Really? This is still an issue? The commodity, open to the public, Internet is almost 20 years old. The World Wide Web, an application fundamentally based on the premise of linking, was unleashed by Sir Tim Berners-Lee some 17 years ago. We have a waste can full of federal cases supporting the conclusion that it is, in fact, legal to link. And we still have to ponder the dilemma, It It Legal to Link?!?
Well, according to the Northern District Federal Court of Illinois, we do.
Really??
Ok, breath. Patience. Some people still are learning that the CD drive in the computer is not a cup holder. Breath.
Let's take it from the top. In today's case, we have, in one corner, Blockshopper.com, defendant, accused of infringing and diluting the trademark of plaintiff, in the other corner. Plaintiff v Blockshopper LLC, Case No. 08 CV 4572 (ND ILL). The Court recently had before it defendants' Motion to Dismiss, which it denied. And if the Court had any difficulty understanding the law in this area, the Court also had before it a Motion by the Electronic Frontier Foundation, Public Citizen, Public Knowledge, and Citizen Media Law Project to file Amici Curiae brief, which it also denied.
Now before we start, a few safety precautions. Plaintiff seems to be of the persuasion that merely uttering its name could result in trademark confusion or infringement (making information gathering, new reporting, and blogging rather difficult). Therefore, since we dont want to offend or be sued, in this post, Plaintiff will be a name that must not be uttered. In its place, we will have to use some other name. Let's see, what would be a good substitute for he-who-must-not-be-named. Oh, I know! Voldemort! In this post, we will use "Voldemort" in place of Plaintiff's name (and for you humor-impaired attorneys out there - this is called "parody" - say it with me, "p - a - r - o - d - y").
In addition, since Voldemort is of the persuasion that merely linking to its website gives rise to a cause of action, we will avoid doing so like a hound dog avoids taking a bath.
Back to the case. The Illinois Court describes defendant shortly as
"Defendant Blockshopper LLC is a Missouri limited liability corporation, having its place of business in Chicago. Defendants [John] and [Doe] are members of Blockshopper and co-founded, registered and own the internet website located at the domain www.blockshopper.com. Blockshopper is in the business of gathering and publishing details of private real estate transactions."
In Defendant's own words, "BlockShopper.com is a residential real estate news service for... eureka.. actual residents themselves." Reminds me of my local newspaper which does a lot of the same reporting.
Compare and contrast this to how the Illinois Court describes the plaintiff - and then, without even reading the decision, vote on who you think won this round:
"[Voldemort] is a large, international general partnership law farm with an office in Chicago, among other cities. [Voldemort] is the owner of two United States Service Mark Registrations, Numbers 2,316,539 and 2,212,877, for the mark [Voldemort] in connection with "Legal Services." As a result of the high quality of legal services it has provided to its clients and its reputation as one of the premier law firms in the United States and the world, [Voldemort]'s name and service marks have become very valuable assets and are famous. [Voldemort] has spent millions of dollars marketing its services using the [Voldemort] Marks; and as a direct result of the time and effort promoting the [Voldemort] Marks, [Voldemort]'s clients, its competitors and the general public have come to associate high quality legal services provided by [Voldemort] by its use of the name and service mark [Voldemort] in both word and stylized form." Court Opinion at 2.
Ladies and gentleman, in one corner, weighing in at 100 pounds of pure heavenly sainthood, is Saint Mother Teresa who has fed the hungry, clothed the poor, and given homes to the homeless. And in the other corner, some out-of-state schmuck doing one of those Internet Web 2.0 things.
Okay, ah, maybe it's not as bad as it seems. What exactly did the out-of-state schmuck do to which plaintiff took offense.
"One at least two occasions, Defendants have used the [Voldemort] Service Marks on the blockshopper.com website and have linked articles on the website to the [Voldemort] website. Exhibited D of the Complaint pertains to reports appearing on the blockshopper.com of facts of residential real estate transactions made by two [Voldemort] associate lawyers, [Saruman the White] and [Merlin]. The report states the facts of real estate transactions of the [Voldemort] associates, displaying their pictures, and states that the associates work for [Voldemort]. In addition, the report includes links to information about these associates appearing within [Voldemort]'s website." Court Opinion.
If I am getting this correctly, Blockshopper linked to Voldemort's website in real estate articles discussing purchases of attorneys who worked at Voldemort. And this is a problem legally speaking why?
"[Voldemort] contends Defendants' use of the [Voldemort] Marks, the links to the [Voldemort] website, and the use of proprietary information from the [Voldemort] website create the false impression that [Voldemort] is affiliated with and/or approves, sponsors or endorses Defendants' business, which it does not.
"Arising from these facts, [Voldemort] alleges five claims for relief against Blockshopper and [John] and [Doe]:
(1) service mark infringement pursuant to 11 USC s 1114 and 1125(a)
(2) federal false designation of origin pursuant to 15 usc s 1125(a)
(3) federal service mark dilution pursuant to 15 USC s 1125(c)
(4) unfair business practices under the Illinois Uniform Deceptive Trade Practices Act; and
(5) infringement and unfair competition under Illinois common law."
Okay, ah, I didnt really know this was necessary - that someone reading a website providing information about third parties and stuff might confuse the information website with that third party - particularly when that third party is famous - but let's just be clear, shall we? Plaintiff is not affiliated with this website. I have never asked for Plaintiff's approval. Plaintiff has never, to my knowledge, endorsed Cybertelecom. Is it safe to discuss the case further??
Blockshopper filed a 12(b)(6) motion to dismiss Voldemort's complaint. Under Rule 12(b)(6), you assume the facts plead in the light most favorable to Voldemort. The Court then says, assuming all this to be true, is there an actual cause of action? Courts are at liberty to construe motions to dismiss as motions for summary judgment just to help sort things out (the two are pretty close - the difference would be with summary judgment, there is cause of action articulated, but on the facts assumed, there aint enuf and plaintiff still loses).
Finally, before diving into whether it is Legal to Link - Cybertelecom is focused on federal law - so I will just craftily wave away Count 4 and 5 of Voldemort's complaint which are based on state law.
The scene of the crimes can be found in exhibit D in Voldemort's complaint (the pages appear to be no longer available on the Blockshopper website). Exhibit D is of a webpage from the Blockshopper website. The top left corner is the Blockshopper domain name. The top right corner is the Blockshopper URL. The header is a Chicago Blockshopper Logo. Then comes the body text about the Voldemort attorney. Finally the footer states "Copyright 2006-07 Blockshopper..." The body text takes the form of a news article.
The webpage is an article about the purchase, has a picture of the attorney, a picture of the place he bought, and a map showing where it was purchased. The attorney's name is hyperlinked to the Voldemort website A second Blockshopper webpage is attached in Exhibit D for the second Voldemort attorney, with essentially the same format.
Nothing on the webpage indicates that Voldemort is affiliated with and/or approves, sponsors or endorses Defendants' business. The page takes the format of a news article with a title, date, byline, and article text. A quick glance at the Blockshopper homepage reveals that it is reporting on several such sales each day on a wide variety of real estate transactions involving a wide variety of individuals who may be associated with a wide variety of organizations.
So now I am confused. How do you get a cause of action based on these facts?
Voldemort's objection is "On at least two occasions, Defendants have used the Voldemort Service Marks and linked "articles" on the Web Site to the Voldemort web site. See Exhibit D." Complaint para 25. So the facts that are basis of the cause of action are:
- Defendant "is in the business of gathering and publishing details of private real estate transactions." It's a news site.
- Defendant used the name "Voldemort" in the title and text of a news article;
- The use of the name "Voldemort" describes the employment of a real estate purchaser in an article discussing the real estate purchase;
- The name "Voldemort" is not itself linked; and
- The name of the real estate purchaser is hyperlinked to the real estate purchaser's bio on plaintiff's website.
Count II of Voldemort's complaint claims trademark dilution. According to trademark law:
(A) any fair use, including a nominative or descriptive fair use, or facilitation of such use, or a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
15 USC s 1125(c)(3). This would seem to be clear that no cause of action for dilution can lie based on Voldemort's facts; this would fall under "all forms of news reporting" . Seems like this would go for Counts 1 & 2 as well, but we shovel on.
Counts 1 (infringement) and 2 (false designation of origin) are both based on of 15 USC s 1125(a). Well, what has almost two decades of caselaw said about linking to someone else's website?
- Ford Motor Company v. 2600 Enterprises, 177 F.Supp.2d 611 (EDMi Dec. 20, 2001): As much as plaintiff Ford Motor Company might have been displeased by the antics of the defendant, the Court found that registration of the domain name "fuckgeneralmotors.com" which then linked to Ford's Homepage did not create a cause of action for trademark dilution, trademark infringement, or unfair competition. The Court stated, "This court does not believe that Congress intended the [Federal Trademark Dilution Act] to be used by trademark holders as a tool for eliminating Internet links that, in the trademark holder's subjective view, somehow disparage its trademark. Trademark law does not permit Plaintiff to enjoin persons from linking to its homepage simply because it does not like the domain name of other content of the linking webpage."
- American Civil Liberties Union v. Miller, 977 F.Supp. 1228 (ND Ga. 1997): A Georgia law criminalized the use on the Internet of a trademark or copyrighted symbol that implied permissive use when permission had not in fact been granted. The ACLU challenged this law arguing that it created an ambiguity concerning whether a trademarked term appearing in a hyperlink would constitute a criminal act. The Court overturned the law on constitutional grounds, finding that there is a First Amendment right to descriptively use a trademark in order to refer to the another webpage.
- Ticketmaster Corp. v. Tickets.Com, Inc., No. 99-07654 (CD Calif. Mar. 27, 2000) Tickets.com provided deep links to pages on the Ticketmasters.com website, assisting people in their ability to acquire tickets. Ticketmaster.com would have preferred that people come through their front door, and not through some side entrance, so much so that they sued Tickets.com. But Tickets.com provided only a hyperlink and there was a full disclosure that users were going to a third party website and would no longer be on tickets.com. Thus there was no confusion about whose services were being used. The Court concluded in this situation that deep linking in and of itself did not constitute copyright infringement.
- Knight McConnell v. Cummins, 03 Civ 5035 (SDNY July 29, 2004) "Plaintiff fails to state a claim for false designation of origin under the Lanham Act, 15 USC §1125(a)(1), based on allegations that defendant, who operates a site highly critical of plaintiff, has linked to plaintiff's web site without plaintiff's permission, has used plaintiff's name in the post-domain path of the URLs for several web pages, and has posted links on Internet chat forums and discussion boards directing users to visit these pages. To state a claim for false designation of origin, a plaintiff must show that she has a valid and protectable mark and that defendant's conduct is likely to cause confusion concerning the source or sponsorship of the goods or services in question. Even if plaintiff can show that she has a valid and protectable mark in her name, plaintiff fails to allege that defendant has engaged in any conduct that is likely to cause confusion as to the origin of defendant's web site. The mere appearance on a web site of a hyperlink to another site will not lead a webuser to conclude that the owner of the site she is visiting is associated with the owner of the linked site. Nor does defendant's use of plaintiff's name in the post-domain path of the URLs and the placement of those URLs on chat forums and search engines give rise to any source confusion"
So I'm back to confused. Looking at well established caselaw and the statute itself, where is Voldemort's cause of action? Plaintiff's alleged facts are (1) linking to plaintiff's website and (2) use of plaintiff's name Voldemort in news articles as a descriptive term. I know I keep repeating that - but I am struggling to comprehend how these facts can predicate a cause of action. The caselaw and statutory law are well settled that there is no federal trademark cause of action based on linking.
Either the law relevant to this case is well settled and the case should have been dismissed - or in the face of well settled jurisprudence, we have novel factors that complicate the analysis and may establish important new precedent in this area - in which case the input of expert organizations would be well appreciated and those organizations motion to file amici curiae briefs should have been granted. Surely a famous law firm such as Voldemort would not feel threatened or imposed upon by the appearance of such groups that could bring clarity to such a novel situation.
This decision has established that the mere mention of a famous trademark on your website in a fashion such as this - reporting on or discussing news and developments - much like so many blogs and websites do - can make you suffer the slings and arrows of expensive litigation. Plaintiffs may in the end lose their case - fine - but this case should never been allowed off square one. The motion to dismiss should have been granted. Since it was not, the fear of litigation - even litigation defendant is likely to win - is enough to chill speech and is contrary to the fair use provisions of the law.
According to Google, there are 594,000 webpages with the name "Voldemort" on it. I dont know, I guess plaintiff would like those 594,000 webpages not to link to it - but that might actually do more harm to plaintiff than good. It might jeopardize plaintiff's "famous" status as plaintiff would magically disappear from search engine results.
Well, even though the Defendant is getting soaked with pointless litigation expenses, at least bloggers have something to buzz about. I'm just thinking out loud here - what tarnishes a trademark more - having people link to your website in an article which increases your exposure and improves your ranking on search results - or filing a lawsuit that receives wide attention and condemnation?
