Here is a link to the decision of federal district court judge John W. Darrah (N.D. Ill.), denying the defendants motion to dismiss in the trademark suit brought by the Jones Day law firm against the web site Blockshopper.com, which reports on upscale residential real estate transactions in Chicago and other cities. I wrote about this case in some detail here. Jones Day’s assertion that a post on the site describing real estate purchases by two Jones Day attorneys could create confusion (and therefore constitute trademark infringement) has been widely ridiculed. The judge, however, disagreed. His decision is highly legalistic, and takes Jones Days’ allegations at face value, despite the fact that they are (in the opinion of many knowledgeable observers) implausible on their face (to put it mildly). Go figure.
USpeakWeType Technologies, LLC has done the trademark bar a big favor by creating a UDRP search engine. This is the first time we have had access to the enormous volume of material that has been decided in the UDRP arbitrations.
An example: assume that you are involved in an arbitration that has been assigned to panelist Ian Bradshaw. A search on his name shows that he has decided nine cases, involving brands as well known as Volvo and Chivas. He has ruled in favor of the complainant (either via tranfer or cancellation of the respondent’s domain) in every case. It would be nice to know this, wouldn’t it?
Did you ever wonder how many large companies register their own “sucks” domain names (as in “microsoftsucks.com” or “AIGsucks.com”) in order to prevent someone else from doing so? Like, some unfriendly nasty that wants to use the site to bash the company?
How many “CIOs” (“chief information officer,” for the uninitiated; don’t blame yourself if you didn’t know this), wish they had registered variations of their companies’ names before the “gripers” got ahold of them? Many, I suspect. Check out ebaysucks.com or alitaliasucks.com for example. Nasty stuff, for sure. Not good corporate publicity, for sure.
Bet the folks at eBay and Alitalia wish they’d grabbed these domain names before they were picked up by gripers. The cost of buying “ebaysucks.com” before someone else does is close to zero. It’s just a matter of anticipation.
Of course, its hard for companies to challenge the ownership of sites like these, since a clever owner can claim First Amendment protection as long as he or she doesn’t misstep and use the domain in a way that results in consumer confusion.
We often tell clients to buy up all the “surrounding” names for their domain of choice. The dot-COM, dot-ORG, dot-NET top level domains, and any offensive variations. Sometimes they do, sometimes they don’t. Occasionally, I’ve wondered how many of the large, Fortune 500-type U.S. companies create this kind of protection for themselves.
Well, it turns out that someone has actually done a detailed study on exactly this, and it turns out that the majority of large companies haven’t bothered to register offensive variations on their domain names ahead of their critics.
You can read the study here: The Power of Internet Gripe Sites.
Oddly, almost all of the companies that have had the foresight to do this have the “sucks” domain name resolve to their main site, which doesn’t make a lot of sense. The authors suggest that if a company does buy its own “brandsucks.com” site it should consider what Loews Theaters (now AMC) does, and take the user to a “guest satisfaction survey.” I disagree; I suggest that any company that owns such a site take the user to a page that looks like this:
[Update: Jones Days’ Opposition to Blockshopper’s Motion to Dismiss]
Blockshopper.com is one of many small web sites that have sprung up to follow local residential real estate markets. So far, the site highlights purchases in upscale neighborhoods in Chicago, St. Louis, South Florida and Las Vegas. The site identifies purchasers by name, street address of the property and the price paid. Of course, this information is available in local real estate publications (like Banker & Tradesman here in Boston) or at the local registry of deeds. Blockshopper also performs an Internet search on the person, and based on what it finds identifies the purchaser’s job title and employer. When it can, the site pulls a photo of the person from somewhere on the Internet (like the purchaser’s company site), and pastes it into the item. If the home purchaser has an online bio, the site will link to it.
Example: I saw on Blockshopper that Juan Luis Goujon had recently purchased a property in Chicago. I Googled “Juan Luis Goujon,” and the first hit I got was to Blockshopper, profiling the property, linking to Mr. Goujon’s company, and posting a photo of him from the site. Mr. Goujon is not a celebrity or a politician, and he may not be thrilled with this publicity (if anyone truly cares). However, the information regarding the address of the property, the purchase price, and Mr. Goujon’s job as an executive at a Chicago HR firm, are all public, factual information.
So, if you are Mr. Goujon, or any one of the many other real estate purchasers profiled by Blockshopper, just too bad, eh? In the age of almost unlimited information, factual, public information like this can be pulled together and posted on the Internet, right? So you would think, but not so fast.
Jones Day is one of the largest law firms in the U.S., with over 2,000 lawyers worldwide. That’s a heck of a lot of lawyers, no matter how you slice it. As many lawyers know, Jones Day is one of the premier law firms in the United States, respected by its clients and feared by its adversaries. These are not people to trifle with.
Blockshopper encountered Jones Day after Blockshopper profiled several Jones Day associates who had purchased real estate in Chicago. No big deal here – the properties were not exactly big ticket items, and you wouldn’t think that anyone would be very interested, with the possible exception of the attorneys’ friends and co-workers at Jones Day. And, as it often does, Blockshopper posted photos of the attorneys (from the Jones Day web site) and provided a link to their bios on the Jones Day site.
But Jones Day was very interested. It filed suit against Blockshopper in U.S. Federal District Court in Chicago. After reminding the court that Jones Day is “one of the world’s most famous law firms” (probably unnecessary), the complaint goes on to assert that:
- the photos of the associates were “proprietary.” (Recall: they can be viewed on Jones Day’s public web site).
- the references to Jones Day on Blockshopper were likely to cause “confusion and mistake” as to the source of the services provided on the site. In other words, people looking at Blockshopper could be misled to think that the site was affiliated with, or sponsored by, Jones Day. Accordingly, Jones Day claimed that Blockshopper was infringing Jones Day’s trademark rights.
Of course, these allegations (along with some others that I’ll skip over here) would seem to fail the laugh test. It challenges my imagination to think that anyone would conclude that the link to a couple of Jones Day associates on this site suggested that Jones Day had sponsored the site or was in some way associated with the site. After all, the World Wide Web is built on links – millions of them, if not billions. Everyone who uses the Internet for a few hours quickly realizes that a link does not mean that the “linked to” site has anything to do with the “linked from” site. And, the Blockshopper site links to hundreds of other purchasers, often with links to their web sites. Does Jones Day think that users of the site will conclude that the employers of those real estate purchasers are also sponsors of the site? (Interestingly, Blockshopper’s reported real estate purchases seem to involve a disproportionately large number of lawyers).
When you file a suit that doesn’t pass the laugh test, you attract unwanted attention, especially when you are “one of the world’s most famous law firms” and the suit threatens what many would consider First Amendment rights of expression. When it comes to the First Amendment, the Internet is very protective of its own.
And so, Jones Day’s lawsuit has attracted a great deal of attention. A Google search (“Jones Day” and Blockshopper) results in hundreds of hits, almost all (based on my quick survey) critical of Jones Day. The old expression is that “there’s no such thing as bad publicity,” but in this case, I have to wonder. On the other hand, the owners of Blockshopper must be drinking Dom Pérignon champagne and eating Beluga caviar – they could never have bought this much publicity for their site. I doubt that very many people in Chicago were even aware of the site. (Hey guys, when are you opening a Boston branch?).
It takes muscle to fight muscle, and the Electronic Frontier Foundation (the pre-eminent civil liberties group focused on digital media), has come to the rescue in Blockshopper’s defense. The EFF has filed a motion to dismiss the case which (in my opinion) makes mincemeat of Jones Day’s claims.
I expect a quick retreat by Jones Day. But, as a matter of principal, I think that Blockshopper (with the EFF’s encouragement and support) will demand that Jones Day drop its suit without terms. However, we’ll have to wait to see how this plays out; after all, Jones Day is not known to back down from a fight.
Nevertheless, I the lawyers at Jones Day who filed this case, and the associates whose real estate purchases led to the case, may be asking themselves, “what was I thinking”? And other lawyers at Jones Day may be wondering whether, after this is all over, their future real estate purchases will be targeted for special attention by Blockshopper.
Meta tags consist of words and phrases that are intended to describe the contents of a website. These descriptions are embedded within the website’s computer code. Although websites do not display their meta tags to visitors, Internet search engines utilize meta tags in various ways. First, when a computer user enters particular terms into an Internet search engine, the engine may rank a webpage that contains the search terms within its meta tags higher in the list of relevant results. Second, when a particular webpage is listed as a relevant search result, the search engine may use the meta tags to provide the searcher a brief description of the web page.
Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1045 (9th Cir. 1999
The First Circuit has affirmed a finding of trademark infringement based on the defendant’s use of meta tags to attract potential customers of the plaintiff using search engines to find the plaintiff’s web site. The case is Venture Tape v. McGill tried in U.S. District Court by Judge Morris E. Lasker. The defendant’s actions were described as follows by the First Circuit:
The record contains numerous admissions that meta tags and invisible background text on [defendant’s] website incorporated [plaintiff’s] exact marks. … [Defendant] even admitted that he intentionally used [plaintiff’s] marks for the express purpose of attracting customers …
The background text used by the defendant was “white lettering on a white background screen,” sort of a “poor man’s” meta tag.
If you don’t know what meta tags are, go to any web page, and in your browser click VIEW/PAGE SOURCE (or similar terms, depending on your browser). You’ll see the HTML code for the page, and you’ll see the meta elements in the head section of the document. As best I can recall (and determine, based on a quick Westlaw search), this is the first time the First Circuit has ruled on whether the use of meta tags can give rise to trademark infringement. There are technical and legal arguments that can be made against this conclusion, but they were not discussed by the First Circuit. In fact, the First Circuit appeared to assume that the use of meta tags constituted a violation of the Lanham Act, so long as the traditional criteria for trademark infringement were satisfied.
The 11th Circuit gave the meta tag/Lanham Act issue a much more exhaustive treatment earlier this year in North American Medical v. Axiom Worldwide, but still found liability based on the defendants’ placement of meta tags. However, not all courts agree; for cases where liability was not found, see Standard Process, Inc. v. Banks, (E.D. Wis. April 2008); Site Pro-1, Inc. v. Better Metal, (E.D.N.Y. May 2007) and S & L Vitamins, Inc. v. Australian Gold, Inc., (E.D.N.Y. Sept. 2007). For an in depth treatment of this issue see the 2005 Santa Clara Law Review article by Professor Eric Goldman, Deregulating Relevancy in Internet Trademark Law.
"In case you aren't aware of this, MANY (over 60%) of the "100% guaranteed authentic" items you see on Ebay are 100% FAKE!"
“In case you aren’t aware of this, MANY (over 60%) of the “100% guaranteed authentic” items you see on Ebay are 100% FAKE! Replicas are sold all over the internet so they end up on Ebay. This guide is to show you some more information on the counterfeit situation and how easily these replicas are being purchased.” Warning on eBay website. [link]
Yesterday’s New York U.S. Disrict Court decision exonerating eBay for trademark infringement based on the sale of counterfeit Tiffany products on its auction site is receiving a great deal of attention in legal (and particularly trademark law) circles. The decision is quite extensive, and will be of enormous interest to lawyers (and their clients) who deal with the problem of user-caused online trademark infringement. For a thoughtful discussion of the case I recommend Professor Eric Goldman’s discussion on his Technology and Marketing Law Blog. And watch for the appeal to the Second Circuit (the most influential trademark circuit), which I predict is a lead-pipe cinch.
Of course, when it comes to eBay and Google, when one case ends another begins. In early July Rosetta Stone, the foreign language software-based learning company, sued several companies it accuses of “piggybacking”: paying Google to have their ads appear when someone uses Google to search for Rosetta Stone. Think, consumer searches Hertz car rentals, and along with Hertz sees paid ads for Thrifty, Enterprise or Dollar rentals. These companies are “piggybacking” on Hertz’s good will by associating their ads with searches of Rosetta Stone. Is this illegal? The piggybacking ssue is still working its way through the court, and is presently is pending before the Second Circuit in Rescuecom v. Google.
Trademarks are meant to identify the source of products and services.
Do you get confused between Coca Cola and Pepsi Cola? Between Payless Shoes and Comfort Shoes? Between Domino’s Pizza and Papa John’s Pizza? Probably not. “Cola,” “shoes” and “pizza” are what trademark law classifies as “generic” terms – they describe the product, not its source or origin. If someone started selling a drink called “Rockstar Cola,” Coke and Pepsi would have no legal grounds for objection. The “cola” part of their trademarks are generic, and in a trademark infringement suit a court’s focus would be on the first word in the trademark, “Rockstar.” On the other hand, if someone started selling Koka Cola or Popsi Cola, the lawyers for Coke or Pepsi would be working overtime to prepare their lawsuit.
Now let me ask you a question that might be part of a “trademark survey” – a survey designed to determine how strong a trademark is, whether two trademarks are confusing, or whether a trademark is generic:
What do you call a sightseeing tour that uses an amphibious vehicle to transport tourists on land and water?
What other names, if any, do you use to refer to this type of sightseeing tour?
Did you answer “duck tour” to the first question and “don’t know” to the second? If you did you went right to the heart of the First Circuit Court of Appeals’ decision in Boston Duck Tours v. Super Duck Tours. And, you did very quickly what it took two federal courts almost a year and 85 pages of turgid legal prose to do.
The issue in this case (linked at the bottom of this post) was straightforward: Did Super Duck Tours infringe the trademark of Boston Duck Tours by offering duck tours in Boston? U.S. District Judge Nathan Gorton concluded that it did, and issued a preliminary injunction in July 2007, ordering Super Duck Tours to stop using this name.
Last month the First Circuit reversed, holding that the term “duck tours” is generic (it describes the service, not the source of the service). A “duck tour,” the First Circuit concluded, is generic for amphibious, sightseeing tours. Consumers were unlik ely to focus on the generic “duck tour” part of the overall mark (any more than they would focus on “cola” in comparing Coca Cola and Pepsi Cola), and instead use “Boston” and “Super” to differentiate between the two marks at issue. In reaching this conclusion the First Circuit noted that the media often used “duck tours” to refer to amphibious sightseeing tours; that “duck tours” was used by many other companies around the country that provide the same or similar services; and that Boston Duck had used the term “duck tours” generically in its own marketing literature.
There’s a great deal more to the First Circuit’s decision in this case. In fact, the opinion is likely to be an important guide to the application of trademark law in the First Circuit Court of Appeals for many years. And, I’ll resist the temptation to make duck jokes about this case, as so many lawyers and commentators have done already; none of them can touch the Marx Brothers.
So, anyone up for an amphibious sightseeing tour?
What does it mean when a contract requires that notice be given “in hand”? Believe it or not, despite over 225 years of Massachusetts jurisprudence, until now no Massachusetts court had ever considered this question. In McMann v. McGowan, 17 Mass. App. Ct. 513 (2008), decided on April 7, 2008, the Appeals Court held that “in hand” means delivery into the hand of an authorized receipient. The Court rejected the argument that “in hand” includes delivery by hand, the position argued by the losing party. Of such things the law is built.
Everyone knows that false or deceptive advertising is illegal, but a recent decision by Superior Court Judge Thayer Fremont-Smith provides a reminder of how difficult it is for a competitor allegedly harmed by false advertising to prove actual harm and damages, except in the rare case where there are only two firms in the market. Where there are more than two competitors, as Judge Fremont-Smith points out, “it cannot confidently be inferred that any customers procured by defendants’s false advertising were at plaintiffs’ expense.” While not dismissing the case outright, recovering any damages looks like a steep uphill fight for the plaintiff in this case. IDT Telecom v. Voice Distributors, Middlesex Superior Court, April 11, 2008.
Lawyers love to have cases on the “cutting edge” – they thirst for it in law school, and brag about it when they get into practice. No law, no precedents, difficult issues? Bring it on! they say.
Clients, of course, feel exactly the opposite – no law, no precedents, no predictability? How is that possible?, they complain.
For the last few years Internet search engines have repeatedly found themselves astride this proverbial cutting edge. One of the “issues de jour” faced by the search industry is the sale of advertising triggered by trademarks owned by a competitor. Is it a violation of trademark law for Nissan to pay Google to have ads for Nissan appear when you search for Ford? (The last time I checked this actually occurred).
In evaluating legal challenges to this practice courts have focused on a somewhat narrow legal issue: is a search company’s sale of a company’s trademark as a keyword triggering third-party advertising “trademark use”? The answer to this question is critical because “trademark use” could give rise to legal claims, while its absence precludes them. This issue has confounded the courts, as several recent cases, summarized below, illustrate:
- In the recent case of 800-JR Cigar, Inc. v. Goto.com, Inc. the District Court of New Jersey ruled that Goto did make “trademark use” of JR’s “JR Cigar” trademark and allowed its claims for trademark infringement and dilution to proceed. Specifically, the Court held that Goto’s pay for priority search engine results made “trademark use” of JR’s marks in three ways: by selling the right to display competitive advertising in response to searches for JR’s trademarks, by ranking the paid competitors’ advertising ahead of the “natural” search results for JR’s marks, and through Goto’s “Search Term Suggestion Tool” which identified “JR Cigar” and JR’s other marks as effective search words and marketed them to competitors. In support of its holding, the Court relied on several decisions from other jurisdictions including the Eastern District of Virginia case of Government Employees Insurance Co. v. Google, Inc. and the Ninth Circuit decision in Playboy Enterprises, Inc. v. Netscape Commc’n Corp., both of which reached the same result with respect to “trademark use.”
- In another recently decided case involving similar facts, the Northern District of New York reached the opposition conclusion in Rescuecom Corp. v. Google, Inc. Here, the Court granted Google’s motion to dismiss Rescuecom’s trademark claims because Rescuecom could not show actionable “trademark use.” The Court made this finding after analyzing two of Google’s advertising practices: its use of the plaintiff’s “Rescuecom” trademark as a keyword initiating competitors’ advertising for a fee, and its “Keyword Suggestion Tool” that recommends to potential advertisers which keywords, including plaintiff’s mark, will yield the best results. Ultimately, the Court found that Google did not use Rescuecom’s mark in connection with any goods or services, a legal requirement for trademark claims, since Google’s use of the “Rescuecom” mark was strictly internal to Google’s computer systems and not displayed by Google in connection with its advertising practices. As support for its conclusion the Rescuecom Court relied on the Southern District of New York case of Merck & Co. Inc. v. Mediplan Health Consulting, Inc. and the Second Circuit decision in 1-800 Contacts v. WhenU.com, Inc.
Eventually, of course, a consensus opinion on this issue will emerge and this particular “cutting edge” of trademark law will become a thing of the past. Until then, companies that use search engine key word advertising (or whose competitors do so) need to remain aware of this issue.
I’ve been meaning to post some statistics reported by Price Waterhouse Coopers at the MCLE 9th Annual Intellectual Property Conference earlier this year. PWC has done a rigorous study of patent and trademark cases in the Federal District Courts and at the Court of Appeals for the Federal Circuit (CAFC) over the last 25 years. A few highlights and trends:
- In 2005, 4% of patent cases and 1.5% of trademark cases went through trial. (Presumably the balance were resolved via settlement or summary judgment).
- Juries award more damages in patent cases than bench trials. On the other hand, bench trials are more popular in trademark cases.
- The CAFC is a tough court: only 30% of damage awards are affirmed by the CAFC.
- Patent damage awards far exceed trademark damage awards.
- Patent awards’ fastest growth has been in the computer business services and electronics components sectors.
- Reasonable royalties (rather than lost profits) has become the most frequent measure of damages awarded in patent cases. (This may reflect the fact that more plaintiffs are nonpracticing inventors (sometimes referred to as “patent trolls“).
Trademark. What do you do when someone sets up a web site almost identical to yours, but you can’t find the owner of the site in order to sue them?
This was the problem faced by American Girl , which sells wholesome girls dolls, clothing and books targeted at pre-adolescent girls, when it discovered that someone was publishing pornography on www.amercangirl.com. (Note the missing letter).
American Girl sued the registrar and “John Doe” (legalese for, “I’ll name you when I identify you”) but was rebuffed by a Federal District Court Judge in Wisconsin, who held that a John Doe suit was inappropriate in these circumstances. However, this judge really did his homework, and the decision is an excellent road map on how to go about obtaining an injunction under these circumstances, including remedies such as an in rem action against Verisign under the ACPA or arbitration under the UDRP. The decision also provides an excellent summary of the domain name system and the laws that regulate it.
Read the full decision here.
p.s. Rest easy parents. www.amercangirl.com now links to the American Girl site.
Office Depot, the office supply giant, has filed a lawsuit against arch rival Staples in U.S. District Court in West Palm Beach, Florida. Office Depot’s complaint alleges that Staples has engaged in trademark infringement, unfair competition, false advertising, and deceptive trade practices by buying VIKING, a trademark owned by one of Office Depot’s subsidiaries, as an advertising keyword from Google. Google has successfully defended its right to use third party trademarks in its keyword advertising program in a number of recent suits, including the recent GEICO v. Google case that we first discussed here, and reported settled here, but this is the first time that a trademark owner has bypassed Google and gone directly after the company actually buying the keywords.
Assuming this case doesn’t settle, we expect that Staples ultimately will prevail, as keyword advertising on the Internet these days is analogous to the completely legal practice of Burger King putting up a billboard next to a McDonald’s in the brick-and-mortar world. However, at the present time a search of VIKING does not return a paid advertisement for Staples, suggesting that Staples may be negotiating a settlement with Office Depot, or is attempting to mitigate future damages.