The settlement of a law firm's trademark infringement suit against a real estate news website is the chilling result of a case which should never have been brought -– and which a Chicago judge should have dismissed on the pleadings.
BlockShopper.com agreed to the settlement Jan. 30 because it had already spent more than $100,000 defending itself from Jones Day's absurd attack on the practice of one website hyperlinking to another which is the very lifeblood of Internet news.
“They had no shot at winning, but they were going to bleed us dry,” BlockShopper co-founder Brian Timpone told the Cleveland Plain-Dealer.
Under the settlement, the site will no longer use embedded hyperlinks to attorney profile pages on the Jones Day site. Instead of, for example, saying, "Daniel P. Malone is an associate in the Chicago office of Jones Day," BlockShopper must write, “Malone (www.jonesday.com/dpmalone) is an associate ...”
Jones Day alleged in its suit that BlockShopper infringed on its marks in two articles about the real estate purchases of two of its lawyers –- Malone and Jacob C. Tiedt –- that included embedded links to their profile pages.
“Use of the Jones Day Marks, the links to the Jones Day web site and the use of proprietary information from the Jones Day web site creates the false impression that Jones Day is affiliated with and/or approves, sponsors or endorses the business conducted by the Defendants,” the complaint said.
Jones Day claimed to be protecting marks “that have become very valuable assets and are famous,” but it probably wasn't too thrilled about having its employees' home-buying activities made public. Tiedt, also an associate with the firm in Chicago, spent $760,000 on his digs, while Malone forked out a relatively meager $463,000.
BlockShopper argued in a motion to dismiss that its use of the marks fell under exceptions to the Lanham Act which apply to a fair use and news reporting. Jones Day, it said, “offers nothing to support its incredible theory that readers will believe BlockShopper's news is associated with Jones Day alone, out of the dozens of employers referenced on the site.”
But even more incredibly, U.S. District Judge John W. Darrah denied the motion in November. Rather than analyze whether Jones Day's alleged facts actually stated a cause of action, he took the easy way out and found that “It cannot be said, at this pleadings stage, that Jones Day's allegations of confusion are implausible.”
As the Citizen Media Law Project said, “Deep linking is a ubiquitous feature of the web” and Darrah's decision “exposes anyone who takes advantage of this basic feature of Internet communication to the prospect of substantial litigation costs.”
Those costs forced BlockShopper –- a David to the 2,300-attorney Goliath of Jones Day -- into a settlement that seems every bit as absurd as the lawsuit. If the embedded links created a false impression of affiliation with Jones Day, why should spelling out the link to a Jones Day lawyer's profile page make any difference?
“But in a larger sense,” Wendy Davis observes on Slate, the case has given Jones Day “control over how an online publisher builds hyperlinks.” And even more chillingly, it provides a template for other companies to allege trademark infringement against publishers for embedding links to their sites in articles they find objectionable.
By Matthew Heller
2/17/09 
