Over at the Consumer Law & Policy Blog, Paul Alan Levy of Public Citizen has an excellent post on the recent settlement of Jones Day's trademark lawsuit against real estate news site BlockShopper.com. In the lawsuit, Jones Day alleged that BlockShopper infringed and/or diluted its trademark by using the name "Jones Day" to identify two of its associates who purchased homes in Chicago and by using anchor text in hyperlinks from each associate's name back to their lawyer bios on Jones Day's own website (here, here). According to Jones Day, this created a likelihood of consumer confusion about whether it was the sponsor of or affiliated with the BlockShopper web site. (For details on the case and links to the underlying court documents, see our database entry, Jones Day v. BlockShopper LLC.)
I've said it before and I'll say it again -- this is a terrible argument. As one blogger puts it, BlockShopper did "nothing more than follow standard Web linking procedure that practically every website on earth follows," and no reasonable consumer with any experience with the Internet could possibly be confused by this practice. I am not alone in this view. In an early post, Levy characterized the lawsuit as a "new entry in the contest for 'grossest abuse of trademark law to suppress speech the plaintiff doesn't like,' " and no shortage of lawyers and academics agreed in this assessment (e.g., Goldman and Randazza). Of course, Judge Darrah of the federal district court in Illinois didn't see it this way, and his refusal to dismiss the case on BlockShopper's motion to dismiss set the stage for the settlement.
Although Blockshopper had originally vowed to fight on to the
end of the case to prove its point, one can certainly appreciate its
need to make a business decision and surrender its claim to an award of
attorney fees against Jones Day for the abusive litigation. In the
end, the warning delivered by Judge Darrah to Blockshopper at the
outset of the case—Jones Day is just too big a law firm that you cannot
afford to fight in litigation—became a self-fulfilling prophecy
because, as Blockshopper began to contemplate the outcome of a summary
judgment motion, it knew that it would have to get a ruling on that
motion from a judge who seemed to be intent on forcing a settlement.
It would be interesting to learn whether Judge Darrah is gratified by
that fact. (Levy)
So what did Jones Day get out of the settlement? Not much actually. BlockShopper agreed not to use "embedded links" back to the law firm's website. Thus, as Wendy Davis explains in her insightful Slate article: "instead of posting 'Tiedt is an associate,' the site will write 'Tiedt (http://www.jonesday.com/jtiedt/) is an associate.'" Essentially, Jones Day weathered a PR nightmare just to force BlockShopper to use a clunky, aesthetically displeasing linking style -- woo hoo. Nothing in the agreement stops BlockShopper from reporting on the home purchases of firm lawyers:
Although its apparent objective was to make it more difficult for
Blockshopper to refer effectively to Jones Day associates in connection
with its reporting of the real estate purchases – reportedly, the real
concern was over its associates’ privacy – Blockshopper remains able
to carry such reports and, indeed, it seems likely that Blockshopper
will exercise that right more diligently by reporting on Jones Day
personnel whenever it can. (Levy)
On the other hand, Levy points out that, in some ways, Jones Day "achieved a great deal." It sent a message to other websites that "it is not a firm to be trifled with, and that, when Jones Day 'asks' you to do something, you had better do it or you are going to have to spend hundreds of thousands of dollars to defend yourselves." Beyond Jones Day itself, it is important to remember that the settlement has no formal precedential value whatsoever -- no future plaintiff can invoke this case in a lawsuit against another website for using embedded links. But, the settlement does establish a type of informal precedent that could have significant negative consequences for web discourse. As Wendy Davis writes:
Consider what it would mean for Web publishers if lots of other
companies decided to demand a say over how other sites linked to them.
Jones Day wants URLs used as anchor text, but it's not hard to imagine
that another company would want something else—a name or a description,
for instance. Web sites could then be forced to use different linking
protocols for every company they write about. Not only would they lose
control over stylistic decisions, but accommodating a variety of
individual requests could prove clunky and labor intensive, which also
means expensive. (Davis)
Levy, for one, is not taking this sitting down. His post ends with a call to Internet users to fight back against Jones Day "by repeatedly deep-linking from its name, and to its web site, in precisely the ways to which it objects." I hope that Paul is right that, faced with provocation on a massive scale, Jones Day would have to accept the ultimate weakness of its trademark claim and stop its bullying. But, Judge Darrah's ruling upholding Jones Day's complaint on BlockShopper's motion to dismiss worries me. Is it an aberration or just a possible take on poorly developed law? Like Robert Ambrogi, who queries whether the law is as clear as Levy would like it to be, I fear that trademark law itself may be lagging behind the pervasive technological and cultural practice of the day. That said, one of the beauties of a common law legal system is that it can adapt.