Planetary Motion, Inc. v. Techplosion, Inc.

261 F.3d 1188 (11th Cir. 2001)

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Nature of the Case

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Facts

Darrah developed a UNIX-based program that provides e-mail users with notice of new e-mail and serves as a gateway to the users' e-mail application. He distributed the Software over the Internet by posting it on a UNIX user site called 'Sunsite,' from which it could be downloaded for free. He named the software 'Coolmail' and this designation appeared on the announcement sent to the end-users on Sunsite as well as on the Software user-manual, both of which accompanied the release. The Software was distributed on a GNU General Public License that also accompanied the release. A GNU General Public License allows users to copy, distribute and/or modify the Software under certain restrictions, e.g., users modifying licensed files must carry 'prominent notices' stating that the user changed the files and the date of any change. After the release, Darrah received correspondence from users referencing the 'Coolmail' mark and in some cases suggesting improvements. Darrah released two subsequent versions under the same mark and also pursuant to the GNU General Public License. S.u.S.E. GmbH sought permission from Darrah to include the Software in a CD-ROM package sold as a compilation of Unix-based programs. Darrah consented. S.u.S.E. distributed the Software in its compilation product and in subsequent versions. S.u.S.E. sold and continues to sell the software compilation in stores in the United States and abroad, as well as over the Internet. Carson formed D, for the purpose of operating a business based on an e-mail service that he had developed. D offered the e-mail service on the Internet under the mark 'CoolMail.' D activated the domain name 'coolmail.to.' D delivered an e-mail solicitation under the 'CoolMail' mark to approximately 11,000 members of the Paramount Banner Network, an Internet advertising network. D charged no fee to subscribe to the service and generated revenues through the sale of banner advertisements on its web site. P is a computer software and telecommunications company. P filed three intent-to-use applications to register the mark 'Coolmail' with the United States Patent and Trademark Office. P was aware that Darrah's Software also bore the mark 'Coolmail,' but P lied in its application. P filed a complaint against D alleging infringement. To cover its ass, P purchased from Darrah all rights, title, and interest to the Software including all copyrights, trademarks, patents, and other intellectual property rights. With Darrah's rights, P moved for summary judgment in that the mark was affixed to Darrah's software, and that Darrah's distribution of the software over the Internet constituted a 'transport in commerce,' resulting in the creation of trademark rights and priority. P was awarded profits and damages and D appealed.