Blockshopper Request to Dismiss Jones Day Lawsuit Denied
By Eric Goldman
2008 has been a banner year for ridiculous trademark claims, so picking the most ridiculous is a little tricky…but this lawsuit easily makes my top 3. As you may recall, Blockshopper reports on real estate transactions–in this case, purchases by two Jones Day associates. Blockshopper wrote about the purchases, referenced their employment with Jones Day, and deep-linked to the associates’ bios on the firm’s website. Jones Day is now suing Blockshopper for trademark infringement, dilution and more.
We all know this is a meritless lawsuit, but it’s not easy to pin down a single reason why. So let me try 4 obvious and non-exhaustive reasons:
1) I don’t see any way that Jones Day can show the requisite “use in commerce” for trademark infringement or dilution.
2) I don’t see any way that Jones Day can show any consumer confusion, either about the source of goods in the marketplace or about some implied sponsorship/endorsement. If Jones Day is trying to argue that consumers think deep-linking to another website means the linked website endorsed or sponsored the linking website, c’mon! Wendy Davis has more to say about this.
3) I don’t think Jones Day can establish the requisite fame to constitute a mark protected under the revised dilution law. They are not a household name, although more ridiculous lawsuits might change that (but paradoxically will not leave them a reputation that can be further denigrated).
4) I don’t see how the website reference and deep link could in any way constitute blurring or tarnishment of the mark under the revised dilution law.
With all of these obvious problems, this should be an easy defense win…right? Unfortunately, trademark law is so completely broken that it cannot clean up cases like this on a motion to dismiss when the plaintiff rotely alleges the elements of the claims, no matter if it can’t deliver on its allegations later on in the case. Jones Day certainly knows how to make the rote allegations in its complaint, so the judge refuses to dismiss the trademark infringement and dilution claims. (The judge does dismiss the individual entrepreneurs as defendants.) This is consistent with how some judges approach 12b6 motions, but other judges might have pressed Jones Day on the specifics of its allegations and how those allegations support its theories (as Sam Bayard and Corynne discuss), and yet other judges would have at least signaled their skepticism at the ultimate merits of the claims.
Also disconcerting is that the judge rejected the public interest groups’ amicus brief. I understand that trial judges typically are less interested in amicus briefs because they often don’t help interpret the facts, but in this case the judge needs to understand the possible social import of overexpansive trademark doctrines or even keeping meritless trademark cases past the 12b6 motion to dismiss. (For more about the broader social issues, see here).
Even if justice wasn’t served in this ruling and the court isn’t listening to some of the experts, let’s hope the judge gets to the right place soon. And because the court let the case go on further than it should have, I hope the court awards Blockshopper its attorneys fees–a power the court has in “exceptional” cases, which (in my opinion) this case certainly is.