Westchester attorney suggests bloggers do some thinking before linking.

A recent “David and Goliath” type case out of Illinois has brought to light, yet again, a potential pitfall of placing links to third party sites on your blogs or websites. It all started when the real estate site Blockshopper.com wrote about the real estate transactions of two attorneys at the law firm of Jones Day. Blockshopper linked to the bio pages of each of the attorneys. That’s called deep linking because they went beyond the homepage of Jones Day. Anyway, Jones Day sued Blockshopper alleging trademark infringement, dilution and unfair competition.

Lisa Fantino Westchester Attorney

Lisa Fantino Westchester Attorney

Trademark law protects the name of a product or service, or any distinctive symbol, product shape or slogan used in advertising or on a website. In order to prove an infringement claim, Jones Day would have to prove that Blockshopper’s use of the mark was likely to cause confusion about the origin, sponsorship or affiliation of the law firm’s goods or services. However, U.S. law also protects free expression and the rights of the trademark owner must be balanced in the marketplace which honors fair use of the mark.

A dilution claim, on the other hand, does not require the likelihood of confusion to protect a registered “famous mark.” All that is required is that use of the renowned mark by a non-owner causes dilution of the “distinctive quality” of the mark. However, just what constitutes a “famous mark” is left to great interpretation in the courts but generally the more recognizable and distinctive the brand name and/or its logo, the greater protection it will likely receive (i.e. – Apple Computers or McDonald’s Golden Arches).

Now, maybe Jones Day was just trying to make a name for itself because anyone who surfs the web knows that linking, even deep-linking, is the toll by which anyone cruises from point to point in cyberspace. Without “linking” the web would be a different terrain of static points and not easily navigable. Further, I don’t see how anyone could confuse a real estate site which offers prospective home buyers market guidance, much the same as Trulia, Zillow or Realtor.com, with a law firm that practices in the areas of financial litigation and regulation. But hey, everyone deserves their 15 minutes, right?

Either way, after six long months and a reported six-figure legal bill for Blockshopper, the case settled with the little guy agreeing to change how it links to Goliath. So now, instead of making it convenient for readers by placing an HTML coded link into their post, Blockshopper will state the long, cumbersome URL address instead. Are they serious? Could the law firm think of nothing better to do? I am just so tired of the rampant waste of resources in this litigious society. True, I am a litigator but let’s challenge things that really matter, things that change people’s lives, rights and economic conditions.

Yet, for my fellow bloggers and friends on Facebook, MySpace, Friendster, etc. here are just a few things to keep in mind when linking:

  • Will your link contribute to the dilution of a famous trademark (remember the standard is relative)?
  • Will you use the trademark in a bad light? Unless you are creating a non-fictional critique of the brand’s product or service, you should steer clear of disparaging the brand name & then linking to it……better to disparage without the link. LOL
  • Avoid using the exact style or logo of the brand’s name, such as the wavy writing of Coca-Cola or the swoosh of Nike’s logo, and instead use the brand name in quotation marks, capitalized, underlined or bolded to distinguish it from the rest of your text.
  • I didn’t bother to link to Jones Day. I figure they got sufficient play out of this case as it is. However, for all my legally minded friends, the Citizens Media Law Project has an excellent article and “links” to all of those legalese-laden court documents.