Famology.com v. Perot Systems

Famology.com Inc. v. Perot Sys. Corp., 158 F. Supp. 2d 589 (E.D. Pa. 2001).

Factual Background
Defendant filed a UDRP complaint against plaintiff's domain name "rossperot.com." The UDRP panel ruled in favor of defendant and ordered transfer of the domain name to defendant.

Trial Court Proceedings
Plaintiffs filed this action to challenge the UDRP decision, asserting a claim for declaratory relief as well as a variety of state-law claims against defendant. Defendant moved to dismiss plaintiff’s state-law claims (including conversion and "unfair competition by trademark misuse" or "cyberbullying") for failure to state a claim upon which relief can be granted.

The court granted defendant's motion to dismiss plaintiff’s claim for conversion of the "rossperot.com" domain name, finding that Pennsylvania law did not recognize this cause of action. The Pennsylvania Superior Court noted that "the process of expanding the type of property that may be converted has stopped with the kind of intangible rights which are customarily merged in, or identified with some document." Because plaintiff conceded that domain names did not fit into this limitation, the court granted defendant's motion to dismiss.

As to plaintiff’s new and unrecognized cause of action for “cyberbullying,” the court noted that plaintiff failed to point to a single case in which an American court has used trademark misuse affirmatively. To the contrary, the court noted that several courts have held that trademark misuse was not an independent cause of action but rather was only an affirmative defense to a trademark infringement claim. Because trademark misuse was not an affirmative cause of action, the court granted defendant's motion to dismiss that claim.

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