1155 Peachtree Street, N.E.
Atlanta, Georgia 30309-3610
Fax: 404 249-5664
TO: Jeff Kuester
DATE: April 25, 1996
RE: HB 1630 and BellSouth v. Internet Classifieds of Ohio
BellSouth filed suit to enjoin the use of THE REAL INTERNET PAGES, REALPAGES, "Let your mouse do the walking" and realpages.com in conjunction with an electronic yellow pages directory. BellSouth believes that there is a likelihood that customers and advertisers will be confused into thinking that BellSouth is the source of, sponsors, endorses or is affiliated with this publication in some way. BellSouth owns federal registrations for THE REAL YELLOW PAGES and associated marks containing the component REAL for use in conjunction with classified directories. BellSouth has made extensive use of these marks for over a decade and has developed valuable goodwill in them. BellSouth actively enforces its rights in all of its marks. This is a very straightforward infringement action based on the Lanham Act and state law. We have a strong case. To suggest that BellSouth would sponsor HB 1630 in a desperate attempt to find an alternative remedy to a weak cause of action is absolutely ludicrous.
BellSouth did not draft, sponsor, promote or lobby for HB 1630. BellSouth took no position on the legislation whatsoever other than, when it was brought to our attention, to recommend an exemption from liability for telephone companies and Internet access providers who provide transmission services for their customers. (This is the same position that we are actively taking with respect to the National Information Infrastructure Copyright Protection Act now pending in Congress.) Mr. Parsons does not represent BellSouth in the Georgia legislature. His internal duties have nothing to do with legislation or trademark matters. To my knowledge, both he and our lobbyists were totally unaware of the trademark litigation. I can tell you with absolute certainty that those involved in the trademark litigation were unaware of the pendancy of HB 1630.
With respect to the substance of HB 1630, I agree that it is probably overkill and unduly complicating to make acts of trademark infringement, misrepresentation and passing off on the Internet a crime under state law. There is already ample legislation and common law in place to effectuate the intent of this law. In my opinion, however, HB 1630 does not, as has been suggested, punish the mere placement of a name or mark on the Internet as a hypertext link. The offending name or mark must be used in a certain context: the "knowing" transmission of names and marks "to falsely identify" the person transmitting the data or to "falsely state or imply" that the transmitter "has permission or is legally authorized to use" the name or mark. This test is not unlike that of Section 43(a) of the Lanham Act. The concept of fair use of a name or mark without the permission of the trademark owner is clearly left in tact. For this reason I think that the grounds for opposition to the legislation have been somewhat overstated.
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