Eglen v. America Online, Inc., TH 00-135-C-M/H (S.D. Ind. 6/12/2003), TH 00-135-C-M/H.
| Decision Date | 12 June 2003 |
| Docket Number | TH 00-135-C-M/H. |
| Parties | JAN ALAN EGLEN and APBHN, INC., d/b/a HOMETOWN.NET and HOMETOWN.NET, INC., Plaintiffs, v. AMERICA ONLINE, INC., and ONEMAIN.COM, Defendants. |
| Court | U.S. District Court — Southern District of Indiana |
This cause is now before the Court on motions for summary judgment filed independently by the defendants, America Online, Inc. ("AOL") and OneMain.Com ("OneMain") (collectively, the "Defendants"). The Defendants allege that summary judgment in their favor is appropriate on the plaintiffs', Jan AlanEglen, and APBHN, Inc. (collectively, "Eglen"), remaining claim of trademark infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
For the reasons discussed herein, the Court finds that AOL's motion for summary judgment should be GRANTED. Furthermore, OneMain's motion for summary judgment should also be GRANTED.
The facts in the light most favorable to Eglen follow. Since at least January 1996, Eglen has operated a self-described "local," "community-oriented" web site called "Hometown.Net." AOL's Stmt. of Facts, ¶ 1; OneMain's Stmt. of Facts, ¶ 3. Although the legal name for the business is APBHN, Inc., the company is known as "Hometown.Net." Pls.' Resp. to OneMain's Stmt. of Facts, ¶ 1. Eglen named his business Hometown.Net because he was creating a ""network"" and wanted "`to create a system to connect towns together and to create a sense of community.'" OneMain's Stmt. of Facts, ¶ 2 (quoting EglenDep., Vol. 1, at 58-59). Eglen's uniform resource locator, or "URL," is www.hometown.net. Eglen first registered the domain "hometown.net" with Network Solutions on November 28, 1995. Pls.' Stmt. of Facts, ¶ 3.
Eglen refers to Hometown.Net as a community access system. Eglen Aff. ¶ 2. The web site at that URL offers links to other web sites operated by Terre Haute, Indiana, and other Wabash Valley area organizations and links to information of interest to current and former residents of the Wabash Valley. OneMain's Stmt. of Facts, ¶ 5. The system is designed to work as a combination of intranet and internet services. OneMain's Resp. to Pls.' Stmt. of Facts, ¶¶ 64 & 65. Hometown.Net also publishes a daily news bulletin, the Early Morning Valley E-Mail News, that is circulated electronically. OneMain's Stmt. of Facts, ¶ 6. The Early Morning Valley E-Mail News is a "community access newsletter" that contains local weather and information about the Wabash Valley. Id. ¶ 7.
Eglen admits that Hometown.Net "`describes the type of services provided on the internet as localized, small-town service which is designed to be user-friendly'." Id. ¶ 27 . Further, Eglen asserts that Hometown.Net "`has meaning and value as a mark suggestive or descriptive of the small town or Hometown type of internet and computer services provided by'" him. Id. ¶ 28 ). In other words, "hometown" "`accurately describes'" the services Eglen offers through Hometown.Net. Id. ¶ 29 .
From its inception Hometown.Net has provided chat, e-mail, bulletin board, participation in communities, dining and business guides, and a city directory. Pls.' Stmt. of Facts, ¶ 33. Through Hometown.Net, Eglen briefly provided internet service provider ("ISP") services to "dial-up" ISP customers. OneMain's Stmt. of Facts, ¶ 8. In 1995, Eglen stopped accepting new dial-up customers as part of an agreement with IndyNet, an Indianapolis-based ISP that began providing service to Terre Haute that same year. Id. ¶¶ 9-10. Later in 1995, Eglen partnered with the Tribune Star Publishing Co., publisher of the Terre Haute Tribune Star, an advertising agency called Miller & White Advertising, Inc., and IndyNet to provide ISP and other services through Hometown.Net. Id. ¶ 11. Apparently, upon initiation of the joint venture, all of Eglen's dial-up customers were transferred to IndyNet for such services. Pls.' Resp. to OneMain's Stmt. of Facts, ¶ 13. Effectively, once Eglen provided his ISP customers to IndyNet, he "`had stopped providing ISP services as a commercially viable entity.'" OneMain's Stmt. of Facts, ¶ 15 (quoting Eglen Dep., Vol. 1, at 89).
The Tribune Star Publishing Co. withdrew its support for the venture in mid-1996. Id. ¶ 12. In a letter dated August 6, 1996, Eglen blamed the publishing company for having ruined his ISP business. Id. ¶ 14. Dial-up ISP activity is now a "minor part" of Eglen's business. Id. ¶ 16. He currently provides ISP services to approximately ten to twelve subscribers, mostly friends, family and neighbors. Id. ¶ 17. Apparently, the last time Eglen signed a new ISP customer was in 2001. Id. ¶ 48. The revenue generated from ISP services totals approximately $100.00 to $150.00 per month. AOL's Stmt. of Facts, ¶ 7.
In October 1996, Eglen installed a "homepage" feature on Hometown.Net. Id. ¶ 9. Apparently, this feature is no longer used by Eglen's customers. Pls.' Resp. to AOL's Stmt. of Facts, ¶ 10. Approximately ten people used Hometown.Net's homepage feature when the service was operational. Id. ¶ 11. The feature permitted users to create hompages composed of black-and-white, typed text. AOL's Stmt. of Facts, ¶ 12. Eglen's customers and not-for-profit organizations could use the feature without charge. Pls.' Resp. to AOL's Stmt. of Facts, ¶ 13. However, Eglen did not "push" this feature of Hometown.Net. AOL's Stmt. of Facts, ¶ 14. The last time Eglen created a web page for a paying customer was in 2001. OneMain's Stmt. of Facts, ¶ 49. In mid-2001, Eglen disconnected the homepage feature to save money. AOL's Stmt. of Facts, ¶ 15.
On October 28, 1996, Eglen and Miller & White Advertising, Inc., filed an application for service mark registration with the United States Patent & Trademark Office ("PTO") for Hometown.Net & Design & Slogan "Communication for home, work & play," for the following services: computer services, local community network providing resource information, community events and services. OneMain's Stmt. of Facts, ¶ 18. It was Eglen's opinion at the time that the words "Hometown.Net" were not distinctive enough to be registered without a slogan or logo. Id. ¶ 19. Eglen also opined that "`[m]ost reasonable people would agree that the word "hometown" is in the public domain and unless stylized in graphical print is probably not able to be service or trademarked in and of itself.'" Id. ¶ 20 (quoting OneMain Exh. 13, Letter, From Jan Alan Eglen, To Louis F. Britton, Esq., Oct. 10, 1996). See also Eglen Dep. Vol. 1, at 162; AOL Exh. 12 (OneMain Exh. 15), Letter, From Jan Alan Eglen, To James T. Young, Dec. 16,1996, at 2.
The PTO refused to register the mark. OneMain's Stmt. of Fact, ¶ 21. Eglen and Miller & White Advertising, Inc., abandoned that registration application. Id. ¶ 22.
In 1996, a third-party, CGS Holdings, Inc. ("CGS"), notified Eglen of CGS' alleged ownership of the phrase "Hometown Network" and demanded that Eglen cease using Hometown.Net. Id. ¶ 23. In a letter dated December 16, 1996, to CGS, Eglen expressed the following belief: "`Most reasonable people would agree that the word "hometown" is in the public domain and unless stylized in graphical print is probably not able to be service or trademarked [sic] in and of itself.'" Id. ¶ 24 (quoting AOL Exh. 12 (OneMain Exh. 15), Letter, From Jan Alan Eglen, To James T. Young, Dec. 16, 1996). In the letter Eglen also expressed that the words "hometown network" were in the public domain based on "`the 143,721 references to the term "hometown network" found on the internet.'" Id. ¶ 25 (quoting AOL Exh. 12 (OneMain Exh. 15), Letter, From Jan Alan Eglen, To James T. Young, Dec. 16, 1996).
On January 9, 2001, Eglen filed another application for service mark registration with the PTO for Hometown.Net for the following services: computer services, local community network providing resource information, community events and services (Class 42). Id. ¶ 26. On January 3, 2002, the PTO issued its final refusal of the application for registration of Hometown. Net. Id. ¶ 30. The PTO refused registration because Hometown.Net, if registered, was likely to cause confusion with a registered mark, Hometown Online. Id. ¶ 31. The mark Hometown Online is owned by HomeTown Newspapers, for "`online services providing multiple user access to a global computer information network and web sites featuring community news and information.'" Id. ¶ 51 (quoting OneMain Exh. 18, Reg. No. 2132135, U.S. Patent & Trademark Office, registered Jan. 27, 1998).
In addition to Hometown Online, there is at least one other registered mark using the term "hometown." Id. ¶ 52. Specifically, Hometown Market Place, Inc., owns a federal registration of the mark Hometown Marketplace for the service of assisting others to "`disseminate advertisements via a global computer network.'" Id. (quoting OneMain Exh. 19, Reg. No. 2134550, U.S. Patent & Trademark Office, registered Feb. 3, 1998). Other companies also use the term "hometown" to describe various internet services: (1) an Indiana-based company uses the term "Hometown Cyber Services" to identify its ISP business, which provides local access numbers in Terre Haute (among other places), Id. ¶ 53; Hometown Distributing and Hometown Online also provide ISP services nationally, Id. ¶ 54; hometown.com offers computer related services from that site, Id. ¶ 55; Hometown Outlet, Hometown Stores, Hometown Marketplace, Hometown Shopping Mall, www.hometowncollectibles.com, www.hometownquiltsandcrafts.com, www.hometowngirlbalto.com, www.hometownfavorites.com, www.hometownent.com, www.hometowndelights.com, www.hometowntreats.com, and www.hometownshops.com, provide online shopping services on a nationwide basis, Id. ¶¶ 56 & 57; Hometownnews.com offers a page...
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