America Online, Inc. v. LCGM, Inc., 46 F.Supp.2d 444 (E.D. Va. 1998)(full-text).
Plaintiff is an Internet service provider that provides a proprietary, content-based online service so that its members can have access to the Internet and the capability to receive and send e-mail messages. The defendant operated and transacted business from Internet domains offering pornographic websites.
Plaintiff complained that the defendant sent large numbers of unauthorized and unsolicited bulk e-mail advertisements to its members in violation of state and federal law. The defendants send more than 92 million unsolicited and bulk e-mail advertising messages to AOL members. The defendants forged the domain information “aol.com” in the e-mail messages in order to cause the AOL domain to appear in the header information of its e-mails.
District Court Proceedings
On AOL’s motion for summary judgment, the District Court held that (1) the operators’ use of the AOL’s Internet domain name violated the Lanham Act’s prohibition on false designation of origin; (2) the operators’ use of the domain name constituted dilution; (3) the operators exceeded authorized access to AOL's computers in violation of the Computer Fraud and Abuse Act; (4) the operators impairing AOL's computer facilities in violation of the Computer Fraud and Abuse Act; (4) the operators violated the Virginia Computer Crimes Act; (5) the operators’ conduct amounted to trespass to chattels under Virginia law; and (6) fact issues precluded summary judgment on AOL’s claim of conspiracy.
The Lanham Act makes it unlawful to use in commerce "any false designation of origin . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods services, or commercial activities by another person."
The unauthorized sending of bulk e-mails has been held to constitute a violation of the Lanham Act’s prohibition on false designation of origin. Elements necessary to establish a false designation of origin violation under the Lanham Act are: (1) a defendant uses a designation; (2) in interstate commerce; (3) in connection with goods and services; (4) which designation is likely to cause confusion, mistake, or deception as to origin, sponsorship, or approval of defendant’s goods or service; and (5) plaintiff has been or is likely to be damaged by these acts.
Each of the false elements has been satisfied. The defendants clearly used “aol.com” designation, incorporating the federally registered trademark and service mark "AOL" in their e-mail headers. The activities involved interstate commerce because all e-mails sent to AOL members were routed from defendants’ computer in Michigan to Virginia. The use of AOL's designation was in connection with goods and services as defendants’ e-mails advertised their commercial web sites and the e-mails were likely to cause confusion as to the origin and sponsorship of defendants’ goods and services.
The Federal Trademark Dilution Act of 1995, 15 U.S.C. §1125(c)(1) of the Lanham Act, provides relief to an owner of a mark whose mark or trade name is used by another person in commerce “if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.”. The legislative history indicates that it was intended to address Internet domain name issues. Elements necessary to establish a dilution claim under the Lanham Act are (1) ownership of a distinctive mark and (2) a likelihood of dilution.
The “AOL” mark qualifies as a distinctive mark which is registered on the principal register of the United States Patent and Trademark Office. Dilution under Lanham Act can be established by tarnishment and the sine qua non of tarnishment is a finding that plaintiff’s mark will suffer negative associations through the defendant’s use.
The Computer Fraud and Abuse Act, 15 U.S.C. §1125(a)(2)(C), prohibits individuals from “intentionally accessing a computer with authorization or exceeding authorized access, and thereby obtaining information from any protected computer if the conduct involved an interstate or foreign communication. Defendant actions of harvesting e-mails of provider’s customers and sending bulk e-mail to those customers violated AOL’s Terms of Services and were unauthorized.
Computer Fraud and Abuse Act
The Computer Fraud and Abuse Act, 18 U.S.C. §1030(a)(5)(C), prohibits anyone from “intentionally accessing a protected computer without authorization, and as a result of such conduct, causes damage”. Collecting AOL members’ addresses violated the AOL’s Terms of Service, accessing of provider’s computer network to send bulk e-mails to customers, and use of software to evade provider’s filtering mechanisms violated the Computer Fraud and Abuse Act section prohibiting the impairment of computer facilities.. By using the domain information “aol.com” in their e-mails, defendant camouflaged their identities and evaded plaintiff’s blocking filters and its members’ mail controls, damaging the computer network, reputation, and goodwill.
Virginia Computer Crimes Act
The Virginia Computer Crimes Act, Va. Code 1950, §18.2-152.3(3) which provides that “any person who uses a computer or computer network without authority and with the intent to convert the property of another shall be guilty of the crime of computer fraud”. Section 18.2-152.12 authorizes a private right of action for violations of the Act. Internet site operators' use of Internet service provider's “aol.com” domain name in sending unauthorized bulk e-mails to provider's customers violated Virginia Computer Crimes Act's prohibition against use of computer or computer network without authority and with the intent to convert the property of another.
Trespass to chattels
Under Virginia law, Internet site operators' transmission of unsolicited bulk e-mails to customers of Internet service provider, using provider's computers and computer network, constituted trespass to chattels. A trespass to chattels occurs when one party intentionally uses or intermeddles with personal property in rightful possession of another without authorization, and one who commits a trespass to chattel is liable to the possessor of the chattel if the chattel is impaired as to its condition, quality, or value. The defendants intentionally used AOL’s computers and computer network, which are tangible personal property. Because AOL’s Unsolicited Bulk E-mail Policy and Terms of Service prohibit the sending of such e-mails, defendants’ actions were unauthorized.
The elements necessary to establish the existence of a civil conspiracy are: (1) that two or more persons engaged in concerted action; (2) to accomplish some criminal or unlawful purpose, or some lawful purpose by some criminal and unlawful means; and (3) that actual damages resulted from something done by one or more of the conspirators in furtherance of the object of the conspiracy.
Material issues of fact precluded summary judgment for Internet service provider on its claim that operators of Internet sites engaged in common law conspiracy to commit trespass to chattels and violate federal and state statutes by working with “site partners” to further transmission of unauthorized bulk e-mails to provider's customers.
- 15 U.S.C. §1125(a)(1).