Consumer Law

Nevyas Lasik Surgeons Resort to Trademark Law to Suppress Criticisms

By Paul Levy

by Paul Alan Levy

For several years, Dominic Morgan and the principals of the Nevyas Eye Clinic have been jousting over Morgan?s contention that, by performing inappropriate lasik surgery on him in 1998, and overlooking indications that he was not a good candidate for such surgery, the Nevyases are responsible for making him legally blind.  The Nevyases filed a Lanham Act false advertising suit, claiming that Morgan?s ?sucks? web site would mislead consumers about the quality of their services; that action was promptly dismissed.  They also sued in state court for defamation, and obtained an injunction against the maintenance of his ?sucks? web site.  Public Citizen represented Morgan on appeal from the injunction, arguing that the injunction was an unconstitutional prior restraint; the appellate court reversed on state law grounds.  The libel case continues to wend its way through the Pennsylvania state courts; most recently it is the Nevyases who plan to appeal, from the determination that they are limited purpose public figures who, therefore, have to prove that Morgan?s comments were posted with knowledge of their falsity or reckless disregard of a likelihood of falsity.

More recently, however, the Nevyases upped the ante by pursuing another trademark claim, this time invoking an infringement theory.  The basis for this claim is that by creating web sites that use the Nevyas name in the domain name ? anitanevyaslasik.com, herbertnevyaslasik.com, and nevyaslasik.com ? Morgan is likely to confuse consumers into believing the web sites that announce ?Why I do not recommend [the Nevyases? services]? are sponsored by the Nevyases themselves.  Apparently, what got the Nevyases really upset was that Morgan?s gripe sites rank in the first few hits on Google when users search for information about the Nevyases and their lasik clinic.  So far as we can tell, they gave no consideration to the possibility that a silly claim of trademark infringement might just bring more attention to Morgan?s gripes.

Instead of suing in federal court, the Nevyases took a complaint to the National Arbitration Forum under the Uniform Domain-Name Dispute-Resolution Procedure.  Over the years, the UDRP has been criticized for its bias in favor of trademark owners, and the NAF in particular has been notorious for offering business clients a friendly forum in which to cheat consumers out of their legal rights.  Sure enough, the Arbitration Forum appointed a Florida trademark law professor who is a former in-house IP lawyer, who accepted the Nevyases unsworn claims as true even though Morgan denied them, refused to consider the many cases decided by the federal courts that uphold the use of trademarks in the domain names of gripe sites, and ruled in favor of the Nevyases.  The panelist told the National Law Journal that any claims of bias are false because most UDRP claims aren?t close.

Morgan has now sued for a declaratory judgment of non-infringement in federal court in New Jersey. 

Full post as published by CL&P Blog on September 14, 2010 (boomark / email).