Last Thursday, a federal district judge denied BlockShopper.com's motion to dismiss Jones Day's complaint alleging trademark infringement and dilution. The lawsuit arose out of BlockShopper's reports on two condominium purchases by Jones Day associates Dan Malone Jr. and Jacob Tiedt. In the reports, BlockShopper used Jones Day's trademark (its name) to identify the law firm as Malone and Tiedt's employer and linked from each associate's name to their biographies on the firm's website.
In its motion to dismiss, BlockShopper argued that its conduct could not confuse consumers or dilute Jones Day's trademark as a matter of law. The CMLP joined Public Citizen, EFF, and Public Knowledge in moving the court for permission to file an amici curiae brief in support of BlockShopper's motion. Judge Darrah denied both BlockShopper's motion to dismiss and our motion for leave to file an amici curiae brief.
Jones Day convinced Judge Darrah of the United States District Court for the Northern District of Illinois that BlockShopper's arguments required resolution of factual issues not appropriate on a motion to dismiss. While this position is superficially appealing, it confuses the court's obligation to credit factual allegations with its duty to determine whether the alleged facts state a cause of action.
Stripping out the legal conclusions in the complaint (which are plentiful), the alleged facts are that BlockShopper used the Jones Day name to refer to the activity of its associates in the course of reporting on local real estate transactions, provided deep links to the firm's website, and hosted advertisements. (That BlockShopper used photos from the firm's website goes to a potential copyright infringement claim, not its trademark claims.) In its brief, Jones Day disclaimed any objection "to the use of 'Jones Day' in a truthful manner as the employer of certain individuals," Pl.'s Opp., at 13, leaving only the links and advertisements.
Despite the plaintiff-friendly standard on a motion to dismiss, nothing precluded Judge Darrah from determining what the law requires. Trademark infringement and dilution must require something more than merely linking to a trademark owner's website (the relevance of unrelated advertisements is not clear, except perhaps to block a "noncommercial use" defense). None of the cases cited by the judge remotely suggest that linking alone can result in consumer confusion or blurring of the distinctiveness of a trademark owner's mark. For good reason, the proposition defies both reason and experience.
As a matter of policy, the decision is absurd. Deep linking is a ubiquitous feature of the web. Nearly every website and blog in existence relies extensively on linking. As Paul Levy wrote in September: "That is what web sites do – they link to other web sites (that’s what makes it a 'World Wide Web')." The court's decision exposes anyone who takes advantage of this basic feature of Internet communication to the prospect of substantial litigation costs.
If a defendant can't get a trademark claim thrown out on a motion to dismiss, then costly discovery looms, as well as the prospect of hiring an expert to testify to what everyone who actually uses the Internet already knows -- there's no chance that readers would perceive any affiliation or sponsorship just based on a link, or that linking diminishes a trademark's power to identify the trademark owner's goods or services. As Corynne McSherry at EFF aptly puts it:
[B]y allowing the case to go forward, the court has made BlockShopper's defense much more expensive, even if BlockShopper is confident (as it should be) that it will win in the end. Thus, the court has sent a signal to news sites and blogs everywhere: no matter what the Lanham Act says, if you link to a trademark owner's site, or use a mark in a headline or post, you'd better have a pretty decent legal budget.
What's more, this gives trademark owners tremendous leverage to silence unfavorable speech.
The court succeeded in ignoring all these pragmatic concerns by single-mindedly focusing on the procedural posture of the case, something done at the urging of Jones Day. See e.g., Pl. Opp., at 1 (arguing that the court should reject BlockShopper's argument that the relief sought "would radically overturn the long established and ubiquitous Internet practice of websites linking to other websites" because "Defendants have not established (and of course cannot do so in the course of a motion to dismiss) that there even is such a practice"); Pl.'s Opp. to Request for Judicial Notice, passim (arguing that court should not take judicial notice of the linking practices of the Chicago Tribune).
BlockShopper will have to fight this one out. We can only hope that other courts don't follow Judge Darrah in his deference to legal formality at the expense of common sense. For updates on the case, see our database entry, Jones Day v. BlockShopper LLC.