Judge Lets Bogus Trademark Lawsuit Move Forward
from the this-makes-no-sense dept
A couple months ago, we wrote about what may be one of the most bizarre and questionable trademark lawsuits we've seen. Huge corporate law firm Jones Day was suing a small website called BlockShopper for posting public info about various professionals (including some who worked at Jones Day) buying homes in certain neighborhoods. Jones Day claimed that BlockShopper violated trademark law by mentioning that Jones Day employees worked at Jones Day and linking to Jones Day's website. The firm claimed that naming the company and linking it was a violation of trademark since people would interpreted it as being sponsored by Jones Day. It's hard to see how anyone, let alone a moron in a hurry would come to that conclusion, but that's what Jones Day claimed. Plenty of legal advocacy groups quickly jumped up in protest. If Jones Day won, it would establish a horrible precedent, that a firm could claim trademark infringement just for linking to the company's website.The case was such an incredible stretch of trademark law, and so obviously a situation of a big law firm bullying a small website that it seemed obvious that the judge should dismiss the case. However, there were some worrying signs at the beginning. Paul Levy from Public Citizen had reported that the judge apparently told the guy from BlockShopper that he should just settle, noting how much it would cost to defend himself -- suggesting that the judge was already siding with Jones Day, despite the highly questionable nature of the claims. So, while disturbing, perhaps it's not a surprise that the judge has refused to dismiss the case. This increases the likelihood that BlockShopper will simply settle, as the time and expense of going through a lawsuit is, indeed, quite large, as the judge allegedly noted originally. It's difficult to fathom how one could look at the facts of the case and see any merit in the trademark infringement claims. This is a very unfortunate ruling.
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Filed Under: trademark
Companies: blockshopper, jones day
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All too often...
In my untrained opinion, it seems like there should be some kind of protection in place already for stating facts that are public knowledge. If it isn't public knowledge that these people worked for Jones Day, then the individuals could sue for violation of privacy. I fail to see how ANY form of trademark law would apply here, given the facts that have been reported so far.
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So if i give someone direction on how to get to the offices of Jones Day does that mean Jones Day is sponsoring me?
should all GPS networks remove JD's offices from there networks or else they will get sued?
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God bless America's legal system! Justice and equality for all...as long as you're rich!
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Tarnish
According to the opinion denying dismissal, Jones Day acknowledges that two of its employees did in fact make real estate transactions as reported by Blockshopper. It appears the objection is in reporting the employer of those individuals (fact and public record, acknowledged by Jones Day) (which, as such, should be beyond the scope of TM law) and/or "deep linking" to the profiles of those same employees.
JD alleges that those deep links give the appearance that blockshopper is endorsed or supported by JD... which is silliness. The Jones Day website, as a website, is a public document. Referencing a public document does not dilute the integrity or value of the trademark of the IP holder, nor does it imply endorsement any more than a bibliography entry or footnote in a document implies that Britannica endorses my writing or opinions.
Also, from the opinion, is this bit on page 2:
Hyperbole aside, I can only hope both that this is not a sample of said work, and that this sample will be taken into consideration by those clients, competitors, and general public when weighing said quality moving forward.
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I think I'll help some here.
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Re: I think I'll help some here.
Want a beer, Mr. Peterson?
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Re: Re: I think I'll help some here.
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I think I'll help some here.
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Re: I think I'll help some here.
Deep Link to Jones Day
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http://knol.google.com/k/mark-regan/celtic-thunder/3oo5lhklxb3l0/2
Welcome to America! The country which has for the past 8 years claimed it is OK to invade another country based upon their "intentions" rather than their actions, "kidnap" citizens of another country and bring them to a third country and torture them, deny legal advice to them, deny visitors, deny communication with the rest of the world, deny them trials, then release them after seven years without any charges since they were innocent to begin with. Why would such a country give a darn about your right to read or say or believe what you want?
Now we can expect to be imprisoned or sued for pages or documents or pictures or videos or documents we LINK to, and if McCain / Palin had won the election, also for "THINKING ABOUT" linking to.
I no longer own a Xerox, I own a generic photocopy machine, I do not use an IBM PC, I use a "clone" of one; it is loaded with generic software instead of genuine Microsoft Windows. Note that these companies "protected their trademarks so fiercely that they are now pretty much useless to them. The "valuable" IBM PC is now a Lenovo -- the IBM logo has such a bad corporate image no legitimate company wanting to sell PCs wants to be linked to it. When was the last time you heard a company market computers by selling an IBM clone? That would be akin to saying "I'm inferior."
Xerox has so ruined their name through "protective action" that they have destroyed their former good name, character and reputation.
Microsoft has installed so many hurdles requiring their customers to run gauntlets in order to use their products that they have taken the value out and left the jail cell bars.
Music and movie companies companies make it easier to buy counterfeits than legitimate copies of their products. It is impossible to buy some legitimate top selling DVDs or CDs any more at WalMart or other big box retailers, because all they sell is poor quality knockoffs or unpopular stuff.
Protectionism is alienating legitimate customers. But that is OK with me, because there will always be a Google around to make a FREE version of valuable products delivering that VALUE without the spyware and threat of lawsuits for looking at it, or using it, or LINKING to it.
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Re: [URL removed]
Wow... Mark... far be it for me to get in the way of a good rant, normally, but what the hell are you going on about?
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The judge did not pull his opinion out of thin air. His reasons are clearly set out and are consistent with legal rules governing the pleading stage of lawsuits and rulings on motions to dismiss a complaint.
To those who decry the opinion, all I can say is that familiarity with the pleading stage of lawsuits would certainly be useful in understanding that this is not a bad decision.
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Re:
Let me see if I understand you correctly. Because there isn't enough evidence the judge has decided not to dismiss the case.
I'm sorry but I figured the burden of proof would be on Jones Day not BlockShopper. If there isn't enough evidence than I'd say that's plenty of reason to dismiss the case.
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Re: Re:
Here the defendants satisfied the standard as it pertained to them personally, but were not able to do so with regard to the two JD trademark claims.
This is why the claims against the defendants were dismissed, but the trademark claims against their company were not.
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Re: Re:
I'm sorry but I figured the burden of proof would be on Jones Day not BlockShopper. If there isn't enough evidence than I'd say that's plenty of reason to dismiss the case.
You can't dismiss a case based on lack of evidence, especially when discovery has not occurred. It's not fair to the plaintiff, as it has not had a chance to gather evidence to support its allegations. Further, the Federal Rules of Civil Procedure do not have a rule that allows one to dismiss a case for lack of evidence. Only a motion for summary judgment can conclude a case before trial due to lack of evidence to support one's claims.
However, what one can do, and what BlockShopper did do, is move to dismiss the case for failure to state a claim upon which relief may be granted. Such a motion basically says that the plaintiff's claim for relief has no basis in law, or that the allegations of the plaintiff in its complaint do not support a valid claim for relief. Blockshopper made that argument, and the judge disagreed based on the allegations in the complaint.
This does not mean that BlockShopper may not ultimately prevail while avoiding a trial; it just means that JD's complaint survived the dismissal stage.
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Re:
I did read the opinion, did you?
(all quotes taken from the opinion)
The judge is daft. The Complaint fails on element 2 - using by name a trademark is not adopting use of the mark, were it every (for instance, chosen at random) every car magazine ever would be perpetually in defense in court for saying "Ford" or "Chevrolet" in their articles. This is clearly codified in trademark law, and is supported by enough case law to choke a T1 connection.
JD, as a competent law firm, knows this (as should the Judge Darrah). This should have been dismissed on lack of merit, and a fine issued for wasting the court's time.
Instead, in support of his finding that this was sufficiently pleading, Durrah cites Vulcan, that is "a scheme to profit from the plaintiffs' trademarks by creating webpages associated with domain names that are similar to the plaintiffs' names or marks".
Cybersquatting. In moving this forward on a claim that factual reporting is infringement, he is citing cybersquatting.
Continuing to cite Vulcan, we come to this:
Implausible doesn't matter. Failing element 2 (from p7), JD's allegations become irrelevant... except that Durrah seemingly doesn't understand that cybersquatting is not reporting on factual events.
Which brings us to pgs 12-13:
You, sir, have no idea how helpful a view from outside your own rectum might be.
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Re: Re:
That is a sweeping generalization that is plainly incorrect. You would be correct if you said that many uses of the name of a trademark are not considered uses as a trademark. But the fact is that some are, and that's where trademark law comes into play. For instance, this website uses the name "TechDirt" a lot. This website also has a few displays of the name "Google" next to its advertisements. You would be hard pressed to say that the uses of these names on this website are not trademark uses of those names.
It's highly unlikely that BlockShopper's use of JD's name was a trademark use of the name. But the judge could not make that determination without looking past the faces of the pleadings and denying the plaintiff the benefit of the doubt - two things a judge cannot do at the dismissal stage.
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Re: Re: Re:
That is a sweeping generalization that is plainly incorrect. You would be correct if you said that many uses of the name of a trademark are not considered uses as a trademark.
You misunderstand me. What I said:
"Using by name a trademark" - I acknowledge that Jones Day, even as text, is trademarked.
"is not adopting use of the mark" - Just saying "Jones Day" is not the same as adopting that mark for use as part of my business.
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Re: Re: Re: Re:
using by name a trademark is not adopting use of the mark,
How else do you adopt use of a trademark other than by using its name?
"Using by name a trademark" - I acknowledge that Jones Day, even as text, is trademarked.
"is not adopting use of the mark" - Just saying "Jones Day" is not the same as adopting that mark for use as part of my business.
Again, in many cases, that's correct, but in others, that's incorrect. And at this stage in the litigation, the judge cannot make the determination of where this case fits by using any facts other than those alleged in the pleadings.
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Re: Re: Re: Re: Re:
How else do you adopt use of a trademark other than by using its name?
'K, saying (or writing) "Ford" is NOT adopting use of the trademark "Ford". There's something of a subtle difference there. To adopt the use of, you pretty much, yeah, have to adopt the use of. But not all mentions are adopting the use of. How are you not getting that?
Element 2 of the denying opinion says "Adopted use of plaintiff's mark". I am saying - pay attention, this is important - that just mentioning Jones Day is not "adopting use of" said trademark.
Again, Plaintiff's Complaint fails on element 2. All that follows in the opinion, being predicated on a false notion, is not relevant.
Again, in many cases, that's correct, but in others, that's incorrect.
No. No, no, no. In all cases, ALL CASES, with respect to trademark, it IS acceptable to SPEAK OF the entity by their name, even if that name is trademarked. You cannot speak AS the entity, you cannot trade on the entity's name, but you can damn well talk ABOUT them. **
And that is ALL that is going on here.
And if this wasn't prima facia dismissible, these suits would appear all the time, but they don't. This judge is wrong for not throwing JD out on their ear.
** - standard "I'm not an idiot, I shouldn't have to disclaim things like libel etc. etc. but I'm covering my ass 'cause you've demonstrated like someone to nitpick what I obviously didn't mean" disclaimer here.
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Re: Re: Re: Re: Re: Re:
Because that's not what you were saying. You said "using by name a trademark is not adopting use of the mark," and such a broad generalization is incorrect.
Element 2 of the denying opinion says "Adopted use of plaintiff's mark". I am saying - pay attention, this is important - that just mentioning Jones Day is not "adopting use of" said trademark.
With which I agree - there must be something more going on in order to constitute use of a mark. But JD alleged in its complaint that, indeed, more was going on, and that's why the judge held that the facts as alleged by the pleadings met the 2nd element of the claim.
No. No, no, no. In all cases, ALL CASES, with respect to trademark, it IS acceptable to SPEAK OF the entity by their name, even if that name is trademarked. You cannot speak AS the entity, you cannot trade on the entity's name, but you can damn well talk ABOUT them.
And again, that's not what you said earlier.
And that is ALL that is going on here.
Believe it or not, I agree with you. But you have the luxury of playing fact-finder on your own. The judge does not have this luxury at this stage. He has to follow procedure: he can only rule on the pleadings on a motion to dismiss.
** - standard "I'm not an idiot, I shouldn't have to disclaim things like libel etc. etc. but I'm covering my ass 'cause you've demonstrated like someone to nitpick what I obviously didn't mean" disclaimer here.
Then I would suggest that you word your posts more carefully than you do. Otherwise you do come off as the idiot you claim not to be.
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Re: Re: Re: Re: Re: Re: Re:
Because that's not what you were saying. You said "using by name a trademark is not adopting use of the mark," and such a broad generalization is incorrect.
"is not automatically" or "is not necessarily" - you can't assume intent in context? All quarters are coins. Not all coins are quarters. I'm saying "not a quarter", not "not a coin". You are splitting hairs, and you know it. That onus is on you, not I.
I made an ambiguous statement. You called me on it. I'VE CLARIFIED MY INTENT. You persist. And I'M the idiot?
Then I would suggest that you word your posts more carefully than you do. Otherwise you do come off as the idiot you claim not to be.
So I am. Pleased to meet you.
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Re: Re: Re: Re: Re: Re: Re: Re:
I'VE CLARIFIED MY INTENT. You persist.
And, just to be sure - I clarified in post #24 by quoting myself, breaking the sentence into its important parts, and expanding on exactly what I meant by each part. "You persist" in post #25, where you blatantly ignore me defining myself so you can ask the same question that prompted the expansion to begin with.
There is nothing wrong with my original statement except that I didn't specify "usually, but there are no absolutes". There are never absolutes. I made the mistake of assuming we're all adults and don't need such disclaimers each and every time we speak.
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Re: Re: Re: Re: Re: Re: Re: Re: Re:
Your "clarification" was nothing more than a repetition of what you wrote in post 16. It is what prompted my "persistence."
There is nothing wrong with my original statement except that I didn't specify "usually, but there are no absolutes". There are never absolutes. I made the mistake of assuming we're all adults and don't need such disclaimers each and every time we speak.
No, you made the mistake of calling the judge daft under the presumption that your sweeping generalization (what one might call an "absolute") was some legal principle that he had to follow. You persisted in making this mistake even after someone here pointed out the legally required procedure that the judge had to follow, which was evident in the opinion you claimed to read.
And I would expect adults to write better than you do. I guess you're right: we're not all adults here.
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Trademark lawsuit
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Lawyer AC - get over yourself, the judge is an idiot.
Only a lawyer (or wannabe) would attempt to defend a judges ignorance in such a manner. So because the judge doesn't have a clue it should be okay to proceed with unnecessary legal action, right? From the lawyers perspective (the one getting paid for taking action regardless of it's merit) it's obviously okay, as it's what allows them to continue bilking clients with useless lawsuits.
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"I did read the opinion, did you?"
Yes, but I did so against the backdrop of how our legal process works and the rules that are applied at this stage of the proceeding. Based upon your last sentence, I assume you are familiar with neither the process or the rules.
17:
I did not realize you have expertise in federal trademark law (aka, the Lanham Act) sufficient to declare that a specific judge is not as informed as you. If you happen to have a legal memorandum analyzing both the Federal Rules of Civil Procedure and the Lanham Act that contradicts what the judge decided, I would certainly be quite interested in reading it.
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Re:
Yes, but I did so against the backdrop of how our legal process works and the rules that are applied at this stage of the proceeding. Based upon your last sentence, I assume you are familiar with neither the process or the rules.
Ah. I see. No, I am not a lawyer. I am a human being (perhaps you're familiar with my species?). As such, once I identify that the process of reason has gone off the rails, I reserve the right to be snippy, indignant, or outright rude.
... or you could make an attempt to explain why this finding is anything short of pants-on-head retarded.
Suggesting the Judge has his head up his ass has to qualify as at least one of those.
If it is, as you indicate, required by process and rules to find something this ridiculous as meritorious, then my only possible response is to expand that allegation to include everybody in your profession.
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Re: Re:
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oh goody
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trademark
I remember reading Mother Jones in the seventies. Maybe this law firm is violating their trademark.
Maybe Ceech and Chong should look into trademark infringement of "Basketball Jones"
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trademark
Now I can't claim to be a Lanham Act expert, but if Blockshopper isn't trying to piggyback off of the value from the affiliation of these individuals with JD, exactly what are they doing referencing the law firm at all?
The truth is if these guys didn't work for JD, or any other big company, the personal data Blockshopper is "selling" to visitors and readers would be much less valuable.
The imprimitur of the firm (or any major company for that matter) "pre-qualifies" the subjects of these stories for attention by third parties - financial planners, interior designers, insurance companies, etc. and that is a value driver for visitors and readers.
That aside, the question isn't whether this exploitation of private information for public gain is acceptable or newsworthy - because it is now permitted - but whether or not Blockshopper can take the added step of intruding on JD without permission.
If the employer is not the subject of this story or is not in any way connected to the purchase, ask yourself why JD is being integrated into any story beyond some incidential reference.
The answer is clear, Blockshopper derives value from these linkages without permission. The reference multiplies the places where the story will appear and be seen. Besides being a nuisance, and trespassing upon the space of the firm without permission, they are usurping the value of the firm and are attempting to add legitimacy to their site by using the JD name (and the names of many other firms they reference) without in fact having any direct or permitted interest.
These tactics not only are ethically lame, but actionable. As well, the private data put out for public consumption is an invasion of privacy. Furthermore, not only does this crap impose the subject of these stories to unwanted attention, harrassment, solicitations, etc, but it increases the odds of identity theft and fraud, and enhances the risks to the personal safety of the subjects and their families.
To the extent there is even a tangential opportunity to make a case under the Lanham Act so be it. There are no democratic ideals to protect in this blatant distortion of freedom of speech and information.
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Rob Biedermann & Other Blockshopper Garbage
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I absolutely hate Blckshopper. Hope they run out of funding
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BOYCOTT any advertisers on BlockShopper
Any real estate agent would have to be OUT OF THEIR MINDS to advertise/support BlockShopper! Real estate is about TRUST, and any agent that would support this is clearly saying to potential clients: "I don't care HOW uncomfortable or inappropriate this site is! I don't care about your information being smeared all over the internet! I don't respect you!"
The good news is, there actually are some good agents out there who will gladly take your business.
Any company that supports these immoral weasles should be barraged by complaint e-mails and phone calls.
BlockShopper smugly thinks that we are powerless victims - let's fight back !
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Blockshopper must be stopped
1. Google never pulled up property records, but thanks to BlockShopper - my home price & address come up FIRST in a search for my name.
2. BlockShopper refuses to respect my privacy and will not remove an invasive article about my property transaction (that would otherwise never come up in a Google search).
3. The information BlockShopper posted about me is out of date and incorrect. The information they posted about my place of employment is bizarre and incorrect. Only someone who does not speak English and didn't attend an American school system would write the things that are written about my employer and education.
4. The information BlockShopper collected about me was taken from a site that requires a member to login and specifically search out my personal information. This site was not picked up by search engines due to its privacy coding, but they pulled all the information from this private site on their public site. They have done this to thousands of people without their consent. Then, they refuse to remove the information.
5. BlockShopper has caused problems in my personal and professional life by posting this information publically and inaccurately.
http://stopblockshopper.orgfree.com/
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Re: Blockshopper must be stopped
Ok. But this was entirely about trademark. There's nothing wrong with being upset about the other points you make, but that doesn't excuse misusing trademark law to deal with this.
First, BlockShopper's employees do 2 problematic things: (a) They pull all property transactions & prices out of local databases (that search engines cannot enter) so that search engines can easily find this information when someone searches your name (making it infinitely easier for anyone to find personal information about you) and (b) They select a handful of transactions to write little "stories" about (almost exclusively about somewhat well-off people like doctors, lawyers, professors, traders, and executives) thereby invading the privacy of the individuals who are the target of the "stories."
You leave out a rather important detail: all of this information is public by law. Your real problem is with the fact that this info is public -- not with Blockshopper's actions.
If you're upset about this, focus on the real issue: the fact that this info is public.
4. The information BlockShopper collected about me was taken from a site that requires a member to login and specifically search out my personal information. This site was not picked up by search engines due to its privacy coding, but they pulled all the information from this private site on their public site. They have done this to thousands of people without their consent. Then, they refuse to remove the information.
If it's a privacy violation, then you can deal with it through legal means. The problem is that it's not really private info (by law). It's info you merely wish was private.
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Re: Re: Blockshopper must be stopped
Are you saying you can't see the difference between public information, and a company which purposely SEOs the information so Google puts it on the first page?
Public doesn't mean readily and instantly available.
I somehow doubt the authors of the first amendment had in mind that scummy people would take information of ALL every day people, and manipulate it for their own profit while seeing that the entire world would have instant access- at the click of a button.
Previously, this never existed. Yes, real estate information was public- but people had to specifically look for it.
It just goes to show that law has nothing to do with ethics- especially not common decency.
No matter- the laws will change. Unfortunately a few people will first need to be attacked buy stalkers, or worse before anything is done.
Perhaps the owners of Blockshopper will get an ugly taste of their own medicine before it is all said and done.
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Ethics vs. trademark law
Their post about me is also completely wrong & the description of my workplace is bizarre and incorrect. Like i show on my website, a bunch of people from asia wrote the whole thing.
I never said Jones Day was ethical for using the trademark thing, but our legal system is 20 years behind the progress of the internet...so how else can they stop a monster like blockshopper? I think lawsuit abuse is awful (as the victim of that once too, so I speak from experience) but when blockshopper knowingly violates people's privacy and REFUSES to take that information down, it is an ETHICAL problem. ok? It's hard to get the mafia on murder, but if you get them on tax evasion & give them the maximum sentence, that's one way to go. Also, OJ's latest jail sentence seemed a bit severe - but I think it was the right thing to do. If you are a lawyer, I know you forget about ethics and only understand laws & cases...but ethically, if a person logs into private databases (some of which are password protected) and extracts that information (selectively) and posts the inaccurate, extracted information about me so that the whole world can read it with a simple google search on my name (rather than having to KNOW I had real estate transactions and having to go in various databases to read about it) - and then refuses to delete it WHILE profiting from it - that is unethical. Period. I guess your ethical compass is off... i know law school does that to people.
http://stopblockshopper.orgfree.com/
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invasion of privacy
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company links my name and address online
I have discovered that this company is putting my name and address online without any authorization, now anyone with google can find my name from my address and vice versa. i have contacted them to remove the info but they declined
forcing me to move on to the next step ie file an official complaint
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