Patent Baristas

Lighting up the law web pages these days is the lawsuit by the law firm Jones Day against BlockShopper LLC and two individuals associated with the website, for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates.  Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Jones Day also moved for a temporary restraining order (TRO), which the parties stipulated to, ordering defendants not to:

1. use Jones Day’s service mark;
2. use any content from or link to Jones Day’s website; or reference Jones Day in Blockshopper headlines.

BlockShopper.com is a web site that reports on real estate purchases in two upscale Chicago neighborhoods (as well as in Las Vegas, Palm Beach, and St. Louis).  It’s a little like the People Magazine of real estate web sites.  Postings generally appear something like:

Patent Lawyer Sells Condo in Metropolis

Jane Doe sold her two-bedroom, 2.1-bath condo at 123 Maple St. in Metropolis for $500,00 to John Smith.  Doe paid $10,000 for for it back in January 2005. Doe is a partner in the Metropolis office of West Coast law firm Reely, Big and Hat LLP. She specializes in intellectual property law for the firm, including patent litigation involved with the gardening arts. She joined the firm in 2006.

Apparently, in serving up info about purchases by Jones Day associates Dan Malone and Jacob Tiedt, BlockShopper used the name Jones Day to identify the employer of each of the two associates, and linked from each associate’s name to Jones Day’s web site. According to the complaint, the defendants used Jones Day’s name, posted information and pictures from the Jones Day web site and put links in the articles to the Jones Day web site.

Paul Alan Levy from Public Citizen describes the scenario thusly:

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”).

Blockshopper filed a motion to dismiss and public interest groups (Public Citizen and the Electronic Frontier Foundation) have filed an amicus brief in support of Blockshopper arguing that the trademark claims are barred by the First Amendment, which protects the right to publish truthful information even if the information is about a trademark holder and hence uses the trademark to convey the truth .

In response, Jones Day ups the ante by filing a response against the brief saying the judge should not consider the amicus brief because the groups are “partisan.” It also states that the groups should not be able to file the amicus brief because it doesn’t add anything beyond what the defendant has already filed– while simultaneously saying that the brief shouldn’t be allowed because it adds a new argument.

It is difficult to understand how such a well regarded, multi-national law firm could get caught up in such a no-win situation.  Unfortunately, Jones Day may have boxed themselves in.  It will be difficult to extract themselves from the suit without looking like they made a mistake getting into it in the first place even as they gain a growing body of negative press every day it continues.

(More at: Chicago IP Litigation Blog, Ambrogi, Legal Blog Watch, Citizen Media Law Project).