NEW YORK (CNNfn) - A federal judge Monday granted AT&T Corp. permission to use the phrases "you have mail," "IM" and "buddy list" for its WorldNet Internet service, rejecting America Online Inc.'s claims that it held exclusive rights to those terms.
AOL (AOL), the leading online service provider, sued AT&T (T) last December after the company began using the disputed phrases in its WorldNet Internet service.
AOL claimed AT&T's "you have mail" e-mail notification was too similar to its own "you've got mail" message to inform users of new e-mail messages.
AT&T also features "buddy list" and "IM" (instant message) on WorldNet's "I M Here" instant message service, the same terms AOL uses on its Instant Messenger service.
Claude Hilton, chief U.S. District Court judge in Alexandria, Va., ruled that the phrases are common and generic expressions and that AOL cannot claim them as trademarks.
The court did not hold a trial on the matter, as Hilton granted AT&T a summary judgment.
"We're pleased the court agreed that these terms are in the public domain -- available for all to use," said Jim Cicconi, AT&T general counsel. "AOL's claim that it owns the everyday language of the Internet is another example of AOL's attempt to monopolize all aspects of services over the Internet."
AOL, however, said it plans to appeal the decision, noting that "buddy list" is a federally registered trademark and that the other terms are "unique to AOL."
"We believe that the court's decision incorrectly interprets well-established foundations of trademark law, and we are appealing it," said Paul Cappuccio, AOL general counsel. "AOL and AT&T have both recognized that these issues ultimately would have to be resolved by the Court of Appeals, regardless of who prevailed in the District Court. We are confident that the ruling will be reversed."
AT&T shares fell 5/16 to 48-15/16 in morning trade. AOL shares rose 3/4 to 97-5/8.