Federal Judge Says Business Names Provided By Reviewers At A Review Site Are Contributory Trademark Infringement

Trademark

from the shorter-federal-judge:-this-gobbledygook-seems-ultra-plausible dept

Tue, Mar 13th 2018 3:23am — Tim Cushing

I have no idea what is going on with this decision. A federal judge in Michigan has decided a stupid trademark lawsuit is not a stupid trademark lawsuit and is allowing it to go forward. We'll just have to follow along with the decision [PDF] -- brought to our attention by Eric Goldman -- because taking any other route would lead to madness. I mean, more so.

Reliable Carriers sued Moving Sites, LLC for trademark infringement. Did Moving Sites -- particularly its review site TransportReviews.com -- use Reliable Carriers trademark in any way that would be infringing? The answer appears to be "no," and that's coming straight from the recitation of facts that opens the opinion.

A visitor to TransportReviews can find reviews and contact information for businesses with similar names to Plaintiff. A search for “Reliable” on the site generates 19 listings. Id. Some of these listings include the names and business information of companies infringing on Plaintiff’s Mark, such as RCT Reliable Car Transport LLC, Reliable Auto Shippers, Reliable Auto Transport Carriers, and Reliable Elite Auto Carriers. A visitor to TransportReviews can also find customer reviews. There is at least one instance in which it appears that a review for an infringing company, BK Reliable Transport, Inc., may have actually been intended for Plaintiff.

Users of the site submitted reviews of companies whose names contained the word "reliable." The plaintiff claims some of the company names are infringing. The plaintiff, illogically, sues the third party host of user reviews of companies whose names may be infringing on the plaintiff's trademark. This is where the suit gets tossed because the alleged infringement isn't taking place at TransportReviews. It's taking place at all of the businesses allegedly misusing a registered mark.

But the suit doesn't get tossed. Instead, the judge says it can continue. The judge actually says user reviews hosted at a review site of businesses whose names might be infringing is the review site's problem. The only intelligible part of the opinion states there's no direct infringement. These were only names returned in search results, all of which were input by third party users. The website did not use the plaintiff's mark to identify its own goods or services. In fact, the site never used the names at all other than to serve up relevant hits for users' search terms.

Everything goes sideways after that. The judge decides that because the defendant was notified about this alleged infringement and did not immediately kowtow to a bizarre request directed at completely the wrong party (a middleman hosting third party content that had nothing to do with naming related businesses names that might be infringing), the website can be held responsible for contributory infringement.

Comparing it to a decision involving a flea market operator refusing to kick out vendors selling counterfeit goods, the court says third party reviews of businesses whose names might be infringing is pretty much comparable to someone directly overseeing vendors selling bootleg merch. WTF.

The complaint satisfactorily alleges underlying direct infringement by the companies with listings on TransportReviews. Plaintiff alleges sufficient facts to show that it owns the registered trademark “Reliable Carriers,” that the names of several other businesses listed on TransportReviews infringe on that trademark, and that their use is likely to cause confusion.

Plaintiff has also sufficiently alleged that Defendant knew or had reason to know of this infringement and continued to facilitate it without taking appropriate remedial measures. The complaint alleges that Defendant published the names and business information of the infringing businesses on TransportReviews.

All the plaintiff has "sufficiently" alleged is that it informed a site some names looked like ripoffs of theirs and were probably told to stop emailing/calling since the site did not create the reviews using the names the plaintiff is so worked up about.

It is a stretch to call these actionable allegations, as the judge's decision does. These are speculative invoicing terms of art -- lobbed at the largest party involved in hopes of securing a settlement. The site did not engage in infringement, no matter how much the plaintiff (and the judge, apparently) want to believe it did. The users entered the infringing business names when submitting their reviews. If the plaintiff wants to stop trademark infringement, it should be targeting the 18 other businesses in the search results, not the site where the search results appear.

As for the intermediary defense (basically pointing out that it's not the offending party -- but not via CDA 230, since CDA 230 doesn't apply to trademark claims) that really shouldn't even need to be raised, the judge dismisses it out of hand, declaring it to be an issue that does not need to be addressed.

Defendant’s response–that it is not responsible for the business reviews on its website, which are entered by customers–is a factual allegation outside the scope of the complaint.

This is asinine. The fuck does that even mean? The site can't raise this defense because the plaintiff didn't provide an opening for this discussion in the complaint? This is seriously weird adjudication, suggesting a judge with very limited intellectual property experience is fielding something outside his expertise. Judge Sean Cox even goes so far as to speculate the plaintiff may be able to make a credible contributory dilution argument. Trademark dilution is already a questionable (and twisted) trademark theory -- but it makes even less sense than usual in this context.

At this point, the judge has only gone so far as to say the plaintiff has stated claims credibly enough to pursue this case. But that's the problem: the claims aren't credible, even when viewed in the light most favorable to the plaintiff. If trademark infringement has occurred, it was committed by the companies using similar names that showed up in the site's search results. The plaintiff should be suing them, but has apparently decided it's cheaper to sue 18 other business by proxy.

Maybe Judge Cox just has something against review sites. His is certainly a mess. If this case keeps going this direction, he's only going to be adding to this wall of shame.

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Filed Under: dilution, review sites, reviews, sean cox, trademark
Companies: moving sites, reliable carriers, transportreviews

25 Comments

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PaulT (profile), 13 Mar 2018 @ 3:42am

"Defendant’s response–that it is not responsible for the business reviews on its website, which are entered by customers–is a factual allegation outside the scope of the complaint"

Really?

Judge: you committed this crime

Defendant: I didn't, it was another person and I can show who it was and how they are the responsible party

Judge: That's not relevant to this case

I'm sure the usual gaggle of idiots will be along shortly to explain why literally not having committed the crime is not a valid defence against an accusation, but anyone sane and intelligent who wants to chip in, please do.
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Anonymous Coward, 13 Mar 2018 @ 4:01am

Is Reliable Carriers trying to deal with trademark infringement, or are they trying to destroy a review website?
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That Anonymous Coward (profile), 13 Mar 2018 @ 4:22am

Re:
C. all of the above.
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That Anonymous Coward (profile), 13 Mar 2018 @ 4:31am

Christ what an asshole.

He seems to think the review site is selling car moving services, rather than just allowing people to make reviews.

From the comments on robingroom its sort of obvious he is willing to bend backwards to protect businesses against anything they feel is bad for them.

But then a quick look at this history shows that new things scare him & he doesn't care how he treats citizens as long as businesses get protected.

"Courts are not allowed to make up a less restrictive alternative in RFRA cases and scold the government for not complying with its fantasy solution."

http://www.slate.com/blogs/outward/2016/08/18/federal_judge_uses_religious_liberty_to_lega lize_anti_lgbtq_discrimination.html

Sometimes we laugh about the old man screaming at the cloud to do what he wants, its very sad when they have a robe & actually can demand everyone do exactly what he wants, even if the law says differently.
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Anonymous Coward, 13 Mar 2018 @ 4:54am

Jury Nullification - The one 'power' the citizenry has to keep the Judicial system 'in-check' - ODDLY enough it's ILLEGAL for a member/officer of the court to discuss it (how ironic). If a jury feels as if the law is unjust it become nullified...bye bye...gone - WITH PRECEDENCE and without prejudice. Look it up, do some research - better yet get your friends to do so too! It's about time the general public realizes that they have this capability - getting 12 of them to agree and not be cheated and manipulated by 'jury instructions' much harder.
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Anonymous Coward, 13 Mar 2018 @ 5:27am

It sounds like this was a 12(b)(6) motion to dismiss so you’re limited to the allegations in the complaint. The judge may have gotten it wrong, but the defendant will get an opportunity to file for summary judgment, and then that facts the judge refused to consider here will come into play. Which isn’t to say the judge will get it right then, either, but at least the defense will get another shot.
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Altaree, 13 Mar 2018 @ 5:42am

Tracking a judge's record
Are there any sites that track how often a judge's rulings are successfully appealed?
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PaulT (profile), 13 Mar 2018 @ 5:59am

Re: Tracking a judge's record
Would that really be a useful metric? I'd assume that some types of cases are appealed much more than others, and some defendants won't take no for an answer and appeal no matter how correct the original decision. The number of appeals probably won't tell you anything without much more context.
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Anonymous Coward, 13 Mar 2018 @ 6:13am

Re: Re: Tracking a judge's record
The number of appeals no, but the percent of appeals granted certainly would.
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Anonymous Coward, 13 Mar 2018 @ 6:13am

Re: Re: Tracking a judge's record
How about how of their judgments many are successfully overturned?
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Ninja (profile), 13 Mar 2018 @ 6:14am

When a system is so broken it allows all sorts of madness and misuse we shouldn't be surprised when records are set. IP has to be overhauled asap.
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PaulT (profile), 13 Mar 2018 @ 6:42am

Re: Re: Re: Tracking a judge's record
More useful, but again not without context.
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Anonymous Coward, 13 Mar 2018 @ 6:44am

Judge Sean Cox you are a brain dead turd.
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Anonymous Coward, 13 Mar 2018 @ 6:58am

Censor them completely
Scrap every review, reference and mention of this company, worldwide. You Google them, you find nothing. Zero results.

There, fixed that infringement problem for you!
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Christenson, 13 Mar 2018 @ 7:49am

Re: Re:
D. And Streisand themselves out of business, too.
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James Burkhardt (profile), 13 Mar 2018 @ 8:41am

Re: Re: Re: Re: Tracking a judge's record
So just provide mild context - this Judge has X% of rulings in this category overturned, which is [significantly lower than|Lower than|About|higher than|Significantly higher than] the average of X%.

Video games have been doing this for quite some time.

That said, while informative, this kind of summary information would only be useful for elected judges, I think.
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Anonymous Coward, 13 Mar 2018 @ 8:53am

Re:
The judge didn't say it's not relevant to the case. But it's not relevant to the motion to dismiss, since it's a disputed fact. Disputed facts, according to the Seventh Amendment's right to a jury trial, cannot just be decided by the judge. For the purposes of the motion, therefore, all facts are temporarily assumed in favor of the plaintiff.

Furthermore, in a motion to dismiss, you're generally limited to what's in the complaint. If you want to use facts outside the complaint, you need to instead make a motion for summary judgement - and that has different rules. The parties may be entitled to discovery first.

So the judge very well may have been correct in this ruling, even if the defendant is ultimately found not liable. In a motion to dismiss, you're essentially saying "even if everything you said is true, I still win, no matter what." If you're instead saying "that's not factually true" or "here are some more facts", then you generally aren't going to get a favorable ruling - yet.
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Anonymous Coward, 13 Mar 2018 @ 9:16am

Re: Re: Re: Re: Tracking a judge's record
Correct; imagine how the appeal percentages would look for judges on the US Supreme Court. Spectacular!
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PaulT (profile), 13 Mar 2018 @ 9:29am

Re: Re:
Well, that seems to be why the US legal system favours the rich then. If "they're literally suing the wrong person" is something that can't be introduced as a reason to dismiss the case (and that fact will of course always be disputed to some degree), no wonder fees get high. That's also likely why you have a lot of people folding rather than defend themselves and still have to swallow the bill.

There's probably a good reason for that to exist generally, but if this is the sort of thing that should be cut and dried for copyright under CDA230 but not so under trademark, it would seem that protections for innocent service providers should be extended.

Thanks for the explanation, anyway. It's always nice to get someone trying to actually explain the reasoning rather than just attacking & mocking those who disagree with it.
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Anonymous Coward, 13 Mar 2018 @ 11:22am

Re: Re: Re:
"they're literally suing the wrong person" can be a reason to dismiss IF the facts regarding that are undisputed. (Just disputing the conclusion that the wrong person is being sued isn't enough; legal conclusions aren't facts.)

Apparently the plaintiff is disputing that there's no relationship between the company being sued and the companies allegedly infringing on the trademark. IF there was a relationship, then perhaps they wouldn't be suing the wrong person.
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Anonymous Coward, 13 Mar 2018 @ 8:25pm

This is the sort of genius that out_of_the_blue wants in charge of IP law. Fuck that.
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PaulT (profile), 14 Mar 2018 @ 1:30am

Re: Re: Re: Re:
"Apparently the plaintiff is disputing that there's no relationship between the company being sued and the companies allegedly infringing on the trademark. IF there was a relationship, then perhaps they wouldn't be suing the wrong person."

Hmmm. I'd also disagree with that. If they're meant to be suing the person who actually posted the comment, it doesn't really matter what the relationship between them and the platform is. They're still suing someone who didn't post the comment.

Anyway, like I say I've fortunately not had much experience with the legal system, and certainly not the one in the US. But this is a good indicator of how broken the whole thing is, if you still have to pay thousands to defend yourself in court for something you clearly are not responsible for.

I could be wrong in principle due to my inexperience, but that seems to be a huge problem, especially in a system where as I understand it you're still responsible for legal fees even if you win.
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Not an Electronic Rodent (profile), 14 Mar 2018 @ 6:17am

Um...?
Quite apart from the ridiculousness of the trademark claim, is not the factual naming of something and reporting opinion on said something not pretty much the definition of "protected speech"?
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Some guy, 15 Mar 2018 @ 4:39am

Re: this copyright and trademark comment
His ideas about Lexis Nexis Law is so bad that like Nike He should Just Do It. After all he is un Reliable on transporting valid legal opinion to his courtroom so we are not Free To Move About The Country. Unless he has a Goooooaaaaalllll in mind, no one will say Let’s Get Ready To Rumble in his courtroom. Even the Artist Formally Known As Prince would be turning in his grave.
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Need To Understand (profile), 15 Aug 2018 @ 1:45pm

Can Some One Explain?
The FTC has a Consumer Review Fairness Act, and a reviewer is allowed to place a review in a reliable website. See https://www.ftc.gov/tips-advice/business-center/guidance/consumer-review-fairness-act-what-businesse s-need-know . They enter the company name and data and leave a review. Why would a company have a trademark claim on a company added by a third party. Are there companies that will not be allowed in a review site? Will this silence people in leaving a customer experience. What will happen if all companies choose this argument (I know they have to get trademarked) from review websites, when those sites are being entrusted by the reviewers with their experiences. How was this case solved/settled?
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