In August 2008, the law firm of Jones Day brought a trademark infringement action against BlockShopper.com, a real estate news website, for linking to the bios of two attorneys on the Jones Day website. Jones Day’s legal theory was that BlockShopper's linking would trick readers into thinking that Jones Day was affiliated with BlockShopper. In late January, BlockShopper settled with Jones Day, and the suit was later dismissed.
BlockShopper had originally vowed to fight on to the end of the case, and many legal experts agree that had the case gone to trial, BlockShopper most likely would have won. It is questionable whether the Jones Day’s lawsuit had any merit. For Jones Day’s linking claim to be actionable, BlockShopper’s linking would have to had created a likelihood of confusion, mistake or deception as to the affiliation, connection or association of BlockShopper with Jones Day, or as to the origin, sponsorship or approval of Jones Day’s services by BlockShopper. However, most would agree that BlockShopper’s allegedly infringing links were not unusual. 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.” BlockShopper’s only error was in crossing a 2,300 attorney strong law firm that as Judge Darrah described to BlockShopper at the outset of the case, is just too big a law firm that you cannot afford to fight in litigation.
Without question, BlockShopper settled purely as a business decision. Surveys by the AIPLA have consistently found that trademark cases typically cost hundreds of thousands of dollars just to reach the summary judgment stage. In all likelihood, BlockShopper probably spent $110,000 just to reach settlement, and was potentially facing expenses in the neighborhood of $300,000 to $400,000 to make it through trial.
What did Jones Day get out of this? Hard to say. BlockShopper essentially agreed not to use embedded links to the law firm's website. However, BlockShopper was still permitted to post the actual URLs. BlockShopper reportedly offered to settle on these same terms at the outset of the litigation, but Jones Day persisted in several months’ worth of litigation only to accept the original settlement proposal. If anything, one blogger characterized this case as a "new entry in the contest for grossest abuse of trademark law to suppress speech the plaintiff doesn't like.”
Allen M. Lee Mr. Lee’s practice focuses on business, corporate and intellectual property matters, including the creation, protection and exploitation of intellectual property assets. He counsels clients on business formation, general corporate matters, trademark, copyright, trade secret, patent, licensing, internet and domain name issues, among other things. For more information contact: Allen M. Lee, a Professional Law Corporation, Tel: (650) 254-0758, Fax: (650) 967-1851, Email: allen@allenmlee.com, Internet: www.allenmlee.com.
Subscribe