Copyright Law

Jones Day Gets Trademark Law Wrong, Squelches Legitimate Reporting

By Sam Bayard

Paul Alan Levy of Public Citizen published a fantastic post on Friday about big law firm Jones Day's lawsuit against BlockShopper.com, an online real estate news website covering Chicago, South Florida, Las Vegas, and St. Louis. The website reports on what's happening in the local real estate markets -- who's buying, who's selling, where, what price, etc.  It focuses on fancy neighborhoods where lawyers and other professionals frequently buy homes and often mentions the professional affiliations of the buyers and sellers.  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 (here and here).  Levy aptly characterizes the absurdity of Jones Day's claims:

According to Jones Day, linking to its web site dilutes its trademark and creates a likelihood of confusion.    But that is preposterous.  The link is in connection with a comment on Jones Day; when a trademark is used to comment on the trademark holder, the use reinforces the association with the trademark holder, rather than blurring it, and besides use for commentary is expressly protected as fair use under the Lanham Act as amended in 2006.  Moreover, nobody could visit the BlockShopper web site and think that it is sponsored by or affiliated with Jones Day, even if they follow the links from BlockShopper?s mention of Jones Day associates to Jones Day?s own web site.  That is what web sites do ? they link to other web sites (that?s what makes it a ?World Wide Web?).   

I would add that BlockShopper's use of the Jones Day trademark is a classic "nominative fair use."  Nominative fair use is a defense to a trademark lawsuit that protects one's ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. The courts treat it as a full defense to a trademark infringement claim, and 15 U.S.C. § 1125(c)(3)(A) makes it a full defense to a trademark dilution claim. For more information on ways you can use trademarks without violating trademark law, see our legal guide section on using the trademarks of others.

As Levy points out, BlockShopper apparently did use photographs taken from the Jones Day website.  This fact only suggests possible copyright infringement, unless you swallow Jones Day's horse pill of an argument that using the photos created the misperception that it is affiliated with or endorses BlockShopper.  Jones Day makes no copyright claim in its complaint.  

I am especially interested in this case because an anonymous user of our website notified us about it more than a week ago using our threat entry form.  You can find the database entry here. We've seen an uptick in user submissions recently. One of our readers also used the threat entry form to provide us with key documents relating to the Cape Cod blogger lawsuit, Dugas v. Robbins. I heartily encourage readers to keep us informed as new legal threats come up.

Full post as published by Citizen Media Law Project on September 15, 2008 (boomark / email).