BarnesandNoble.com loses round in trademark case
Promoting half-priced books could end up costing the bookseller more than it bargained for, if a rival has its way.
A district court judge recently dismissed BarnesandNoble.com's motion for summary judgment in a case brought by Halfpricebooks.com, which sued the online book giant in 2002 for infringing its trademark "Half Price Books." The judge's opinion, filed Nov. 22, effectively allows Half Price's suit to proceed on the grounds that BN.com could have overstepped fair-use laws governing the right to use descriptive trademarks.
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"While BN.com's name is displayed on each and every page (of its Web site), a reasonable jury may find that the usage of 'Half-Price Books' on the webpage is sufficiently prominent to suggest that there is an affiliation between HPB and BN.com," according to an opinion from Judge Lee Cook. "Therefore, HPB has directed the court to sufficient evidence in the record from which a reasonable jury could find in its favor on the issue of fair use."
Requests for comment from BarnesandNoble.com and Half Price Books were not immediately acknowledged.
The trademark gambit is one of many among Internet commerce companies. For example, several Web publishers have brought trademark-infringement lawsuits in recent years against rivals for using their trademarks to advertise products on Google and Overture Services.
Half Price Books filed a lawsuit against BarnesandNoble.com in November 2002, claiming that it violated and diluted its trademark under the Lanham Act when it advertised sale books with the description of its name. Half Price Books claimed in its suit that BN.com has used its trademark as an "attention-getting symbol," on its Web site when it advertises in a subtitle "Half-Price Books & Special Values" on a menu tab.
Half Price Books, which filed its original complaint in November 2002, asked for a preliminary injunction against BN.com, which was denied in August 2003. Last week, the judge also struck down Half Price Books' motion to dismiss certain evidence submitted by BN.com in support of its motion.
Attorneys watching the case say that it is a collision between free speech and trademark law.
"Trademark law should not prevent the truthful description by a competitor of the price of their books," said Ira Rothken, a lawyer at Rothken Law Firm.
"When there's such a collision, free speech usually wins."