Lanham Act may be a weapon in the war against spam

Two federal suits recently filed in the US district courts, alleging violations of the Lanham Act, illustrate how the rules governing the protection of trademarks can be used as a weapon to bring spammers to court and make them accountable for their practice of sending unsolicited bulk emails.

In the case of United Parcel Service of America Inc v John Does One through Ten (Case 103CV1639), United Parcel Service of America (UPS) has filed a complaint in the US District Court for the Northern District of Georgia against 10 unknown defendants, following hundreds of complaints from consumers regarding unsolicited emails that the consumers believed to have originated from UPS. UPS is seeking injunctive relief, damages and attorney's fees from the alleged spammers.

UPS claims that the alleged spammers were using its standard format for email addresses and were including the designation 'ups.com' in the emails' 'from' address line. The unsolicited emails promoted websites selling adult products and services that had nothing to do with UPS. UPS maintains that the alleged spammers were using the 'ups.com' designation to:

  • evade spam filters;

  • induce consumers to read the emails; and

  • avoid other administrative obstacles normally encountered by spammers.

In addition to its complaint, UPS requested an emergency order allowing expedited discovery to ascertain the identity of the spammers. Two days after the complaint was filed, the district court issued the requested order for the purpose of preserving evidence, and to determine the identity and location of the spammers.

In the second case, Disney Enterprises Inc v Prime Internet Network Inc (Case 03-4901), Disney Enterprises has filed a suit for, among other things, trademark infringement, trademark dilution and unfair competition pursuant to the Lanham Act. The lawsuit's objective is to halt unsolicited bulk emails allegedly using Disney's trademarks to induce consumers into disclosing personal information to the spammers. According to Disney's complaint, the defendant spammers sent unsolicited emails to consumers offering awards of a trip to the Walt Disney World resort. The emails provided a link to websites that required the diclosure of personal information. The complaint alleges that the websites also featured Disney trademarks, further confusing consumers into believing that Disney was somehow associated with the offer and was encouraging consumers to disclose personal information.

Disney is seeking an injunction, damages and attorneys' fees.

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

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