Here's Jones Day's claim in a nutshell:
The first link below is trademark infringement, says Jones Day, because it confuses people by implying that the lawyer in question is affiliated with (in this example) Consumerist.com. The second link is only acceptable because it visibly displays the full url as the link.
Patrick F. McCartan
http://www.jonesday.com/pmccartan/
So, how did a law firm ever get such an absurd claim far enough to force a settlement? They had a judge who has apparently spent the last 15 years avoiding the Internet, and who therefore doesn't understand that the first example has been so common for so long that only someone who has never used the Internet (ahem) could possibly be expected to misunderstand the connection. He refused to dismiss the case, and rejected an amicus brief from digital rights groups on behalf of the start-up. The smaller company couldn't afford an expensive court case and saw the writing on the wall, so they settled. Now they format their links the way Jones Day demands.
Slate, who covered the story last week, writes,
Trademark infringement is supposed to turn on consumer confusion. For instance, if you set up a roadside coffee stand, sell instant coffee, and market yourself as a Starbucks outpost, you're probably infringing on Starbucks' trademark by tricking people into thinking that you're the company.
The idea that readers of a real estate news site would somehow be confused by links to Jones Day, on the other hand, shouldn't have passed the straight-face test. One legal blogger proposed that the attorneys who brought the suit take ethics classes. Paul Alan Levy of Public Citizen described the lawsuit as a "new entry in the contest for 'grossest abuse of trademark law to suppress speech the plaintiff doesn't like.'"
What makes this case particularly nasty is that a large company successfully forced its will on another company based solely on a specious claim of trademark infringement. The next step for an ambitious company, of course, is to demand further control over how a site links to its content. After all, if you can get a judge who doesn't seem to understand the concept of hyperlinking, who knows what you can get away with under the guise of trademark infringement.
"Linked Out" [Slate] (Thanks to Sandra!)
(Photo: Brymo)
However, no one should be surprised at the behavior of Jones Day. After all, they also list Wachovia, Merrill Lynch, Lehman Brothers, Morgan Stanley Realty and the Royal Bank of Scotland as clients. That's right, not only did they represent Wachovia as it was doling out billions of dollars of subprime mortgages, they also represented the guys who were securitizing these toxic assets. Nice due diligence guys.
In fact, Jones Day noted in a recent press release that last year, as the housing market was imploding, they were still the #8 legal advisor (by deal size and number of issues) to issuers of mortgage-backed securities! Don't worry, even though that business has collapsed, Jones Day will be okay. Did I mention they also represent RE/MAX International, which specializes in foreclosed properties?
Stay classy Jones Day.
]]>#1 Jones Day does not have a trademark!!
#2 Pat's name is not a trademark.
#3 You can't claim infringement on a trademark you haven't filed.
#4 This would be an issue of servicemark not trademark because they don't sell a product they sell a service. Therefor the lawsuit should not have even made it to court.
#5 Unless a party uses a tradmark for commercial gain or defamation it will not be considered infringement. There is nothing illegal about putting up an article link if it's not directly associated with gaining something for your company.
They would have had a slight case if the link had been named their law firm, but they don't have a trademark anyway so this falls under free speech. They are apparently very good at making BS up to win, not facts to hold up their case. The only way they could have made this claim stick is if their name had been under trademark and listed as a plain character mark. Otherwise, this case had no grounding and I would have filed in a higher court with a judge who actually understands trademarks and the Internet. This only limits freedom on the Internet and is a step in the direction of Internet regulation.
]]>This post brought to you by Patrick F. McCartan, litigious douchenozzle. douchenozzle.
]]>LOL good one! or send them to Pr0n .com or other insidious destination.
]]>Although I in no way condone frivolous lawsuits, and this is one of them, I do believe they were wrong to link to that page. I see no problem linking to his facebook or myspace page, his personal page as apposed to his professional page. He bought the house as a person, not as the lawyer. Devil's advocate also, what's the motiviation for the link, free advertising? Look who we sold to, this big time lawyer! Just wondering.
]]>*just a note: I know that I did defend Monster Cables in previous posts, but that was due to bad education of myself (I had 1 day of trademark law experience :-\ ) the members of this site have re-educated me in this regard. What I mean by tiniest is that at least when Monster sues for trademark infringement the people they are suing have Monster in their name. Its not justifiable in these cases but at least there's something there. In this case I feel as though the settlement would cause more confusion than was there before.
]]>The small business didn't have much money to fight a lawsuit, so they pulled out their trump card: dismiss the case because it has no merit whatsoever.
The moron judge said: I don't have the time or intellectual capacity to understand all this hypertext mumbo jumbo, I want to hear this in court.
Since their trump card fell through they couldn't afford to fight the firm in court so they settled which means that they pay off the law firm to drop the charges and the judge didn't have to learn anything about the intar-webs.
]]>This is a poor decision at best. I would prefer not linking to you or mentioning your firm if it means you will harass me. See SCO v. IBM for details.
]]>I was found by your scientists in a block of ice and thawed out. Your electronic devices enrage and frighten me. I don't know much about internets, we didn't have web sites back in the ice age, I wouldn't know a URL if I stepped on one... but I do know this- when a companies trademark is infringed upon, they are due damages and have the right to settle in a court of law.
]]>Can the defendant maybe stop linking to Jones Day entirely? Why feed 'em traffic and potential business after all this?
]]>Oh, is this like all those old school chopper shops that Harley Davidson sued to remove the word "Hog" from their names?
These were shops which had been operating since before the early 1980's self-manufactured "biker gang" called Harley Owners Group (H.O.G.) was trademarked by Harley Davidson Inc. Harley went and basically sued anyone using the word "HOG" in reference to motorcycles. No matter that the term was created by popular culture due to the craptastic oil leaking qualities of years of Harley Davidson (and Indian) motorcycles.
The whole Harley copyright saga is a good course on how the marketing realized that there was more money in Harley branded crap than the actual motorcycles. And how they drew back in their copyrights/trademarks was nothing but incredible as some had become almost public domain. Little known also is that Harley Davidson even tried to copyright the engine sound of the specific angle V-Twin engines that they use. The court(s) finally tossed that one out... Similar is Peterbilt Trucks for re-assertion of trademarks/copyrights.
]]>Headline: "CLUELESS LAWFIRM HAS A JONES FOR A DAY IN COURT"
Xerox could have sued the pants off thousands of companies and millions of people for using the word "xerox" as a synonym of "copy", but they never did. They at least had the brains to see that being talked about in a positive way is better than not being talked about in any way.
]]>the legal firm should be BURNED to the ground for such abuse of the legal system.
]]>o.O Are you serious?! How far with that mindboggling argument did they get before the Judge had to request a recess because they were laughing too hard?
*shakes head* I guess if you throw enough eggs while walking through an empty field, sooner or later you're bound to hit someone and find it wasn't so empty after all.
]]>Even if there had been a ruling, it would have been in federal district court and would have had very little precedential effect in that district and no precedential effect outside of that distric. It would have just been an anomoly in the woods (and overturned on appeal)
]]>@ARP: I've seen two, one of which was super-egregious, the lawyer tried to argue that underage drinking was protected by the civil rights amendments and that these dumb-shit kids who got a plethora of chances were being discriminated against like Rosa Parks was discriminated against. It was pretty insane.
]]>The judge's ignorance aside, there was no ruling. As the article very clearly states, the start-up decided to settle because they couldn't afford a lengthy lawsuit. Thus, there is no caselaw or precedent to worry about from this case.
That said, the judge in question doesn't belong behind a bench if he is going to remain so intentionally ignorant that attempts to educate him are thrown out, as was the case here.
Although this set no legal precedent, it does, create a chilling effect, by making it clear that, in that county anyway, one can make an extraordinarily outlandish claim that happens to be mildly technical in nature in order to force an issue. Apparently, with enough legal or political clout, that claim will force your target to either spend hundreds of thousands of dollars to defend it, or settle. I'm surprised that organizations like the EFF and ACLU didn't offer to step in and fight on this one.
]]>@parad0x360: No appeal. Case was settled, so no ruling. Case was dismissed.
]]>@cc82: Right, but perhaps it should be revisited as BCF now has the superior mark. Meaning more people associate the name Burlington with BCF and Burlington Industries could confuse people into thinking they're associated with BCF.
]]>@Eyebrows McGee: Right, I can count on my on one hand (five fingers in case you're wondering) how many times I've seen those awarded. J-D are a bunch of D-bags. Of course, they'll hide behind the same tired argument that all the other D-bags do, "we need to protect our brand or we lose rights."
Fine, keep your brand, but you just lost your reputation.
]]>@NikkiSweet: My God, I'm like 6 years behind the power curve.
]]>@Chris Walters: I see. That didn't register in my head.
Still, this judge should be out of there.
]]>@MikeWas: Kudos to you sir.
]]>Ok... everytime I see a story like this I think to myself "Everyone should remove their links to their site, Google included". If they have no links then they don't exist, hard to run a business with no hits in search engines or links from anyone else (heck Google alone could kill this type of nonsense by making it a policy to remove them from search results and claim fear of lawsuits).
]]>This reminds me of the store Burlington Coat Factory, who to this day (because of a lawsuit) has to put in small print "Not affiliated with Burlington Industries" under their name on all ads.
95% of consumers have no idea who "Burlington Industries" is nor would ever confuse the two. The judge that make that ruling was smoking something.
If I were BCF I would just changed the damn name of the store than put up with having to do that nonsense for decades!
]]>Summary judgment is very difficult to get - it means that your side wins, even if all the evidence in the case is interpreted in the most favorable manner towards your opponent.
]]>@Plates:
yep: "the more I think about it, oh Billy was right...let's kill all the lawyers and kill them tonight"
The Eagles Get Over It
]]>I think the point of putting the hosting url of a link is less to prevent trademark infringement, and more to prevent people from making hyperlinks that appear to be to, say, a legitimate site, but instead point to something potentially offensive, like goatsex or tubgirl.
]]>Just wait until Jones Day or some other large douchebag law firm picks on someone their own size and gets before a judge (and the judge's law clerks) who actually use the Interwebatubes.
]]>Would that make them feel better?
And will they sue me (and Consumerist) for linking the first way?
]]>Years ago I owned a small computer store that was named byte shack. I received a certified letter from radio shack that was a threat. They claimed that I was diluting their trademark. I just ignored them. Two weeks later I get an email from a disgruntled little old lady that wanted to complain about my store in Denver. I also ignored that. They never called again. I think the email was an early attempt at a phishing scam. Five years in business and I never had a ligitimate claim. I kept the letter framed for my customers to read and laugh at.
]]>This is a basic function of website design.
I am more amazed that angry that this was allowed to happen.
The court system needs an enema...
]]>@steegness: What happens if you link to the right URL, but instead put something in there like "big worthless jerks" and then posted it all over the net? Would Google start associating the two?
]]>that kind of linking, in and of itself, isn't a big deal. but i could see a case for that plus some actions being considered infringement.
on a side note, it really pisses me off when blogs over link to their own tags in a story. i know it's all automated and based on keywords. but sometimes i feel like i'm playing and old SCUMM point and click game trying to find the link to the actual story.
]]>Oh, wait, now I'm clear.
]]>Plus the only judge who could get such a case is one who cannot spell internet. It's a very cheap win, for a very cheap company.
All hail the Monster "Gold" cables!
]]>Jones Day - Full endorser and sponsor of Consumerist.com
]]>What happens when I show the full URL, but link it to something else?
[a href="http://www.google.com/"][www.jonesday.com]]
]]>Being that they settled, there is no ruling, so it cannot be used as precedent. Of course, IANAL... Any one who IS a lawyer, care to comment on this?
]]>And by hilarity, i mean long drawn out pointless legal battles.
]]>How can this possibly be a final ruling? There's got to be some way around this, you can not sue over how hyperlink text spells out and displays a name. I get that the judge has been living under a rock, but some other judge HAS to see this and think OMGWTFROFL
]]>