Jones Day v. Block Shopper

I'm taken aback. When this case was first reported, I thought the matter was so straight forward that it was not be worth discussing. Lo-n-behold! Maybe I was quick to dismiss. No actually I take that back. I was not quick to dismiss; Judge John Darrah was!

In Jones Day v Block Shopper, BlockShopper, a website that reports on the latest occurring real estate transactions, used the word Jones Day in the headline and linked to the names of two Jones Day employees (on the Jones Day website) who bought real estate. Jones Day alleged service mark infringement, false designation of origin, service mark dilution and Illinois State Statute violations.

Jones Day alleged that the use of its marks in "connection with a real estate advertisement scheme is likely to deceive and cause confusion" as to source of origin. Really?!

A defense to trademark dilution is fair use. Trademark law takes its rules from First Amendment principles. Thus, trademark fair use permits use of another's mark for news reporting or commentary purposes. Trademark fair use does not hold water if the use of the mark is actually confusing to consumers. BlockShopper argued that Jones Day did not sufficiently plead dilution. However, the Court sided with Jones Day's argument that the deeply embedded linking is sufficient to create a connection between the two and create a false impression of affiliation/sponsorship. Jones Day, citing A.A. General v Chrysler, supported its dilution claim on the following elements:(1) Plaintiff's mark is famous, (2) defendants adopted use of the mark after the plaintiff's mark became famous, (3) defendant diluted plaintiff's mark & (4) defendant's use in commercial and in commerce. The Court felt that the defendants acts do not fall within the statutory exception and thus denied their claim to dismiss Jones Days' dilution claim.

I'm not quite convinced. On a basic level - hyperlinking does not always cause sponsorship and this might be a good example. Will consumers really be confused?Jones Day protested to the use of its name in the headline and the linkage citing sponsorship confusion issues. I'm troubled. Shall we start talking like kids do in Harry Potter books referring to Voldermort - The one who should not be named. How is one supposed to refer to another without using their name?

Links:

EFF

Public Citizen