## Facts

- In 1994, Byron Darrah created a UNIX email-notification/gateway program and distributed it for free over the Internet under the name “Coolmail.”
- Darrah posted the program to an online UNIX site for download; the “Coolmail” designation appeared on the online announcement and in accompanying documentation.
- The program was distributed under the GNU General Public License, permitting copying, distribution, and modification subject to stated conditions.
- Darrah released later versions in 1995 under the same “Coolmail” name and received user communications referring to “Coolmail” and suggesting improvements.
- A third party (a German software company) obtained Darrah’s permission to include “Coolmail” on a commercial CD-ROM compilation and distributed it in that channel.
- In 1998, Techsplosion began offering an Internet email account service using the mark “CoolMail.”
- Planetary Motion later offered an Internet email service under “Coolmail” and sued Techsplosion in 1999 for infringement and related claims.
- After the dispute arose, Darrah assigned his rights in the “Coolmail” software and asserted trademark rights to Planetary Motion.

## Issues

1. Whether free distribution of software over the Internet under a GPL can constitute “use in commerce” sufficient to establish ownership and priority of an unregistered mark.
2. Whether Darrah’s and Planetary Motion’s uses were sufficiently public to identify the source of the software/services despite the absence of sales.
3. Whether Techsplosion’s use of “CoolMail” for an email service created a likelihood of confusion with Planetary Motion’s “Coolmail.”
4. Whether the injunction was impermissibly vague or overly broad.
5. Whether the case was “exceptional” so as to support an award of attorney’s fees under the Lanham Act.

## Decision

- The Eleventh Circuit affirmed summary judgment for Planetary Motion on liability under the Lanham Act and related state-law claims.
- The court held that Darrah’s online and CD-ROM distribution of “Coolmail,” with the mark displayed on associated materials, was sufficiently public use to establish ownership and priority in the unregistered mark.
- The court upheld the finding of likelihood of confusion between “Coolmail” and “CoolMail” used for closely related email-related software and services marketed online.
- The court affirmed the injunction as adequately specific.
- The court vacated the attorney’s fee award for lack of support for an “exceptional case” finding.

## Legal Principles

- Rights in an unregistered trademark arise from adoption and use that is sufficiently public to identify or distinguish the goods in the relevant segment of the public, and do not require proof of actual sales.
- “Use in commerce” in the Lanham Act is read broadly to reach conduct within Congress’s Commerce Clause power; for goods, public distribution and transportation in commerce can satisfy the standard when the mark is associated with the goods or their displays.
- Free distribution of software (including under a GPL) can qualify as trademark use when it functions to identify source; distribution without charge does not place the mark in the public domain and does not negate competitive significance.
- Trademark priority for a product can extend to closely related goods or services that are a natural expansion of the original offering.
- Attorney’s fees under the Lanham Act require an “exceptional” case; absent evidence supporting malicious, fraudulent, deliberate, or willful conduct (or comparable justification), a fee award must be vacated.

## Conclusion

The Eleventh Circuit held that widespread, source-identifying distribution of free software under the “Coolmail” name established priority in an unregistered trademark and supported infringement relief against a later “CoolMail” email service, but it vacated attorney’s fees because the record did not justify treating the case as exceptional.


Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001)