Express One v. Steinbeck

Citation: Express One Int'l, Inc. v. Steinbeck, 53 S.W.3d 895 (Tex. Ct. App., 5th Dist.-Dallas 2001).

Factual Background
Plaintiff employs pilots as part of its airline freight carrier and charter passenger business. In 1998, plaintiff’s employees participated in an election to unionize. Defendant, a former employee of plaintiff, posted an e-mail message on an Internet message board under the screen name “ExpressONE” that contained negative comments about union supporters. Plaintiff immediately denied responsibility for the message.

Upon learning that defendant posted that message, the plaintiff sued defendant under Texas State law for, among other claims, trade-name dilution and conversion. The trial court granted defendant’s motion for summary judgment on each of plaintiff’s claims, and the appellate court affirmed that decision.

Appellate Court Proceedings
Plaintiff argued on appeal that defendant’s failure to present any summary judgment evidence mandated the denial of his motion and that the evidence it submitted raised a material fact issue regarding each of its claims. According to the appellate court, however, defendant’s motion for summary judgment did not require the presentation of any evidence because the burden was on plaintiff to present evidence sufficient to raise a genuine issue of material fact.

Plaintiff could not proceed on its claim for trade-name dilution by blurring because it produced no evidence that defendant used plaintiff’s name as a trade name or that the EXPRESS ONE name was weakened because the public associated the name with defendant rather than plaintiff. Plaintiff’s claim for trade-name dilution by tarnishment also failed because defendant did not use plaintiff’s name as a trade name. Moreover, the court noted that the Texas Dilution Statute was “not intended to address non-trademark uses of a name to comment on, criticize, ridicule, parody, or disparage the goods or business of the name’s owner.”

Concerning plaintiff’s claim for conversion of its trade name, the appeals court explained that “Texas law has never recognized a cause of action for conversion of intangible property except in cases where an underlying intangible right has been merged into a document and that document was converted.” Plaintiff neither alleged nor provided any evidence that defendant converted any document or other tangible expression of its trade-name rights. Plaintiff’s argument that its trade name became tangible when defendant posted it on the Internet message board was without merit and not supported by any authority. Indeed, the court noted that a Texas federal court previously held that a domain name was intangible property not subject to conversion.

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