Google and Yahoo Sued for Hosting Content That Allegedly Infringes Trademarks–(ISC)2 v. Degraphenreed
By Eric Goldman
International Information Systems Security Certifications Consortium v. Degraphenreed, 2:07 CV 1195 (S.D. Ohio complaint filed Nov. 16, 2007)
International Information Systems Security Certifications Consortium (“ISC2″) offers a professional designation entitled “Certified Information Systems Security Professional,” or “CISSP” for short, that individuals can earn by meeting the published requirements. The Consortium has a federally registered certification mark (#2045256) for the term “CISSP.” The complaint alleges that Degraphenreed was once a registered Certified Information Systems Security Professional but he failed to satisfy the continuing standards. As a result, the complaint alleges that Degraphenreed now describes himself as a “Chief Information Security Systems Practitioner,” also abbreviated as “CISSP,” thereby continuing to claim CISSP status without meeting the ISC2’s standards.
These allegations appear to support trademark infringement and false advertising claims, although interestingly I can’t find any examples of Degraphenreed’s usage of the term “Chief Information Security Systems Practitioner.” (I got zero results in both Google and Yahoo searching for the term “Chief Information Security Systems Practitioner.”). ISC2 also alleged trademark dilution but that should be a non-starter because I doubt CISSP will qualify as widely recognized among the general consuming public.
The most interesting aspect of this case is that ISC2 also sued Google and Yahoo for trademark infringement for hosting content that contained Degraphenreed’s impermissible CISSP usage. Specifically, the complaint alleges that Google hosted six blogs that contained the CISSP mark (at least 2 of which contained the term in the blog title), and that Google refused to take down these blogs after the plaintiff’s notice. The complaint also alleges that Yahoo hosted 5 Yahoo Groups referencing CISSP and a Flickr account containing ISC2’s CISSP logo, and that after plaintiff’s notice Yahoo only removed one group and left everything else up. The complaint claims direct (not contributory) trademark based on these allegations.
From my outsider’s perspective, it looks like a significant tactical error to bring Google and Yahoo into this lawsuit for at least four reasons:
1) The plaintiff’s theories of trademark liability against Google and Yahoo are untested and lack any useful precedent. In fact, to date we really don’t have an exemplar lawsuit discussing the liability of a service provider for hosting trademark-infringing content, and I can’t think of a case where a service provider has been held liable a trademark infringer for hosting user content. This claim reminds me a little of the Jews for Jesus v. Google Blogspot lawsuit from Dec. 2005 (which ultimately settled irresolutely), where Jews for Jesus complained about a third level domain/blog title selected by a blog user. When that lawsuit was filed, I speculated about some of the possible theories of liability and defenses, but the law was murky at best. So in this case, suing Google and Yahoo makes a relatively straightforward case much more complex and expensive.
2) Often, individual defendants in these types of cases don’t hire top-flight IP defense lawyers….but Google and Yahoo most assuredly will. As a result, ISC2 has ensured that some very skilled attorneys will line up on the defense to break every aspect of its case.
3) I couldn’t investigate everything, but what I saw of Degraphenreed’s activities on Google and Yahoo didn’t look immediately problematic. For example, some of the blogs really lack any substance at all (see, e.g., here), but they don’t look like splogs. If anything, it looked like ISC2 may be trying to shut down some griping. For example, two of the Yahoo groups are entitled “cissp-clueless” and “cissp-censorship,” and the cissp-censorship group is a restricted access group with only three members. It’s not clear how this group could possibly contribute to a trademark infringement claim. Instead, it looks like ISC2 might be overreaching, perhaps to shut down some unwanted commentary, and this may increase the judge’s sensitivities to the public interests at stake here.
4) The plaintiff can get all of the relief it needs just by suing Degraphenreed. If the plaintiff wins that lawsuit, they can get an order forcing Degraphenreed to remove the infringing material. Further, I imagine that Google and Yahoo would happily take down any content that a court has adjudged infringing.
Please email me if you have any thoughts about why ISC2 decided to go after Google and Yahoo (let me know if I can post your comments). For now, I’m classifying it as a blunder. It will be interesting to see how aggressively Google and Yahoo respond to this lawsuit.
UPDATE: I’ve posted some updates here.