; the mark is used and recognized throughout the world in association with AOLs online products and services. Price Decl. ¦ 3.
Second, the "AOL" mark was diluted by tarnishment. "The sine qua non of tarnishment is a finding that plaintiffs mark will suffer negative associations through defendants use." Hormel Foods Corp., 73 F.3d at 507. The "AOL" mark constitutes a valuable business asset for America Online. Price Decl. ¦ 3. AOL contends that Melles conduct has tarnished its mark, and that there is a strong likelihood of dilution by negative associations that AOL subscribers make between AOL and Melles junk e-mailing practices. AOLs Mem., at 25. AOL receives more than 100,000 complaints a day regarding junk e-mail generally and can point to more than 50,000 complaints aimed at Melles spamming. Melles puts forward no facts to dispute these allegations. Therefore, AOL is entitled to summary judgment on Count II.
The Clerk is directed to forward copies of this Memorandum Opinion to Counsel of Record and defendants, pro se.
Entered this 29th day of October, 1998.
Leonie M. Brinkema
United States District Judge
FN1. On October 1, 1998, this Court entered an Order granting the plaintiffs motion for summary judgment as to liability under Counts I, II, and V of the complaint, stating that a memorandum opinion explaining the reasons would follow.
FN2. We have previously relied on the Compuserve reasoning to grant a preliminary injunction in another spamming lawsuit, America Online. Inc. v. Over the Air Equipment, Inc., and Joe Tajalle. Civ. No. 97-1547-A (E.D. Va. Filed Sept. 29, 1997).