Intellectual Property Law

To Link or Not To Link?

By Laila Wolfgram

Earlier this year, Tim referred to the Jones Day/Blockshopper trademark dispute.  I have been invited to expound on this topic.

Last year, a fledgling real estate news site called BlockShopper started publishing information about the home purchases of lawyers from the New York law firm Jones Day. This site would post information about how much money certain lawyers spent on their homes, the area in which the homes were located and include a link to the bio for the lawyers from the Jones Day website.

Jones Day, for some unpublicized reason, was very displeased by these links. The information published by BlockShopper is available through public documents, but the Internet inspires companies to organize publicly available information and make it easily accessible to people who would not otherwise bother to look for such stories. Jones Day was probably less than thrilled about having its attorneys' home purchases broadcast in this manner and sued BlockShopper for trademark infringement and dilution.

BlockShopper was engaging in the standard practice of linking to publicly available websites. The crux of any trademark infringement case is consumer confusion and whether the use of a third party's trademark will mistakenly cause people to believe there is an association between the trademark user and the trademark owner. Jones Day's argued that BlockShopper's link would mislead users into believing that Jones Day is somehow associated with BlockShopper. The idea that visitors of a real estate news site would somehow be confused by links to the Jones Day website seem rather implausible. Nonetheless, the judge refused to dismiss Jones Day's case and in the end, BlockShopper agreed to settlement terms which require BlockShopper to change the way it creates links.

It is easy to see why BlockShopper agreed to back down. This small company had spent hundreds of thousands of dollars in legal fees and faced an unsympathetic judge who supposedly pressured BlockShopper to compromise by saying, "Do you know, young man, how much money it's going to cost you to defend yourselves against Jones Day?" As a result, BlockShopper was forced to agree to not use embedded links to the Jones Day website in any words or names.

This result sends a negative signal about the Internet where linking is, for the most part, unfettered. Ultimately, Jones Day was able to control how an online publisher builds and formats hyperlinks. Companies may now believe they can force sites to change their linking practices by suing web publishers for trademark infringement. Based on what Jones Day was able to accomplish, it's not hard to imagine that this precedent could be expanded in order to force web publishing companies to adopt different linking protocols to accommodate different organizations. The Jones Day-BlockShopper settlement may have opened the door to allow similarly situated plaintiffs to control how and to whom web publishers can link.

Unfortunately, even if you have the law on your side, your legal budget may determine whether you choose to link to a trademark owner's site, or use a mark in a headline or post. We will monitor this development to see if this trend of permissions-based linking systems continues and grows.

Full post as published by The TechKnowledgy Blog on April 02, 2009 (boomark / email).