JK Harris operates at jkharris.com. The company sued Steven
Kassel, who operates Taxes.com.
Part of the complaint was that Taxes.com used the trade name JK
Harris excessively to create keyword density, to hijack web traffic
seeking the JK Harris website. JK Harris counted 75 uses of its
name on Taxes.com. The name also appeared in header tags, underline
tags, keywords and links across the site. Sometimes the link text
simply stated: “We Are NOT JK Harris – Visit Their Site Here.” JK
Harris considered these to be search engine optimisation
techniques.
JK Harris also presented evidence showing that consumers
entering "JK Harris" into a search engine would find links to
Taxes.com in the first page of results, in some cases above the
link to jkharris.com.
But Taxes.com was also highly critical of JK Harris, criticising
its business practices, linking from its homepage to an article
about JK Harris being raided by the Internal Revenue Service, and
publishing anonymous criticisms, ostensibly from dissatisfied
customers.
JK Harris requested and won a preliminary injunction last year.
The court agreed that Kassel's actions amounted to trade mark
infringement and ordered that excessive references to JK Harris be
removed from Taxes.com. However, Kassel has now convinced the court
to narrow the scope of that injunction significantly.
The original decision was the first of its kind as it ordered
the removal of overt references to a competitor's name from the
primary site content. It was hailed at the time as "revolutionary"
by a lawyer representing JK Harris as it appeared to extend
previous US decisions where removal of hidden references had been
ordered in cases concerning abuse of meta tags, the hidden HTML
code read by some search engines to identify the content of web
pages.
While the order was largely reversed, the court left open the
possibility that keyword density abuse could infringe a
trade mark. The key to yesterday's ruling is that Kassel's
site was not making gratuitous use of the JK Harris trade mark.
Yesterday's decision focused on a three-part test for
permissible unauthorised use of an undisputed trade mark. The test
was established in a trade mark case brought by former boy-band
New Kids on the Block against newspapers for promoting,
among other things, a "which kid is the sexiest?" phone poll.
The test allows the unauthorised use of the trade mark under US
law if:
- the product or service in question is not readily identifiable
without use of the mark;
- only so much of the mark is used as is reasonably necessary to
identify the product or service; and
- the user does nothing to suggest sponsorship or endorsement by
the holder of the mark.
It was ruled that Kassel's use of the mark clearly satisfied
parts 1 and 3 of the test as, realistically, JK Harris could only
be identified though its name and there was no suggestion of
sponsorship.
Part 2 of the test was "a closer question," in Judge Claudia
Wilken's view. There were clearly a substantial number of
references to JK Harris on Taxes.com – and JK Harris claimed that
the mark had been used in a manner designed to call attention to
it.
But Judge Wilken decided that the name was not used
gratuitously.
Rather, it was used "in order to make statements about it."
Criticising JK Harris was one of the primary objectives of
Taxes.com – which justified making the name visually obvious. If
the trade mark could not be used in this way for fear of trade mark
infringement, reasoned Judge Wilken, then it would be all but
impossible to engage in useful comment on the company.
Accordingly, the New Kids test was passed – and JK
Harris was no longer entitled to a preliminary injunction limiting
Kassel's use of the JK Harris trade name.
Only a minor part of the injunction remains: some third party
statements on Taxes.com allegedly defamed JK Harris and there was
no admissible evidence that they were true. These are now banned as
amounting to false and misleading advertising.
