Judge to Disney: Halt on 'Go'
Logo prompts lawsuit
by Elinor Abreu
Patrick Naughton
In a potentially significant online trademark suit, a federal judge has ordered the Walt Disney Co. to temporarily stop using its Go.com logo for its network of Web sites.
The case, which appears to be more about images than text, stems from the 11-month-old Go.com and 23-month-old GoTo.com using similar logos ? the word "go" in white type within a green circle on a yellow background. Disney has already changed the logo on sites including Go.com and ESPN.com to green lettering against a white background.
Today, U.S. District Court Judge Terry Hatter Jr. in Los Angeles denied Disney's requests to stay the preliminary injunction and refused to raise GoTo's injunction bond from $25,000 to $20 million. The action followed Hatter's order Friday barring Disney and Infoseek from using the logo until trial, which is expected in the spring, according to GoTo.
"We're thrilled with the ruling because it helps us reduce the confusion that is occurring in the marketplace, said Jeffrey Brewer, CEO of GoTo.com. "It's not trivial to take on the world's second-largest media company."
Disney countered that it will appeal the injunction. "We are very disappointed ... We are confident our logo does not impinge on that of any other [company]," the company said in a statement. "It is important to note that this ruling does not affect the use of the name 'go.'"
There have been few trademark cases dealing with logos on the Internet. Most trademark suits deal with names, such as the dispute over the use of names such as "Explorer" and "Amazon." But earlier this year, the artist formerly known as Prince filed several lawsuits against Web sites that were using the symbol that he employs for his name.
Still, there is some history in this legal vein. Labrador Software filed a suit against Lycos (LCOS) over its Labrador Retriever logo. In
January, a judge ruled that the portal could continue using the logo while the lawsuit was pending. Labrador agreed to drop the lawsuit after the two companies came to a settlement agreement, according to an attorney for Lycos. The terms of the agreement were confidential.
Online trademark law is still evolving. On Nov. 4, a Minneapolis bookstore dropped its lawsuit against Seattle-based Amazon.com. The Minneapolis company agreed to go by its full name, Amazon Bookstore Cooperative. It is not known how much money Amazon.com paid for the rights to the name.
Moreover, Microsoft was involved in a trademark dispute over the use of the word "Explorer" for its Web browser, Internet Explorer. The company was sued by another that had search technology bearing the same name about three years ago.
On the eve of trial, Microsoft agreed to pay $5 million to use the name, according to Claude Stern, a partner with the Palo Alto, Calif. law firm of Fenwick & West. "There have been a variety of cases in the past few years where little guys have beaten really big guys at using various marks," he said.
The "Go" issue has been looming over Disney since February. In its suit, GoTo claimed that Disney's Go Network logo was confusingly similar to its own. Consumers have been contacting GoTo asking if Go Network has bought the company, and Disney sales representatives have even called offering discounted ad rates for being in the Disney
family, GoTo representatives say.
The timing couldn't be worse for the Mouse and company, which acquired a 43 percent stake in Infoseek last year. Infoseek shareholders are scheduled to vote Wednesday on whether to allow Disney to buy out the remaining 57 percent of the search site in a deal worth about $1.7 billion. Disney also will hold a special shareholders' meeting to vote on creating a tracking stock for Go.com, which will encompass all of Disney's Internet properties, including the Go Network.
Disney's takeover of Infoseek has been hampered from the get-go, with executive defections from both companies and Infoseek shareholders filing lawsuits complaining they got the short end of the deal. This summer, Disney was reportedly considering selling off some of its noncore assets to help streamline costs. Meanwhile, its stock has dropped from about $38 earlier this year to $26.
The media and entertainment giant also has had its share of public relations headaches this year, including the September arrest of a senior online executive for allegedly soliciting sex from a minor via the Internet. Patrick Naughton, who has been fired, pleaded not guilty to the charges last month.
Disney has integrated its Net properties such as ESPN.com and ABC.com into the Go Network in an attempt to rival portal leaders Yahoo (YHOO) and America Online (AOL) . Both GoTo.com and the Go Network have their work cut out for them to take on the big players in the space. Go Network is ranked fifth in digital media properties, compared with GoTo's 20th ranking, according to Media Metrix. In terms of Web sites rank, Go.com is seventh and GoTo.com 23rd. |
