Jones Day, a firm with more than 2,200 lawyers, argues that
BlockShopper.com is giving a false impression that the firm is
affiliated with or endorses its business.
BlockShopper.com provides information about property
transactions. All information is compiled from public sources and
presented in the style of news reports. Each report gives the
address of the property, the names of the buyer and seller and
states the price paid. Where someone has a publicly-accessible
profile at another site, a brief summary is typically included in
BlockShopper's report with a link to the profile at the third party
site.
One article was headlined "Jones Day attorney spends $463K on
Buckingham Pl." It reported that purchaser Dan Malone Jr. is an
associate with the firm's Chicago office and summarised his
biographical details. It published the photograph that appears on
Jones Day's site and linked to that profile. A similar article
named another Jones Day associate.
The lawsuit, filed in a Chicago district court, states: "Use of
the Jones Day Marks, the links to the Jones Day web site and the
use of proprietary information from the Jones Day web site creates
the false impression that Jones Day is affiliated with and/or
approves, sponsors or endorses the business conducted by
Defendants."
"Such an impression is false and disparages Jones Day and the
Jones Day Marks," it says.
The firm argues that BlockShopper's links to pages within
its site dilute its trade marks by creating the false impression of
affiliation or endorsement. Jones Day is seeking a court order to
stop BlockShopper using its marks, linking to its website or
otherwise suggesting a connection. It also seeks to recover its own
legal expenses and punitive damages.
BlockShopper argues that there can be no dilution of Jones Day's
marks. It says that it is protected by news reporting exceptions in
US law and argues that there can be no confusion. But its motion to
have the case dismissed was rejected by US District Court Judge
John W Darrah.
Judge Darrah wrote that BlockShopper's argument that dilution is
impossible on the facts "present legal and factual issues not
appropriate for resolution at this motion to dismiss stage." He
added that it was too early in the case to say that Jones Day's
allegations of confusion are implausible.
Civil liberties group the Electronic Frontier Foundation (EFF)
said the case contains "some of the most preposterous trademark
claims we've ever seen". The EFF had tried to include a 'friend of
the court' brief in the court proceedings, to support BlockShopper.
Judge Darrah said that introducing such a brief was not appropriate
and he refused to consider it.
The EFF and others argue that BlockShopper's uses of Jones Day's
marks and information were fully protected by fair use and the
First Amendment right to free speech. "No internet user would
imagine that Jones Day was affiliated with or sponsored
BlockShopper based solely on a link or a reference to the firm in a
headline," it said in a report on the case.
"If Jones Day were correct, no news site or blog could use marks
to identify markholders, or links to point to further information
about the markholders, without risking a lawsuit. But that is not
the law, and Jones Day should know it," said the EFF.
John Mackenzie, a partner with Pinsent Masons, the law firm
behind OUT-LAW.COM, said that if the argument on trade mark
infringement were presented in the UK it would be unlikely to
succeed.
"In general terms a business is allowed to refer to a trade mark
if the purpose of the use is to identify the origin of the goods or
services," he said. "That seems to be what is happening here.
BlockShopper is saying 'Mr Malone is a lawyer with Jones Day',
rather than 'this site is supported by Jones Day'. They are
completely different concepts. There may be other objections of
course, but trade mark law would not be my first choice."
Mackenzie noted that if the law firm owned copyright in its
attorney photographs, it could assert copyright infringement in a
UK court to have the photographs removed.
