RealTime IT News

SPG to Appeal in mySimon Lawsuit

The trademark infringement fight going on in federal court between CNET's mySimon.com e-shopping comparison site and real estate trust Simon Property Group Inc. is a nasty battle indeed, replete with dueling press releases spinning the story this way or that.

First, mySimon crowed in its release that a federal district court judge in Indianapolis reduced a jury verdict against mySimon from $26.8 million to $50,010.

But then, shopping mall operator SPG issued a statement of its own saying that the court ordered mySimon "to cease the use of its name, its 'Simon' character and its mySimon.com Web site."

mySimon rather downplayed that latter in its release, saying that: "In addition, the court ruled that if the jury's verdict on trademark infringement is upheld on appeal, mySimon will be required to change its name and Web address, but ruled that no changes are required until after all appeals are exhausted."

In other words, mySimon is at risk of losing its identity, but may not have to pay out the big bucks. "May" is the operational word in the preceding statement, as SPG said in its release that "We intend to vigorously pursue an appeal of those portions of the judgment relating to damages."

SPG said in its statement that the court rulings "upheld jury findings that mySimon intentionally adopted a name confusingly similar to the company's trademark 'Simon' name."

"Our primary objective in bringing this litigation against mySimon was to stop their ongoing, willful infringement of the Simon trademark and to eliminate the resulting confusion in the marketplace caused by their use of our name," SPG said in its press release. "We are very pleased that the jury's original finding of intentional infringement was upheld and that the court has issued an injunction which will ultimately protect the company's use of the 'Simon' name without infringement by one of its competitors.

"We are dismayed, however, that the court has decided to reduce the original $26.8 million damage award to a nominal sum even though the jury concluded, after hearing extensive arguments and carefully considering all the evidence, that mySimon engaged in willful infringement over a several year period and reaped substantial profits from its $700 million acquisition by CNET.

Simon Property filed the infringement suit in August 1999.

"We are pleased that the judge recognized that the damages award was excessive and that he has elected to allow us to continue with our business as usual pending appeal, which the judge acknowledges 'will present substantial questions'," said Josh Goldman, president of mySimon, in its press release.

"While we are very appreciative of this ruling, we still believe that the fundamental determination by the jury that we infringed SPG's trademark is not supported by the law or the facts, and accordingly plan to appeal that aspect of the decision as well as the requirement that we change our name."

CNET is a direct competitor of Internet.com, parent company of this Web site.