Public Citizen Urges Court to Dismiss Frivolous Jones Day Trademark Complaint

September 19, 2008. Public Citizen and other groups filed an amicus curiae brief [17 pages in PDF] with the U.S. District Court (NDIll) in Jones Day v. BlockShopper, a trademark case. The brief urges dismissal.

The law firm of Jones Day filed its original complaint on August 12, 2008, and its amended complaint [PDF] on August 28, 2008. It alleged that BlockShopper engaged in trademark infringement and dilution by publishing news articles that hyperlinked to the Jones Day public web site, and that it used the words "Jones Day" to identify "Jones Day".

BlockShopper operates a web site that provides information regarding residential real estate transactions. It states in its web site that it is a "residential real estate news service" for "residents". It covers markets in the Chicago, St. Louis, Las Vegas, and south Florida areas.

Jones Day alleges service mark infringement in violation of 15 U.S.C. §§ 1114 and 15 U.S.C. § 1125(a), false designation of origin in violation of 15 U.S.C. § 1125(a), service mark dilution in violation of 15 U.S.C. § 1125(c), unfair business practices under the Illinois Uniform Deceptive Trade Practices Act, and common law infringement and unfair competition under Illinois state law.

The complaint alleges that BlockShopper's use of the Jones Day mark "is likely to deceive and cause confusion and mistake among customers as to the source or origin of the services provided or offered for sale by Defendants and the affiliation of Jones Day with those services and/or the sponsorship or endorsement of those services by Jones Day."

The complaint does not allege that any statements published by BlockShopper are false. Nor does does it plead defamation. Nor does it plead any cause of action in the nature of invasion of privacy.

The complaint comes closer to stating a claim for copyright infringement. It alleges that the BlockShopper web site published "photographs of at least two Jones Day associates" and that these "are identical to the photographs which appear on the Jones Day web site". However, the complaint does not allege that Jones Day owns copyrights in these photographs. Nor does it plead infringement of any of the exclusive rights of copyright under 17 U.S.C. § 106.

To prevail on its claim for infringement under Section 1114, Jones Day must show that the use is "likely to cause confusion".

First, hyperlinking to other web sites is widespread, and is not understood to connote sponsorship or affiliation.

Second, use of the name of a business to identify it in a news article serves to identify the business, but does not cause confusion as to the source or sponsorship of the news story.

Hence, Jones Day cannot show likelihood of confusion.

To prevail on its false designation of origin under Section 1125(a), Jones Day must show that the use is "likely to cause confusion, or to cause mistake, or to deceive ..."

Jones Day's assertion that there is a likelihood of confusion, mistake or deceipt under this claim is also meritless.

To prevail on its claim of dilution under Section 1125(c), Jones Day must have a "famous" mark, which is defined as "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner". But, Jones Day will not be able to show that the "general consuming public" is familiar with Jones Day.

Moreover, Section 1125(c), which the 109th Congress revised, contains two exemptions that apply to BlockShopper's use.

In 2006 the Congress passed, and the President signed, HR 683, the "Trademark Dilution Revision Act of 2006".

Section 1125(c) now provides that "The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: (A) Any fair use ... including use in connection with ... identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary."

BlockShopper is protected both by the fair use and the news reporting exemptions.

For a summary of this trademark dilution bill, see story titled "Senate Approves Trademark Dilution Revision Act" in TLJ Daily E-Mail Alert No. 1,327, March 10, 2006. This bill was a reaction to the Supreme Court's March 4, 2003 opinion [21 pages in PDF] in Moseley v. V Secret. See, story titled "Supreme Court Rules in Trademark Dilution Case" in TLJ Daily E-Mail Alert No. 618, March 6, 2003.

Public Citizen argues in its amicus brief that Jones Day "is abusing a trademark to suppress legitimate, non-infringing speech, with potentially significant implications for other online speakers."

It continues that "The Internet offers unprecedented opportunities for speakers and audiences to find each other and exchange valuable information about products, research, viewpoints, and other important topics. That exchange cannot happen if trademark holders can prevent others from using their marks, accurately, in the ordinary course of communication, to refer to the holders themselves. But that is precisely what Jones Day seeks to do here. Its effort must fail."

Public Citizen also argues that "A large law firm with overwhelming resources seeks to use trademark law to prevent a small real estate news site from conveying accurate information about the firm and its associates. If Jones Day’s trademark theory 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 Jones Day is wrong. The use in question is clearly a fair use protected by the First Amendment and by the Lanham Act."

Jones Day is a huge law firm with many attorneys with considerable expertise in trademark litigation. Trademark litigation can be protracted and expensive. Skilled trademark lawyers can further raise the costs of trademark litigation to impose further burdens on thinly financed businesses. Small businesses such as BlockShopper possess substantially less litigation resources for defending such claims.

Hence, while the complaint appears on its face to fail to state a claim upon which relief can be granted, Jones Day may be relying on its expectation that its superior litigation resources will intimidate defendants such as BlockShopper to forego meritorious defenses.

This case has recently captured the attention of some bloggers and reporters.

The parties to this amicus brief are Public Citizen, Electronic Frontier Foundation (EFF), Public Knowledge, and the Citizen Media Law Project.

This case is Jones Day v. BlockShopper LLC, Brian Timpone, and Edward Weinhaus, U.S. District Court for the Northern District of Illinois, Eastern Division, D.C. No. 08CV4572, Judge John Darrah presiding.