A US federal judge has rejected an effort by America Online to block AT&T's WorldNet Service from using the phrases "You Have Mail," "Buddy List," and "IM" on its service, AT&T said on Monday.
AOL (AOL) uses a similar phrase, "You've Got Mail," to inform subscribers that email has been sent to them.
AT&T also uses the terms Buddy List and IM -- or instant message -- for its chat functions. AOL offers a Buddy List and IM feature. The world's largest online service contends it came up with the names first.
The ruling came in a hearing on AOL's request for a temporary restraining order and preliminary injunction against AT&T for trademark infringement. The suit accuses AT&T of unfair competition and false advertising, and seeks unspecified damages.
"The denial of a preliminary injunction is not a good sign for AOL's case," said Mike Godwin, counsel at the Electronic Frontier Foundation, in an email. "It means the judge, based on the case made by AOL, doesn't believe that AOL is likely to prevail on its trademark or other intellectual-property claims."
The ruling is good news for the Net, since the terms in question have been in general use for a long time outside of America Online, Godwin said.
AOL has been using the phrase "you have mail" and "you've got mail" since 1989, said AOL spokeswoman Tricia Primrose.
"AT&T is trying to free-ride on the term that is widely and has been historically associated with America Online," she said.
AOL must now proceed with the case on a regular schedule. The claims will be considered on the merits at a later date.
"We realize this is just the first round, but AT&T is confident we will also prevail at trial," said James Cicconi, AT&T's general counsel.
AT&T stated in court that AOL's claims could have significant negative implications for the entire Internet community, as well as for the open system on which it is based. AT&T argued that AOL is attempting to assert proprietary ownership of common terms that are within the public domain and in broad usage throughout the Internet, particularly by Internet service providers and portals.
At the 24 December hearing, Chief Judge Claude Hilton of the Federal District Court for the Eastern District of Virginia rejected AOL's claim.
Primrose said that AOL holds a federally registered trademark on the term "Buddy List" and was in the process of registering the marks for the rest of the phrases in question before the lawsuit.
The suit also concerns the mailbox logo that AOL uses to show users they have new email messages. The suit claims that AOL began using "an old-fashioned US mailbox (with a red flag that pops up when a user has mail) as a logo in connection with its automatic email notification services" in early 1997, while AT&T began using it on 17 December 1998.
The suit says that a day later, possibly as a result of AOL complaining, AT&T removed the mailbox logo from its 'You Have Mail' feature of its Web site.
The suit also alleges that AT&T began using the phrases "you have mail," and "IM" with the launch of new services on 15 December 1998.
"Particularly the term 'you have mail' strikes me as the epitome of a generic mark," said William Boesch, an attorney at the Boston law firm Sugarman, Rodgers, Barshak & Cohen in Boston. "How do you describe the concept 'you have mail' without using the words 'you,' 'have,' and 'mail?'"
Boesch said that even after filing a term with the Patent and Trademark Office, the issue of whether the term is a generic one can still be debated.
"It's a little funny that [AOL] filed suit within days of the opening of the movie [You've Got Mail], in which, I understand, America Online is the co-star of the movie," he said. "At least the concept of Internet email as a mainstream and normal activity is getting great publicity in the movie. Maybe they're a little anxious to publicize their connection with themselves as the originator of that term."
The suit also mentions the film.
"AOL has invested substantial advertising efforts in promoting the You've Got Mail film and these marks," said AOL in the suit. "AT&T is apparently taking advantage of the publicity attending the opening of the Warner Bros. movie."
Reuters contributed to this report.
