August 8, 2000 4:10 PM PDT
iBeauty and Estee Lauder make up
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Many Web sites embed keywords and phrases into their Web pages to trigger banner ads during Web searches. In iBeauty's case, a person searching on Excite@Home's search engine for "Clinique" would have been presented with a banner ad for iBeauty. In addition, the search would have returned a list of related Web sites, including iBeauty.com.
In January 1999, Estee Lauder sued iBeauty and Excite@Home, saying its trademarks were violated when iBeauty's ads were presented during searches for Estee Lauder trademarks. The companies announced today that iBeauty voluntarily agreed to strike the words from its list.
Trademark experts said Estee Lauder had a strong case given the uniqueness of the names "Estee Lauder" and "Clinique," which do not exist independently in the English language.
When Playboy sued Excite and Netscape Communications in 1999 in a similar case, a federal judge ruled against the company because the terms "playboy" and "playmate" are part of common English usage. That case is still scheduled to go to trial.
Intellectual property attorney Ken Dort, who is not involved in either case, said the more unique the trademark, the better chance a company has to protect it.
"What everybody's taken from the Playboy case is that you can use a generic word but not a word that is clearly a trademark," said Dort. "In terms of trademarks, you have various grades. Words like 'white bread' you can't trademark, whereas 'Kodak' is the perfect example."
Dort said the Internet has not changed the fundamental principles of trademark infringement, but it has made infringement easier and more efficient.
"The one thing the Internet has done, it's amplified everything. We're talking about exponential-type expansion. If somebody's going to infringe a trademark, they can do it relatively quickly and efficiently, and a lot of harm can be done."
Online trademark and copyright infringement has drawn much attention, most notably in the Recording Industry Association of America's lawsuit against music-swapping company Napster. The RIAA alleges that Napster illegally promotes and facilitates the exchange of copyrighted music. This case is expected to be heard by a federal appeals court in September.
