Porn site link does not constitute dilution

In Voice-Tel Enterprises Inc v JOBA Inc (1:01-CV-3359-TWT), the US District Court for the Northern District of Georgia has dismissed a trademark dilution claim which the plaintiff brought on the grounds that the defendant licensee's website included a hyperlink to a pornography site. The court noted that a plaintiff cannot base a tarnishment claim on the use of a mark on a site that links to another.

Voice-Tel Enterprises began the lawsuit as a declaratory judgment to terminate its franchise agreement with JOBA but, as the district court expressly recognized, all parties "proceeded with a dizzying escalation of claims and counterclaims", which included Voice-Tel adding a claim for trademark dilution. The essence of both the franchise termination and the dilution claim consisted of the charge that the VOICE-TEL mark had been "materially impaired" and tarnished because of its association with pornography through a hyperlink on JOBA's website. When Voice-Tel notified JOBA of the pornographic nature of the link, JOBA removed it. Yet, Voice-Tel continued to claim that the link sufficed to terminate the franchise agreement and constituted actionable trademark dilution.

The court rejected Voice-Tel's motion for summary judgment, dismissing as a matter of law both its franchise termination and trademark dilution claims. Significantly, the district court found no evidence that JOBA "knew that [its] website was linked to the pornography site", or that there had been any "actual impairment" of the VOICE-TEL mark by virtue of the link. The court focused on the fact that Voice-Tel did not "proffer any consumer surveys or statistics" to evidence that there had been any actual harm to its mark. Relying on the holding in Bally Total Fitness Holding Corp v Faber, the court held that as a matter of law a claim for dilution cannot rest solely on evidence of a hyperlink to another site which displays pornographic material.

Accordingly, the Voice-Tel Case emphasizes the need to present evidence of actual harm to a mark to support a claim of trademark dilution. A dilution claim will not withstand the scrutiny of summary judgment based simply on evidence of a hyperlink leading to pornographic material.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco

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