Preposterous and a candidate for the ‘grossest abuse of trademark law to suppress speech the plaintiff doesn’t like,’ is how Public Citizen lawyer Paul Levy describes Jones Day’s lawsuit against an Internet site for mentioning the Jones Day name without permission.
The Cleveland Plain Dealer’s Alison Grant reports on the suit brought by the multi-national 2,300 lawyer firm:
The Cleveland-based firm claims BlockShopper.com violated trademark law by reporting that two Jones Day lawyers had bought condos in Chicago.
BlockShopper can’t use Jones Day’s name or link to its Web site because doing so suggests Jones Day is connected with BlockShopper’s business, the lawsuit argues.
BlockShopper, which I’ve started running into when doing searches for people on Google, is a service that uses public real estate data and information it culls from Google searches to write stories about the more affluent in our society buying and selling property.
The suit, reportedly alleges, among other things:
BlockShopper creates the false impression that Jones Day is affiliated with the real estate site. That use of Jones Day’s name ‘is likely to deceive and cause confusion and mistake among customers.’ That Jones Day’s mark is diluted, explained by Jacqueline Lipton of Case Western Reserve University School of Law, as a concept in intellectual property law that can mean a trademark has been ‘blurred … creating noise around a mark that lessens its ability to function.’
BlockShopper agreed to temporarily remove all references to Jones Day from its site and to stop linking to the firm’s Web pages, but rejected Jones Day’s offer to drop the claim if BlockShopper paid $10,000 and stopped writing about property transactions by Jones Day lawyers. Founder Brian Timpone told Grant:
It’s a First Amendment argument to suggest that we can’t link to Jones Day or can’t write about Jones Day without their permission. I know they’re a big international law firm. But this isn’t Beijing. This isn’t Moscow. This is the United States……The whole thing just leaves a bad taste in your mouth, that lawyers can just bully you and use their law degree in such a nefarious way.
Questioning both the trademark infringement and dilution claims, Lipton is right there with Levy:
It’s a bit of a stretch, to me the Web site looks like a newsy, journalistic thing……Jones Day is on shaky ground to sue over linking to its Web site. One of the beauties of the World Wide Web is that it allows you to link to almost everything.
Bloggers are also having a field day with Jones Day’s claims as evidenced by a Google Blog Search on Jones Day. Criticism includes:
- Jones Day Lawyers Apparently Don’t Know the Law from The Technology Liberation Front, a tech policy blog.
- Failing the The Laugh Test from the Mass Law Blog, published by the law firm of Gesmer Updegrove.
- Law Firm Out of Order from Online Media Daily, published by Media Post, a leading resource for marketing and advertising professionals.
- Abusing Trademark Law To Stop Website From Reporting Public Info from Techdirt, recognized for its top-notch analysis on technology and communications issues.
Real time conversation about the suit isn’t going any better for Jones Day. Here’s the Twitter discussion this morning:
I understand Jones Day’s desire to protect the privacy of its employees and acknowledge that I have neither read the pleadings nor am I privy to BlockShopper’s response to the law firm’s original demands before suit.
But when getting involved in Internet related matters, it’s wise for law firms to appreciate the negative PR bounce that may ensue.