Recently, law firm Jones Day filed a lawsuit against Blockshopper.com, alleging service mark infringement, service mark dilution, false designation of origin and deceptive trade practices. What did the website owners do to merit the filing of this lawsuit?
Blockshopper publishes publicly available information on real estate transactions. It published information on two transactions (see here and here) that involved Jones Day associates. Blockshopper had the audacity to actually print the name “Jones Day” and to link to their website. *gasp*
And Jones day goes on to suggest that somehow users of the Blockshopper website might believe “… that Jones Day is affiliated with and/or approves, sponsors or endorses the business conducted” by the site. And by using the name Jones Day, Blockshopper will “…gain an unfair competitive advantage over Jones Day and allow Defendants to improperly interfere with Jones Day’s continued promotion and expansion of its business.”
Note to Jones Day: I don’t think Blockshopper is trying to compete with you. You’re a law firm. They’re a website that posts real estate transaction information.
Paul Levy of Public Citizen writes:
According to Jones Day, linking to its web site dilutes its trademark and creates a likelihood of confusion. But that is preposterous. The link is in connection with a comment on Jones Day; when a trademark is used to comment on the trademark holder, the use reinforces the association with the trademark holder, rather than blurring it, and besides use for commentary is expressly protected as fair use under the Lanham Act as amended in 2006. Moreover, nobody could visit the BlockShopper web site and think that it is sponsored by or affiliated with Jones Day, even if they follow the links from BlockShopper’s mention of Jones Day associates to Jones Day’s own web site. That is what web sites do – they link to other web sites (that’s what makes it a “World Wide Web”).
Indeed, throughout the first paragraph above, I used Jones Day’s name (because I am writing about that firm) and linked to Jones Day’s web site and elsewhere. Is Public Citizen equally liable for trademark infringement and dilution? If Jones Day is right here, it is hard to see how the Web could survive.
It seems Jones Day may be trying to misuse the intellectual property laws to pursue this petty issue. (If it’s even an issue at all. Who cares that they mentioned the name of the firm and linked to them?)
Public Citizen filed an amicus brief in the case. This type of brief is essentially a filing by a non-involved party who is providing relevant information in the case.
The brief basically says that people are allowed to use a mark such as “Jones Day” in the ordinary course of communication to make it clear who/what they’re referring to. The law doesn’t allow the owner of a mark to stop people from saying their name. And… no one is going to be confused and think that Blockshopper is Jones Day.
The Jones Day case gets even sillier, though. Jones Day has filed a brief opposing the filing of the amicus brief. The firm says the brief shouldn’t be allowed because Public Citizen favors one side of the case. (Well, that’s kind of the purpose of an amicus brief… to provide information that will help the judge make a decision in favor of one side.) But even better, it shouldn’t be allowed because it offers no new information, and it shouldn’t be allowed because it offers new information.
That’s not a typo. In one part of the brief Jones day says the amicus brief offers nothing new:
Movants’ amicus brief does not possess “unique information or perspective” helpful to the Court beyond what Defendants’ counsel are able to offer for their clients. Movants’ brief is instead duplicative of the arguments made in Defendants’ Motion to Dismiss, as is evident by a comparison of the two briefs’ argument headings. Four of the five headings in the Motion are duplicative of arguments covered Defendants’ Motion to Dismiss,…
And then in the same sentence (continued from above) they turn around and complain that the brief does offer something new:
…and the fifth raises an issue that Defendants did not even think appropriate to raise.
Yes, the same sentence. Nothing new, but something new. Amazing.
(Hat tip: TechDirt)
26 Sep 08 at 11:56 am
Right there is proof positive that just because someone is a lawyer doesn’t necessarily mean that they’re smart.