One of the world's biggest law firms is suing a small Chicago-based website for naming the firm and linking to two of its associates' biographies. A judge rejected an attempt to have the case thrown out last week.
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 trademarks 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 trademark infringement were presented in the UK it would be unlikely to succeed.
"In general terms a business is allowed to refer to a trademark 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 trademark 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.
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OUT-LAW.COM is part of international law firm Pinsent Masons.