Avery Dennison v. Sumpton

Citation: Avery Dennison Corp. v. Sumpton, 999 F. Supp. 1337 (C.D. Cal. 1998), rev'd, 189 F.3d 868 (9th Cir. 1999).

Factual Background
Avery Dennison ("AD"), owner of the well-known federally registered trademarks AVERY and DENNISON for office products, moved for summary judgment on its claim of trademark dilution against Freeview Listings, Ltd. ("Freeview"), a Canadian ISP. Freeview operated a service that leased e‑mail addresses, which consisted of 12,000 family-name domains that capitalized on an Internet user's desire to have a pseudonym e‑mail address or an e‑mail address that includes the user's family name.

Trial Court Proceedings
The district court granted AD's motion, labeling Freeview a "cybersquatter" and ordering it to transfer its domain-name registrations for "avery.net" and "dennison.net" to Avery Dennison in exchange for AD's payment of $300 per domain-name registration. The facts that AD already owned the domain names "averydennison.com" and "avery.com," and that the domain name "dennison.com" belonged to an unrelated third party, did not affect the district court's conclusion that Freeview's use of the domain names lessened the capacity of AD's famous marks to identify and distinguish AD's products and services on the Internet.

The district court held that Freeview's registration and use of the domain names constituted "commercial use" because Freeview did not use the domain names as its own but was in the business of selling or licensing use of the names to others. Further, notwithstanding Freeview's self-imposed limitation on use of the domain names to e‑mail addresses having meanings as surnames, the domain names possessed all meanings attributable to the words "Avery" and "Dennison," including as AD's trademarks.

The court rejected Freeview's arguments that its use was not trademark use, noting that nothing would prevent Freeview from changing its intended use of the domain names to selling or licensing them to the highest bidder. Although the court recognized it could attempt to limit its denial of relief so as only to apply so long as the Freeview's business remained the same, the court believed "the result would almost certainly be to eliminate 12,000 words from their highest and best use as domain names."

Appellate Court Proceedings
On appeal, the Ninth Circuit reversed and remanded to the district court, instructing the district court to enter summary judgment in favor of Freeview. The court found that AD failed to create a genuine issue of fact that its marks were famous, noting that a showing of fame requires more than that the marks have acquired distinctiveness.

The court also rejected the district court's ruling that Freeview's registration of the domain names constituted commercial use. Finding that Freeview had only the intent to capitalize on the surname status of "Avery" and "Dennison," the court held that "Appellants do not use trademarks qua trademarks as required by the case law to establish commercial use. Rather, Appellants use words that happen to be trademarks for their non-trademark value."

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.