Investment advisor's infringement claim crashes

In Knight-McConnell v Cummins (2004 WL 1713824 (SDNY July 29 2004)), the US District Court for the Southern District of New York has dismissed claims that the defendant had infringed the plaintiff's trademark rights or engaged in unfair competition under the Lanham Act or common law by (i) linking her website to the plaintiff's site, and (ii) using the plaintiff's name in the post-domain path of a URL [uniform resource locator].

Kathy Knight-McConnell, a New York publisher of a website and a newsletter about stock trading, sued Mary Cummins, an individual based in California. Cummins had posted numerous messages on various website discussion groups and her own site, which alleged that Knight-McConnell was a securities fraud "criminal", "insane", "paid to lie to investors", a cheat, a thief and "obese". Cummins had also linked her website to Knight-McConnell's site.

In her complaint, Knight-McConnell claimed that Cummins had repeatedly reported her to the Securities and Exchange Commission and had written to various "clients" and/or associates of Knight-McConnell accusing her of fraud. The claims were based on securities law violations, various state law claims, such as defamation, invasion of privacy and tortious interference with contract, and trademark and copyright infringement.

The US District Court for the Southern District of New York granted Cummins's motion to dismiss all claims in the complaint, including the trademark infringement claim, which was based on allegations that Cummins had:

  • linked her website to Knight-McConnell's site without authorization;

  • used Knight-McConnell's name in the post-domain path of the URLs for some of her web pages; and

  • posted links on internet chat forums directing users to visit these web pages.

The court held that Cummins's statements concerning Knight-McConnell could not, as a matter of law, constitute a violation of the Lanham Act because there was no likelihood that the public would believe Cummins's insults were connected with Knight-McConnell or her publications. It noted that "[t]he mere appearance on a website of a hyperlink to another site will not lead a web user to conclude that the owner of the site he is visiting is associated with the owner of the linked site". Thus, the link between Knight-McConnell's site and Cummins's postings could not cause confusion among the public. In addition, in this case, Cummins's website advertised real estate and web design services, whereas Knight-McConnell's site focused on investment services that were unrelated to Cummins's services. Therefore, confusion between the two sites was unlikely. Cummins's criticisms of and accusations aimed at Knight-McConnell would prevent a web user from thinking that there was a connection between them or their respective services.

Similarly, Cummins's use of Knight-McConnell's name in the post-domain path of a URL and in post-domain paths of chat forums would not lead to source confusion, as the post-domain path showed no association between the two parties but merely showed how the website's data was organized.

A claim that Cummins had violated Knight-McConnell's copyright failed because Knight-McConnell had no copyright registration.

Although the court dismissed all claims against Cummins, she was ordered to pay $381.98 to Knight-McConnell as reimbursement for her costs for personal service as Cummins had failed to return the acknowledgement of service by mail.

Susan Progoff, Fish & Neave, New York

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