Hey You, Non-Lawyer, You Ever Heard of Jones Day?

I had a request in the comments on the Pat Sajak thread about my thoughts on the Jones Day v. BlockShopper case which settled last week. As I concentrated on Intellectual Property in law school, here's my take. Briefly, BlockShopper is a website that chronicles real estate sales. The site detailed the purchase of pricey condos by two associates at the law firm Jones Day. The site used the firm's name and pictures of the associates (pulled from the firm's website) in the description. Jones Day sued BlockShopper for trademark infringement.

This appears to me to be a simple case of a firm being embarassed and not wanting to appear to be giving away lavish salaries during these Tough Economic Times®. In my opinion, Jones Day's chance of success on a trademark infringement claim was about .00001%. Jones Day claimed BlockShopper was diluting Jones Day's trademark and causing customer confusion.

Without getting too lost in the legal weeds, the customer confusion claim (the prototypical trademark infringement claim) is almost completely without merit. Jones Day would have to have proven customers of the BlockShopper site, or of Jones Day itself, thought Jones Day somehow sponsored BlockShopper -- that BlockShopper was a Jones Day product. Click around the site. Other than the paid advertising, do you get any inclination that BlockShopper is somehow sponsored by anyone, let alone Jones Day?

The blurring claim is ridiculous because as a threshold issue, the trademark being diluted needs to be a "famous mark." Famous marks are defined by federal law as marks that are “widely recognized by the general consuming public of the United States.” Anyone out there in the non-legal world ever heard of Jones Day? McDonald's? Yes. Nike? Yes. Jones Day? No. Let's assume that Jones Day is a famous mark, then what is the analysis? Well, Jones Day would then have had to prove that BlockShopper's use was so pervasive that when a customer heard or saw "Jones Day" he or she would say, "Jones Day? Hmmmm.....is that the law firm or the real estate website?" Again, proving this would have been virtually impossible.

On top of the ridiculousness of the claims themselves, BlockShopper would have also likely been protected by fair use. Fair use is the idea, found in both statutory and case law, that sometimes use of another's trademark that may be illegal is still permissible. There are numerous fair uses: one being comparison (e.g. Pepsi showing a Coke machine in its commercials), but of direct importance, the use of trademarks descriptively. Just as NBC can talk about Starbucks (and put a picture of Starbucks' logo on the screen) to describe the closing of hundreds of Starbucks stores, so too can BlockShopper use Jones Day's name to describe the public real estate transactions of its associates.

To me, this seems like an embarrassed large company using it's financial power to push around the person doing the embarrassing. If Jones Day had pursued a copyright claim related to BlockSopper's use of Jones Day's pictures, that would have been a lot more reasonable; perhaps not advisable, but at least the argument would have been rooted in the law. BlockShopper, faced with ridiculous legal bills in order to defend these ridiculous claims, opted to settle by placing full addresses linked to the associates' Jones Day bio pages and stating that more info on the associates are available on the site. It's a shame that BlockShopper had to settle, but the prospect of losing the site because of mounting legal debt is far more adverse.

Thanks to the following sites for some great info on the case: The Legal Satyricon, Consumer Law & Policy Blog (also some info on Jones Day's other attempts to use trademark infringement claims to bully people being critical of them), and Slate.