by Paul Alan Levy
Late last week, lawyers for Jones Day filed a stipulation of dismissal of its trademark claims against the real-estate website Blockshopper. The lawsuit alleged that, by providing links to lawyer bio pages on the Jones Day web site from anchor text that set forth the lawyers’ names, Blockshopper was creating a likelihood of consumer confusion about whether Jones Day was the sponsor of or affiliated with the Blockshopper web site. Under the terms of the settlement, Blockshopper agreed not to provide a clickable link to Jones Day’s web site from any form of anchor text other than the actual URL to which the viewer would be taken. Thus, instead of linking to Paul W. Schroeder, the lead counsel for Jones Day in the case, in the way I have just done, Blockshopper would have to configure its site this way: Paul W. Schroeder, http://www.jonesday.com/pwschroeder/.
There have been several excellent blog posts about the ramifications of the settlement, on Consumerist, Techdirt, Slate, and Ars Technica. But here is my take on who won, and what lessons are to be drawn from this development. Although there is reason to be concerned about the chilling effect of the litigation, there is something that the blogging community can do to limit that chilling effect.
No legal precedent was set here – there was no determination by a judge that Blockshopper either did or did not violate Jones Day’s trademark, and thus no express guidance for other web site operators and others. But there are many lessons to be drawn here for the future.
At one level, Jones Day achieved next to nothing from this litigation – except to be held up to the world as an object lesson about abusive litigation. Blockshopper reportedly offered just this arrangement at the outset of the litigation, but Jones Day persisted in several months’ worth of litigation only to accept the original settlement proposal. Although its apparent objective was to make it more difficult for Blockshopper to refer effectively to Jones Day associates in connection with its reporting of the real estate purchases – reportedly, the real concern was over its associates’ privacy – Blockshopper remains able to carry such reports and, indeed, it seems likely that Blockshopper will exercise that right more diligently by reporting on Jones Day personnel whenever it can.
But on another level, Jones Day has achieved a great deal. It has effectively sent a message to other defendants that it is not a firm to be trifled with, and that, when Jones Day “asks” you to do something, you had better do it or you are going to have to spend hundreds of thousands of dollars to defend yourselves. And Jones Day’s selection of trademark as the subject matter of its strike suit is no surprise, because the biannual AIPLA economic survey has consistently shown that trademark cases typically cost hundreds of thousands of dollars just to reach the summary judgment stage. Typically, Blockshopper spent $110,000 through the date of settlement, and was facing expense through trial in the neighborhood of $300,000 to $400,000. Although Blockshopper had originally vowed to fight on to the end of the case to prove its point, one can certainly appreciate its need to make a business decision and surrender its claim to an award of attorney fees against Jones Day for the abusive litigation. In the end, the warning delivered by Judge Darrah to Blockshopper at the outset of the case—Jones Day is just too big a law firm that you cannot afford to fight in litigation—became a self-fulfilling prophecy because, as Blockshopper began to contemplate the outcome of a summary judgment motion, it knew that it would have to get a ruling on that motion from a judge who seemed to be intent on forcing a settlement. It would be interesting to learn whether Judge Darrah is gratified by that fact.
On balance, it is hard to say what lessons Jones Day’s prospective clients should learn from this case. Had a private client been funding this litigation, it would have paid a very high price—not only in fees, but in scads of bad publicity—to achieve a settlement that gave it very little. Perhaps the lesson is that Jones Day does not display very good judgment in the cases that it chooses to litigate. On the other hand, if Jones Day achieves the end of intimidating other potential critics, maybe that makes Jones Day a good choice for clients that want to engage in abusive litigation.
The notion that trademark law speaks to hyperlinking practices, and that any member of the public could be “confused” about whether or not Jones Day is affiliated with the author of the first paragraph of this blog post – which embeds variety of different hyperlinks to text including either “Jones Day” or the names of some of its staff – seems preposterous. Hyperlinks are, after all, the very stuff that makes the World Wide Web a web. The very fact that the trial judge allowed this case to drag on, rather than dismissing it outright based on the sound reasons that Public Citizen and EFF put forward in our amicus brief—the very fact that Blockshopper could be worn down the way it was and forced to settle instead of winning its case and teaching Jones Day the lesson it deserved—could have a chilling effect on the creative use of hyperlinks.
One might, however, suggest that the Internet community to fight back against Jones Day, by repeatedly deep-linking from its name, and to its web site, in precisely the ways to which it objects, but which it cannot prevent through litigation. Jones Day’s bullies should learn that they cannot have their way. In addition to linking to Jones Day’s own web site, the community can use hyperlinks to show Jones Day what they think of its abuse of free speech online. Does Jones Day really believe in its theories of the case? Let’s find out. In the end, Jones Day will have to accept the limits of its bullying power.