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Jones Day's 'Gross Abuse of Trademark Law'

Public Citizen lawyer Paul Alan Levy is winning praise from some corners of the blogosphere for his post at the Consumer Law & Policy Blog in which he says the lawsuit by law firm Jones Day against the Web site deserves a prize for "grossest abuse of trademark law to suppress speech the plaintiff doesn't like." We told you about this lawsuit in a post here on Sept. 4. Jones Day sued the Web site after it reported real estate sales involving two of its associates. The federal lawsuit alleged trademark infringement and unfair trade practices based on BlockShopper's use of the firm's services marks, links to its Web site and use of lawyers' photos from the site. Levy calls the lawsuit "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"). 

Levy adds that the firm's complaint about use of photos from its site also appears baseless, particularly given that the lawsuit includes no copyright claim. Levy goes on to deconstruct, one by one, other claims made by Jones day, concluding, "It thus appears that Jones Day is a serial abuser of the trademark laws to suppress commentary that it does not like."

Among the bloggers who heap praise on Levy's post are Sam Bayard at the Citizen Media Law Project ("Jones Day Gets Trademark Law Wrong, Squelches Legitimate Reporting") and Marc Randazza at The Legal Satyricon ("Jones Day - Big Law Firm, Small Ethics"). Randazza writes:

Jones Day seems to have taken leave of its ethics by filing this complaint. (link courtesy of CMLP) While they may not appreciate the fact that an independent real estate website is reporting on where their associates bought property, there is this pesky thing called the First Amendment. Those 45 words allow websites to publish truthful matters from the public record — even if a big law firm doesn't like it.

Even apart from the legal and ethical issues underpinning the lawsuit, what about PR? This seems like a classic example of the response causing more damage than the original injury. Did this mighty law firm truly believe that its name would be damaged by two news reports about associates' real-estate transactions? If so, did anyone there ever stop to think how much greater might be the damage to its name by making a federal case out of so trivial a matter? We'll keep watching to see how it all turns out.

Posted by Robert J. Ambrogi on September 16, 2008 at 12:35 PM | Permalink | Comments (6)


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