AOL loses war over words with AT&T

America Online has lost a battle in its war against AT&T over the use of key phrases to which the online giant argued it had exclusive rights.

Chief judge Claude Hilton of the Federal District Court for the Eastern District of Virginia denied AOL's request for a temporary restraining order and preliminary injunction to prevent AT&T's WorldNet Internet access service from using the terms "You have mail," "buddy list," and "IM" (for "instant message").

The judge ruled on December 24, 1998, that AT&T made a sufficient case that the terms are generic.

"We're pleased that Judge Hilton has rejected this attempt by AOL to appropriate common Internet terms for its own exclusive use," James Cicconi, AT&T's general counsel and executive vice president for law and government affairs, said in a statement. "This ruling helps all ISPs, Web companies, and Internet users by recognizing that the common language of the Web is not owned by AOL or anyone else."

But AOL spokeswoman Tricia Primrose noted that the online giant has been using the term "You've got mail," which it has registered as a trademark, since 1989. AOL is "in the process" of trademarking the newer terms "buddy list" and "IM," in use since 1997.

"AT&T is trying to free ride" on terms long associated with AOL, Primrose said. "We look forward to arguing the merits of this case in court."

America Online, which last week announced that it had reached the 15 million-member mark, filed for the restraining order and injunction on December 22, 1998, just days after the release of the movie You've Got Mail, which played on AOL's familiar slogan and is considered a marketing coup for the company. The suit will proceed at a later date.