September 10, 1996 1:45 PM PDT

Jazz club sings trademark blues

A federal judge has tossed out a trademark lawsuit brought by New York's trendy Blue Note jazz club against a Missouri club whose Web site has the same name, the latest trademark turf fight on the Net.

While the New York case is gaining some attention today, it is only one of several that are sprouting up as the Net explodes in popularity. In Web marketing, "what's in a name" often determines a company's success or failure.

For example, Hearst Corporation, owner of Esquire magazine, quietly filed a lawsuit in May against Chicago attorney Ari Goldberger, alleging that his trademarks ESQ.wire and esqwire.com infringe on Hearst's Esquire and ESQ. marks. That case is still pending.

Last week, a Texas baker of YA-HOO! cakes asked a federal Judge to order Yahoo to change the style of its logo and stop using its name on the Internet.

The judge's ruling in the Blue Note case could dampen the flurry of suits, at least for now, but the issue is far from being resolved.

"Assuming that the ruling stands, people who operate Web sites won't have to worry about getting hauled into court in another city," Jim Jordan, an Internet attorney in Atlanta, said today. "It also means that the companies that sue will have to go to the city or state where the site is operated."

The Blue Note's owner, Steve Bensusan, filed the suit on the grounds that the Blue Note Cyberspot, even though it is thousands of miles away, confuses New York patrons.

"Once you advertise on the Internet or put up a Web site, you are advertising to the world," he said. "I feel that the court and the judge didn't have an understanding of what the Internet is."

Bensusan went on to say: "We have clubs all over the world. For someone in another city to use our name and advertise it on the Internet is like taking our name and reputation away from us."

But some trademark lawyers disagree.

"We're getting to the point where there is conflict simply because Mom and Pops at the local level now can go national," said Marshall Dyer, an attorney who deals with Internet issues. "Small shops have never been able to advertise with Time magazine, but now they can put up a site and reach the same amount of people on the Internet. Suddenly the big guys with the mom and pop name says, 'Wait a minute you're stepping on our toes.'"

Dyer says there is nothing unique about trademark issues on the Internet, noting that it is governed by the same trademark case law that has been around for decades. "All the flurry is happening because we haven't seen this before," Dyer said. "But I don't see anything unique."

That may be true, except that trademark-related cases on the Net are more than likely to pile up.

The only other solution is for Congress to step in and take action. "But I don't think anyone wants that," said Dyer.

 

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