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To read comments to this article, go here
Don't link to So and So's website. They might just sue ya. Or, what Trademarks Are [and Are Not] For.
Monday, September 29 2008 @ 07:03 AM EDT

"A lawsuit no doubt may be used as a powerful instrument of coercion or retaliation."
~ Bill Johnson's Restaurants v. NLRB, 461 U.S. 731, 440 (1983).

"Most useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark."
~ New Kids, 971 F.2d at 306-07.

* * *

Jones Day is a very reputable and very large law firm. The firm has 2200 lawyers [according to an August press release more than 2300]. So you can imagine how it feels to find out a huge firm like that wants to sue you. You've seen how easy it is for a determined bully firm to keep a legal bogo-ball in the air almost indefinitely without breaking a sweat; now imagine it happens to you, and you're not IBM or Novell. You are just a small startup. Jones Day has, indeed, sued real estate news site BlockShopper over a headline mentioning the firm and for linking to lawyer bios on Jones Day's website in articles revealing what homes a couple of Jones Day lawyers bought, alleging trademark infringement and dilution.

I know. But let's face it. Some folks haven't yet quite grokked this whole Internet pipes thing.

Those of you who hate trademark law will lap this up, of course, but that isn't my purpose. In fact, I haven't been able to find a single article about the case that doesn't view it as Jones Day misusing trademark law or at least stretching it beyond what is normal. Wait. I don't want to get sued. Let's just call the plaintiff the So and So firm, shall we?

It seems an odd choice, to me and to this law professor, Mark Randazza, to choose to sue over trademarks, and he doesn't mince words:

Of course, there may be fair use arguments at BlockShopper’s disposal — but at least then the case wouldn’t be something that I will use in my classes as a negative example in an ethics segment.
Jones Day told BlockShopper it would drop the case if BlockShopper paid it $10,000 and agreed to never write about its lawyers’ real estate transactions again, according to the National Law Journal (subscription required). BlockShopper declined the offer. (source)
Good for them. Martin B. Carroll, Adam A Hachikian, and Daniel S. Hefter of Fox, Hefter, Swibel, Levin & Carroll, LLP are defending BlockShopper. I’m just guessing that BlockShopper is getting pro bono or low-bono service, since it can’t possibly be making enough money to afford this kind of representation.

If you can't even mention the name of a company, imagine what happens to the Internet, not to mention our ability to talk to each other. I might want to say I think a certain law firm has behaved badly, for example. But I'd best not, at least until the court decides if that might confuse you into thinking this is their site. A girl can't be too careful.

No, my purpose is to show you how free speech, the First Amendment, and trademark law intersect in US law. Believe whatever you please, but I want you to at least understand trademark law and free speech principles.

First Amendment principles can trump trademark, as can fair use, as you'll see in an amicus brief filed by EFF, Public Citizen, Public Knowledge and Citizen Media Law Project in the case in support of defendant's motion to dismiss. Here's the motion for leave to file an amicus brief [PDF]. The way that process works, you have to ask the court to let you file. Well, Jones Day actually filed an opposition [PDF] to the motion for leave to file the amicus brief. Their reasoning is ... dare I say it? ... a little odd. Here's EFF-Public Citizen et al's mocking reply [PDF].

I decided to put it all on Groklaw as text, so you'll actually read them, because some of you dear knuckleheads think free speech isn't important, judging from your comments on the last article about the First Amendment.

: D

OK. Just teasing you. Here's So and So's Amended Complaint [PDF]. Oops. I did it again. I mean, here's So and So, Attorneys at Law's, Amended Complaint. I wouldn't want you to think I'm Jon...er...So and So. Or more exactly, I don't want the So and So's to decide to do You Know What to me.

Here's what I imagine might have happened. Jones Day does have a point, in that what happened is that BlockShopper publicizes who bought a home in a particular neighborhood. I confess if anyone did that to me, it would distress me greatly. But it's all public information already. You know I don't think that's enough of a reason to put something on the Internet, but if you are concerned about free speech, you can hardly avoid trying to be heard in such a case as So and So's. I surmise that the firm researched and tried to find a law that would prevent BlockShopper from doing what it does, couldn't find any, not even privacy laws, so they brought the trademark claims as the only arrow left in their quiver. But I don't actually know what they thought, since I'm not a So and So.

But what often happens when you try to stretch a law to suit, not that I'm saying these So and So's are doing that, you understand, the down side can be like finding yourself hurtling down the Grand Canyon, and that's what the amicus brief highlights, just how chilling the results can be if no one can mention the name of a business without fear of getting sued.

Hmm. Deep thoughts. Looked at from that angle, I guess I have bigger So and So's to worry about, if that were the law. No one, in fact, could say anything to anyone about So and So's, and as you are aware, the First Amendment was designed precisely to allow us to say exactly such things.

Those of you who hate trademark law will enjoy reading the amicus brief, the parts about the limitations on trademarks when they bump up against the US Constitution's First Amendment values. First, Paul Alan Levy of Public Citizen explains the claims in the case:

A new entry in the contest for “grossest abuse of trademark law to suppress speech the plaintiff doesn’t like” comes from Chicago, where the giant law firm Jones Day has sued BlockShopper.com, a web site that reports on real estate purchases in two upscale specific Chicago neighborhoods, as well as in Las Vegas, Palm Beach, and St. Louis. The defendant’s crime? In discussing condo purchases by Jones Day associates Dan Malone and Jacob Tiedt here and here, BlockShopper used the name “Jones Day” to identify the employer of each of the two associates, and linked from each associate’s name to Jones Day’s own web site here and here.

According to Jones Day, linking to its web site dilutes its trademark and creates a likelihood of confusion. But that is preposterous. The link is in connection with a comment on Jones Day; when a trademark is used to comment on the trademark holder, the use reinforces the association with the trademark holder, rather than blurring it, and besides use for commentary is expressly protected as fair use under the Lanham Act as amended in 2006. Moreover, nobody could visit the BlockShopper web site and think that it is sponsored by or affiliated with Jones Day, even if they follow the links from BlockShopper’s mention of Jones Day associates to Jones Day’s own web site. That is what web sites do – they link to other web sites (that’s what makes it a “World Wide Web”).

The So and Sos complained about him expressing his opinion too, as you'll read, but he claims First Amendment protection and he says he wrote about the case before deciding to file a motion for leave to file an amicus brief.

One last thing before you read it, some trademark resources you may find helpful:

Oh, and for those of you who think trademark law is invariably stupid and ought to be dragged out back and hung until it's dead, ask yourself, if you were RIM, selling Blackberries all over the world and after years of trying to enter the market, you are about to launch in China when you hear about a new but remarkably similar Chinese product calling itself Redberry? How about if the company doing it said that it chose the name because "it continued the familar Blackberry name and carry on the color red in Unicom's visual identity." Whoa. Still think trademark protection is always stupid? Here's what a trademark lawyer who practices in China, Spring Chang, suggests RIM could try. As you'll see, not much in China. Under US law, it would be very easy to win that case and make them call it something else.

The So and So's are particularly relying on a claim of having a famous mark, because famous marks get special protection under trademark law. However, the amicus brief points out that the dilution part of trademark law was amended in 2006 and it currently reads like this:

(c) Dilution by blurring; dilution by tarnishment

(1) Injunctive relief

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(2) Definitions

(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

(3) Exclusions

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

As you'll see, at issue in this case is whether Jones Day qualifies for this special protection famous marks get. While lawyers in the US certainly would know the firm's name, how about you? Ever hear of them? If I thought you had, I wouldn't have needed to explain to you who they are, now, would I, in the beginning of the article? I don't have to tell you who Disney is or Coke.

That section of the law was amended in 2006, so as to raise the bar on what qualifies as a famous mark, the amicus brief points out and they don't believe Jones Day makes it over the bar. Interestingly, the plaintiffs don't argue in their Reply that they are, too, famous. Instead they try for a technical knockout. Basically, I gather the changes made in 2006 gave judges a lot of leeway when deciding if a mark is really famous or just niche famous.

One final resource, a decision [PDF] in a Virginia case, Ostergren v. McDonnell case (E.D. Va., No. 3:08cv362), which you can read about here on the Intellectual Property Professional Information Center's website. It's another free speech case, where there was an unsuccessful effort to shut down a website for publishing public land records on the Internet. The overview from the article:

For several years, clerks of court in Virginia have made land records containing Social Security numbers available to the public online, and even though the state has since acknowledged the danger of making Social Security numbers public, it has not yet redacted them, the court noted, finding that the First Amendment protects the plaintiff's posting of such records on her Web site.

To inform the public about the Virginia General Assembly's practice of posting land records online without redacting the SSNs, Betty Ostergren posted, on her advocacy Web site, records containing the SSNs of those government officials she believes to be responsible for making SSNs publicly available. Ostergren paid a nominal fee to lawfully obtain access to the records, which she posted on www.TheVirginiaWatchdog.com in conjunction with statements expressing her views that court clerks, secretaries of state, and others in Virginia and nationwide are “spoon feeding criminals” by making this information public, putting citizens at risk of identity theft and other crimes.

The court upheld her right to publish, since they were already public records. And interestingly, the case also upheld a blog's right to the same protections as a newspaper, beginning on page 23:

2. Analysis

Cox Broadcasting and its progeny, of course, assessed the protection accorded by the First Amendment to the press. Although Ostergren's website is not traditional news media like the newspapers involved in the above-described cases, here website -- even in title -- undertakes the government watchdog role protected by the First Amendment. Her website is "analytically indistinguishable from a newspaper." Sheehan v. Gregoire, 272 F. Supp. 2d 1135, 1145 (W.D. Wash. 2003) (noting that plaintiff's website on police accountability "communicates truthful lawfully-obtained, publicly-available personal identifying information with respect to a matter of public significance"). There is furthermore no jurisprudential basis for according the Internet differential treatment under the First Amendment.3 See Reno v. ACLU, 521 U.S. 844, 870 ("We agree with [the district court's] conclusion that our cases provide no basis for qualifying the level of First Amendment scrutiny that should be applied to this medium [of the internet]."). It is difficult to imagine a more archetypal instance of the press informing the public of government operations through government records than Ostergren's posting of public records to demonstrate the lack of care being taken by the government to protect the private information of individuals. Consequently, the principles of those Supreme Court cases apply to the assessment of the statute as applied to Ostregren's actions. 4

First, the records published from a government source, the circuit clearly were obtained largely from a government source, the circuit courts, and are part of official court records that are open to public inspection. Before Ostergren even published those records, the State had made them publicly available online to anyone who paid a nominal access fee. The records at issue are not identical to those before the Court in Cox Broadcasting, but are closely akin to the records of judicial proceedings which were at issue there.

And, because the records here at issue are maintained by court officers in courthouses, they are closer to the Cox Broadcasting model than to the fact pattern in Daily Mail and Florida Star .

Second, the SSN's in the court records are without doubt personal in nature and are entitled to privacy because they are quintessential personal identifier; and SSNs are susceptible to misuse that can cause great harm, such as identity theft. Therefore, it would not be difficult for a court to conclude that the protection of SSNs from public disclosure should qualify as a State interest of the highest order. However, it is not the perception of a federal court that defines a State interest of the highest order. Instead, it is the State's view and its conduct that, under First Amendment jurisprudence, must supply the basis for such a conclusion.

In this case, the State's own conduct in making those SSNs publicly available through unredacted release on the Internet significantly undercuts the assertion made by the State in this litigation that the State actually regards protection of SSNs as an interest of the highest order. It becomes even more difficult to accept the State's "interest of the highest order" argument on this record because, when the State realized the harm to which its practice was exposing its citizens, the legislative response did not signal that the General Assembly considered protection of SSNs to be an interest of the highest order. Indeed, the Virginia law which required redaction of SSNs from land records already online allowed the clerks of court a period of three years to accomplish the redaction task. Va. Code Ann. 17.1-294, Historical and Statutory Notes; Acts 2007, chs. 548, 626 (West 2008). Even that deadline was not to take effect unless funding to support the effort was provided by the legislature, and the record shows that the funding was not provided by the General Assembly....


3Indeed, it might be said that the Internet has taken over the role of traditional print media. It can hardly be contested that there is an ongoing shift away from traditional print media toward the internet. See John Ibbitson, Extra, extra, read all about it - or, sadly, not, The Globe and Mail, July 9, 2008, at A13 (describing year over year nationwide decline in newspaper circulation and decreased ad revenues as readers turn to the internet without coordinate advertiser migration); Annys Shin, Newspaper Circulation Continues to Decline, The Washington Post, May 3, 2005, at E03 (describing how that year's decline "continued a 20-year trend in the newspaper industry as people increasingly turn to other media such as the Internet and 24-hour cable news networks for information.").

4 Defendant agreed at the hearing on the preliminary injunction that there was no difference between a newspaper and Ostregren's website "as a legal matter." See Mot.'s Tr. 39, June 30, 2008.

I thought it was appropriate to mention that ruling, just in case some folks might get some ideas of further creative uses of the law.

Update: Groklaw member kozmcrae comments: "They didn't mention anything about losing a pair of pants, did they?"

So, here's the amicus, then the opposition, and then the reply, all as text.

Here's a link to the comments after the transcript. But I hope you'll read the materials. I went to a lot of trouble to present them to you. That should tell you how important I think it is for the community to understand trademark law, and even though this is a sad case, the materials will definitely help you to grasp what it's for and how it's used by everyone but So and So's.

********************************

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

JONES DAY, a general partnership,

Plaintiff,

v. BlockShopper LLC, d/b/a Blockshopper.com, et al.

Defendants.

_______________________________________

Case No. 08CV4572

Judge Darrah

________________________________________

BRIEF OF PUBLIC CITIZEN, ELECTRONIC FRONTIER FOUNDATION,
PUBLIC KNOWLEDGE, AND CITIZEN MEDIA LAW PROJECT AS AMICI
CURIAE IN SUPPORT OF DEFENDANTS' MOTION TO DISMISS

Robert S. Libman
Miner, Barnhill & Galland
[address, phone]

Paul Alan Levy (motion for pro hac vice admission pending)
Public Citizen Litigation Group
[address, phone]

Corynne McSherry
Electronic Frontier Foundation
[address, phone]

TABLE OF CONTENTS

Introduction and Summary of Argument ........................................................................................1

Interest of Amici Curiae...................................................................................................................2

I. JONES DAY HAS NOT STATED AN INFRINGEMENT CLAIM..................................2

A. Jones Day's Exhibits Contradict Likelihood of Confusion .........................3

B. Jones Day's Allegations Lack the Specificity Needed for a Trademark Claim Against Noncommercial Speech Under the First Amendment .........................................................................................4

C. BlockShopper's Use of the Jones Day Marks Is a Fair Use. .......................8

II. JONES DAY HAS NOT STATED A DILUTION CLAIM .............................................10
A. "Jones Day" is Not a Famous Mark Under the Newly Amended Lanham Act................................................................................................11

B. The Challenged Speech is Protected by the Noncommercial Speech, News Reporting and Fair Use Exemptions ..................................13

Conclusion ..................................................................................................................................... 15

i

INTRODUCTION AND SUMMARY OF ARGUMENT

In this case, plaintiff is abusing a trademark to suppress legitimate, non-infringing speech, with potentially significant implications for other online speakers. The Internet offers unprecedented opportunities for speakers and audiences to find each other and exchange valuable information about products, research, viewpoints, and other important topics. That exchange cannot happen if trademark holders can prevent others from using their marks, accurately, in the ordinary course of communication, to refer to the holders themselves. But that is precisely what Jones Day seeks to do here. Its effort must fail.

Lanham Act decisions recognize that trademarks do not give a markholder veto power over all uses of its mark, and for good reason. Online and off, trademarks-- words, symbols, colors -- are also essential components of everyday language, used by companies, consumers and citizens to share information. See Kozinski, Trademarks Unplugged, 68 N.Y.U. L. REV. 960, 973 (1993) ("[trademarks] often provide some of our most vivid metaphors, as well as the most compelling political imagery in political campaigns . . .. [A]llowing the trademark holder to restrict their use implicates our collective interest in free and open communication."); see also Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 WIS. L. REV. 158, 195-96 ("Famous trademarks . . . become an important, perhaps at times indispensable, part of the public vocabulary. Rules restricting the use of well-known trademarks may therefore restrict the communication of ideas.").

Thus, legislators and courts have taken care to ensure that trademark rights are not used to impose monopolies on language and intrude on First Amendment values. See, e.g., Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989) ("Because overextension of

Lanham Act restrictions . . . might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict."); CPC Int'l v. Skippy, Inc., 214 F.3d 456, 462 (4th Cir. 2000)("[i]t is important that trademarks not be 'transformed from rights against unfair competition to rights to control language.'" (quoting Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1710-11 (1999)).

This case requires similar care. A large law firm with overwhelming resources seeks to use trademark law to prevent a small real estate news site from conveying accurate information about the firm and its associates. If Jones Day's trademark theory were correct, no news site or blog could use marks to identify markholders, or links to point to further information about the markholders, without risking a lawsuit. But Jones Day is wrong. The use in question is clearly a fair use protected by the First Amendment and by the Lanham Act. Moreover, this law firm, as powerful as it may be, is hardly famous enough to deserve the extraordinary protection of the federal antidilution law. Jones Day's federal claims are baseless and amici urge the Court to dismiss them.

INTERESTS OF AMICI CURIAE

The interests of amici curiae are set forth in the accompanying motion for leave to file this brief, and are not repeated here.

I. JONES DAY HAS NOT STATED AN INFRINGEMENT CLAIM.

Jones Day argues first that its trademark is infringed by the use of its name in the headline of the web pages about its associates' real estate purchases, and the embedding of hyperlinks (in the names of the associates as they appear in the articles about their purchases), that lead to the associates' biographies on the Jones Day web site. Plaintiff's claim depends on its ability to show that BlockShopper's use of the mark creates a

2

"likelihood of confusion" about "the origin of the product in the eyes of the purchasing public." Sullivan v. CBS Corp., 385 F.3d 772, 777 (7th Cir. 2004). Or, as the Ninth Circuit put it, "It is the source-denoting function which trademark laws protect, and nothing more." Mattel, Inc. v. MCA Records, 296 F.3d 894, 900-901 (9th Cir. 2002). Although Jones Day's complaint includes allegations that track this language -- it alleges in ¶¶ 38 and 44 that BlockShopper's use of its marks "is likely to cause confusion among consumers about the source or origin" of the BlockShopper web site -- the allegations cannot withstand a motion to dismiss for three reasons.

A. Jones Day's Exhibits Contradict Likelihood of Confusion.

When a document is attached to or referenced in the complaint, it forms part of the complaint and hence may be considered in deciding a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure. IBEW Local 15 v. Exelon Corp., 495 F.3d 779, 782 (7th Cir. 2007). If the document contradicts the allegations in the complaint, it is the document that controls, not the bare allegations. Forrest v. Universal Savings Bank, 507 F.3d 540, 542 (7th Cir. 2007). "A court is not bound by the party's characterization of an exhibit and may independently examine and form its own opinions about the document." Id.

In this case, the exhibits attached to the complaint flatly contradict the allegations of likely confusion. No reasonable consumers could look at the headline in the article about Dan Malone's purchase of a condominium, "Jones Day attorney spends $463K on Buckingham Pl.," or the headline about Jacob Tiedt's transaction, "New Jones Day lawyer spends $760K on Sheffield," and be confused about whether they were looking at a web site sponsored by Jones Day. The use of the Jones Day name is no more confusing

-3-

about the source of that article than the use of Jones Day's name in the caption on the first page of this brief. Similarly, Internet users are generally aware that web sites link to other web sites with which they have no association, and the mere fact that a hyperlink may be followed from the name "Malone" to the biographical page about him on Jones Day's web site would not cause any reasonable viewer to think that the BlockShopper site is sponsored by Jones Day. Linking is what web sites do -- that is, after all, why it is called the "World Wide Web."

Perhaps, in some contexts, the "anchor text" -- the text in which the link is embedded -- or the text surrounding that anchor text, might misleadingly suggest sponsorship for the web site (for example, if the text said, "go here to see the home page of this site's owner," and the hyperlink embedded in the word "here" were to the Jones Day's web site). The same could be true of the headline of an article, such as "Jones Day sponsors this web page." But Jones Day has not alleged any such facts.1

B. Jones Day's Allegations Lack the Specificity Needed for a Trademark
Claim Against Noncommercial Speech Under the First Amendment.

Even if the exhibits did not contradict the allegations of likelihood of confusion, Jones Day's allegations are insufficiently specific to state a claim in light of the First Amendment rights implicated by this action, and the many court decisions that construe the trademark laws narrowly to avoid conflict with First Amendment rights. Courts have

4

repeatedly read the Lanham Act's language as limiting the trademark laws to "commercial" uses, hence avoiding conflict with First Amendment protection for noncommercial speech. Bosley Medical v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005); Taubman v. WebFeats, 319 F.3d 770, 774 (6th Cir. 2003); CPC Int'l v. Skippy, 214 F.3d 456, 461 (4th Cir. 2000). When state trademark laws do not expressly exempt noncommercial speech, they should be read in pari materia with the Lanham Act that does protect such speech, or else they are unconstitutional as applied to noncommercial uses of protected marks. L.L. Bean v. Drake Publishers, 811 F.2d 26, 33 (1st Cir. 1987); ACLU of Georgia v. Miller, 977 F. Supp. 1228, 1233 (N.D. Ga. 1997); Lighthawk v. Robertson, 812 F. Supp. 1095, 1097-1101 (W.D. Wash. 1993).

Jones Day apparently seeks to plead its way around the First Amendment by alleging that BlockShopper solicits advertising for its web site, but that fact neither makes the expression on the web site commercial speech, nor authorizes application of commercial speech standards to limit its expression. Commercial speech is speech that does no more than propose a commercial transaction. United States v. United Foods, 533 U.S. 405, 409 (2001); Bolger v. Youngs Drug Prod. Corp., 463 U.S. 60, 66 (1983). The fact that noncommercial statements are made in a medium which itself carries advertising does not mean that the web site may be regulated under the standards that apply to commercial speech. "It is well settled that a speaker's rights are not lost simply because compensation is received." Riley v. Nat'l Fed'n of the Blind, 487 U.S. 781, 801 (1988). After all, it was a paid advertisement that was held to be protected, noncommercial speech in New York Times v. Sullivan, 376 U.S. 254, 265-266 (1964).

-5-

The Seventh Circuit expressly endorsed this approach in Ayres v. Chicago, 125 F.3d 1010, 1014 (7th Cir. 1997), stating, "T-shirts are a medium of expression prima facie protected by the . . . First Amendment, and they do not lose their protection by being sold rather than given away." Id. at 1015. The court distinguished government limitations on "the sale of goods that are not themselves forms of protected speech." Id.

The government interest in avoiding consumer confusion about the source of goods and services, which is protected by the trademark laws, implicate the same distinction. Courts of appeals have developed various approaches to accommodate such free speech concerns. For example, in Procter & Gamble Co. v. Amway Corp., 242 F.3d 539, 552-553 (5th Cir. 2001), the court drew a distinction based on whether speakers had an economic motive for the speech about the trademark holder, holding that the Lanham Act could apply if the purpose of the speech itself was to sell more products, but not if the primary purpose of the speech was to express criticism of the trademark holder. And Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989), accommodated the First Amendment interests of authors and artists through a rule governing infringement claims against artistic or literary products made for sale, such as mass publications, movies and musical recordings. Under this approach, the Lanham Act cannot be applied unless the trademark in the title "has no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Id. (emphasis added); Mattel v. Walking Mt. Prods., 353 F.3d 792, 807 (9th Cir. 2003), ETW Corp. v. Jireh Pub., 332 F.3d 915, 920 (6th Cir. 2003); Westchester Media v. PRL USA Holdings, 214 F.3d 658, 664 (5th Cir. 2000).

-6-

Because First Amendment protection for the right to engage in the journalistic enterprise of reporting on real estate transactions found on the public record is at least as great as the protection for artistic works, the same standard should apply to such speech. A standard that rests on the speaker's subjective intent and on the noncommercial nature of the speech is particularly appropriate in a case like this one, given the huge expense of standard trademark litigation, AIPLA, Report of the Economic Survey 22 (2005), and the danger that a start-up like BlockShopper could be worn down by the cost of litigating against a big law firm. "A lawsuit no doubt may be used as a powerful instrument of coercion or retaliation." Bill Johnson's Restaurants v. NLRB, 461 U.S. 731, 440 (1983). Cf. Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 214 (2000) (need for clear rules in trademark law to allow summary disposition of anti-competitive strike suits). This concern demands clear rules protecting web sites like BlockShopper.com.

The Rogers test applies most readily to the use of the name "Jones Day" in the title of the two articles about real estate purchases by Jones Day associates, but because the purpose of the Rogers test is to avoid a conflict between trademark law and the First Amendment rights of artists, it makes sense to apply that test more generally to any use of a trademark in furtherance of non-commercial speech. Similarly, the Amway test can be readily applied in a case like this one because it helps protect the First Amendment rights of non-commercial speakers (even those working for a commercial enterprise) against over-extension of trademark law.

Jones Day's allegations cannot withstand a Rule 12(b)(6) motion to dismiss under either test. The allegations do not survive Rogers because Jones Day has not alleged that BlockShopper has used the Jones Day mark in ways that have no relevance to the

-7-

expression in which they are used. The headline of the article tells readers that the web page is about the activity of a Jones Day associate, and the hyperlink to the Jones Day web site points Internet users to a particular page where they can learn more about the associate in whose name the hyperlink is embedded. The allegations do not survive Amway because although Jones Day alleges that defendants intend to obtain advertising for their web site, there is no allegation that the purpose of the specific speech at issue under the trademark laws -- the headline and the hyperlink -- was to steal business from Jones Day by confusing Internet viewers about the source of the BlockShopper web site. Accordingly, the complaint for infringement and unfair competition should be dismissed.

C. BlockShopper's Use Of the Jones Day Mark Is A Fair Use.

Finally, the defense of nominative fair use protects BlockShopper's use of the Jones Day name. Century 21 Real Estate Corp. v. Lendingtree, 425 F.3d 211, 218-221 (3d Cir. 2005); New Kids on the Block v. New America Pub., 971 F.2d 302, 308 (9th Cir.1992). Nominative fair use applies where, as here, "a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product . . . ." Cairns v. Franklin Mint Co., 292 F.3d 1139, 1152 n.8 (9th Cir. 2002) (emphasis in original), (citing New Kids on the Block v. New Am. Publ'g, 971 F.2d 302, 306 (9th Cir. 1992)); see also Illinois High School Ass'n v. GTE Vantage, 99 F.3d 244, 246 (7th Cir. 1996) ("IHSA could not have sued Musburger or CBS for referring to 'March Madness' . . . even in advertising if the term were used merely for identification.") (citing New Kids, 971 F.2d at 308).

The nominative fair use doctrine balances markholders' limited property rights in a particular word, phrase or symbol against the public's need to use a mark to refer to

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their products, and prevents markholders from using trademark rights to police any and all references to their products and services. As the Ninth Circuit put it, "Most useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark." New Kids, 971 F.2d at 306-07.

Under the nominative fair use test, a commercial user must show that (1) the markholders' product or service in question is not readily identifiable without use of the trademark; (2) only so much of the mark or marks was used as is reasonably necessary to identify the product or service; and (3) the user did nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Cairns, supra, 292 F.3d at 1152. The Seventh Circuit has not addressed nominative fair use, but several judges of this Court embrace it. Ty, Inc. v. Publications Int'l, 2005 WL 464688 (N.D.Ill. Feb. 25, 2005) at * 5 to *7; World Impressions v. McDonald's Corp., 235 F.Supp.2d 831, 842-843 (N.D. Ill. 2002); R.J. Reynolds Tobacco Co. v. Premium Tobacco Stores, 2001 WL 747422 (N.D. Ill. June 29, 2001). The 2006 Lanham Act amendments expressly incorporated the doctrine as fair use. 15 U.S.C. § 1125(c)(3)(A).

Jones Day's own complaint and exhibits establish the nominative fair use defense barring Jones Day's trademark claim. The Jones Day name is used to identify the employer of the two associates who engaged in the real estate transactions, and to express the hyperlink that takes an internet user to the particular page on the Jones Day web site where their biographical sketches can be found. Complaint Ex. D. It would be very difficult to refer to that employer without use of the mark -- "a large multinational law firm" would hardly suffice. See generally New Kids, 971 F.2d at 307 ("For example, one

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might refer to 'the two-time world champions' or 'the professional basketball team from Chicago,' but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls."). BlockShopper has used only so much of the plaintiff's mark as is necessary to accomplish those legitimate objectives. For example, unlike the counterclaim defendant in World Impressions, defendants used the words "Jones Day" only in the same typescript as the rest of their headlines, rather than using the distinctive lettering shown in Exhibit A to the Complaint. And, defendants have not otherwise implied a sponsorship by or affiliation with Jones Day. Indeed, BlockShopper refers to any number of employers in its articles, from hospitals to chemical companies. Complaint, Ex. C. It is not reasonable to infer that BlockShopper readers would suppose that BlockShopper is affiliated with any of these employers, any more than a reader might imagine that Apple, Inc. endorsed a profile about Steve Jobs on a finance website -- even if information for the profile were taken from an Apple annual report and linked to Apple's web site. Nor does a link to Jones Day change the analysis: "The mere appearance on a website of a hyperlink to another website will not lead a web user to conclude that the owner of the site he is visiting is associated with the owner of the linked site." Knight-McConnell v. Cummins, 2004 WL 1713824, *2 (S.D.N.Y. July 29, 2004).

II. JONES DAY HAS NOT STATED A CLAIM FOR DILUTION.

Neither can Jones Day state a cause of action for dilution. As a threshold matter, its mark is not sufficiently famous under a recent amendment to federal antidilution law. And even if it were, no less than three statutory defenses doom the dilution claim.

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A. "Jones Day" Is Not A Famous Mark Under the Newly Amended
Lanham Act.

Amici acknowledge that Jones Day is famous within a large subset of the public: lawyers, many of the people who hire them, and judges. But that is not the kind of fame that merits protection under the Lanham Act's antidilution provisions. In 2006, the Lanham Act was amended to clarify that a mark is only "famous" if it is "widely recognized by the general consuming public of the United States" as a designation of the source of goods or services of the mark's owner. Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat. 1730 (2006); see also Top Tobacco, L.P. v. North Atlantic Operating Co., 509 F.3d 380, 384 (7th Cir. 2007) (recognizing that the 2006 amendments "eliminated any possibility of 'niche fame'"). Thus, marks that merely enjoy "niche fame" in specialized markets can no longer satisfy the "difficult and demanding" requirements of federal antidilution law. McCarthy, McCarthy On Trademarks and Unfair Competition, § 24:104 (4th ed. 2008)

The revision "made it clear to courts that dilution was a law to be applied sparingly." Dogan & Lemley, The Trademark Use Requirement in Dilution Cases, 24 SANTA CLARA COMP. & HIGH TECH. L J. 541, 548 (2007). That sparing application is essential to prevent markholders from wielding dilution claims, which can be brought against even non-confusing and noncompetitive uses, as weapons to suppress speech, and interfere with the efficient operation of the marketplace. Id. at 543-44. Thus, it is crucial that courts follow Congress's mandate to limit dilution doctrine to truly famous marks. See McCarthy, § 24:68 ("The antidilution remedy was intended to apply only in unusual

11

and extraordinary cases [and] be reserved for a small, elite group of truly renowned marks.").2

Jones Day's allegations do not support its claim to true fame. Virtually every factual allegation Jones Day offers to support its allegation of famousness is based on surveys of lawyers, corporations, and Jones Day clients. Complaint ¶¶ 15-19. These allegations go to support famousness within a niche market -- the market for legal services -- but not with the general public. Even the injunction against diluting behavior that Jones Day cites, id. ¶ 18, was issued in 2005, before the Lanham Act was revised to exclude niche fame.

The only allegation that even comes close to supporting Jones Day's claim of famousness is a purely conclusory assertion that, as a result of its unspecified marketing efforts, "the general public" has come to associate "high quality legal services" with the Jones Day firm. Id. ¶ 16. But this simple assertion falls short of the new statutory definition of famousness, even at the pleading stage. On a motion to dismiss, the Court must accept as true all well-pleaded allegations in the complaint as well as inferences reasonably drawn from them, but it need not accept "conclusory allegations concerning the legal effect of facts set out in the complaint." Baxter by Baxter v. Vigo County School Corp., 26 F.3d 728, 730 (7th Cir. 1994); see also Challenger v. Local Union No. 1, 619 F.2d 645, 649 (7th Cir. 1980) ("A motion to dismiss admits only allegations of fact, not

12

legal conclusions."). Further, the factual allegations must be enough to "raise a right to relief above the speculative level . . . on the assumption that all the allegations in the complaint are true (even if doubtful in fact.)" Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1965 (2007) (citation omitted).

Jones Day may be famous on LaSalle Street and even Wall Street, but it is not reasonable to infer that the firm is also known on Main Street. The dilution claim should be dismissed for this reason alone.

B. The Challenged Speech Is Protected by the NonCommercial Speech,
News Reporting and Fair Use Exemptions.

Even if Jones Day has alleged famousness within the meaning of the Lanham Act, three statutory defenses bar its dilution claims.

First, as explained above at 8-10, BlockShopper's use of the mark is clearly nominative fair use, and therefore exempt from liability. 15 USC § 1125(c)(3)(A).

Second, Section 1125(c)(3)(B) exempts "all forms of news reporting and news commentary" from federal anti-dilution claims. 15 U.S.C. § 1125(c)(B) (emphasis added) cf. Illinois High School Ass'n, 99 F.3d at 246 ("IHSA could not have sued Musburger or CBS for referring to 'March Madness' in a news program (including a program of sports news)) (citing L.L. Bean v. Drake Publishers, 811 F.2d 26 (1st Cir. 1987). This exemption was crafted for the precise reason highlighted here: absent such a safe harbor, it would be difficult for any source of which the trademark owner disapproves to provide accurate information to the public. Further, the exemption applies to any article that "is written for the purpose of conveying information to the public" -- whether the article is published by a less traditional online news source or brick and mortar media. Bidzirk LLC v. Smith, 2007 WL 3119445 (D.S.C. Oct. 22, 2007) (news reporting exemption

13

applied to article on blog regarding eBay auction listing company); see also generally Lovell v. Griffin, 303 U.S. 444, 452 (1938) ("[t]he press in its historic connotation comprehends every sort of publication which affords a vehicle of information and opinion."); von Bulow v. von Bulow , 811 F.2d 136, 144 (2d Cir. 1987) (newsgatherer's privilege applies if reporter had intent to use materials to disseminate information to the public and such intent existed at the inception of the newsgathering process); Shoen v. Shoen, 5 F.3d 1289, 1293 (9th Cir. 1993) (same). Indeed, courts in this Circuit have not hesitated to apply traditional news privileges to "nontraditional" reporters. See, e.g. Desai v. Hersh, 954 F.2d 1408, 1412 n. 3 (7th Cir. 1992) (finding the reporter's privilege applicable to book author under Illinois' statutory definition of reporter); Builders Assoc. of Greater Chicago v. County of Cook, 1998 WL 111702, *5 (N.D. Ill. Mar. 12, 1998) (holding advocacy group's information-gathering for political purposes as privileged where it was gathered with the intent to disseminate the information to the public).

BlockShopper's articles provide "real estate news and market data" and "daily news stories" about who is "buying and selling" real estate. Complaint, Ex. C. BlockShopper publishes statistics on local real estate sales and foreclosures, id., as well as information about the people who are buying and selling. Id., Exs. C, D. In short, it conveys information to the public. The fact that it accepts advertising does not change that primary activity, any more than the New York Times' reliance on advertising to pay the bills would deprive the newspaper of the news reporting exemption.

Third, for reasons set forth above at 5-6, the speech at issue is noncommercial for purposes of the Lanham Act. It is therefore exempt from liability under section 43(c)(3)(C), which protects "any noncommercial use of a mark." 15 U.S.C. §

14

1125(c)(3)(C); see also Mattel Inc. v. MCA Records, 296 F.3d 894, 907 (9th Cir. 2002) (use of Barbie trademark in a song fell within noncommercial use exemption even though song was marketed for profit). 3

BlockShopper's speech lies firmly within the section 1125(c)(3) safe harbors. Jones Day has not and cannot state a claim for dilution.

CONCLUSION

Defendants' motion to dismiss should be granted.

Respectfully submitted,

/s/ Robert S. Libman
Robert S. Libman

Miner, Barnhill & Galland
[address, phone]

Paul Alan Levy (motion for pro hac vice admission pending)
Public Citizen Litigation Group
[address, phone]

Corynne McSherry
Electronic Frontier Foundation
[address, phone]


1 Jones Day's complaint also seems to allege that defendants infringed its mark by placing on its web pages about the two associates facts (and photographs) that it culled from the biography pages on Jones Day's own web site. However, there is no allegation that its web site's contents constitute trademarks or have secondary meaning. This argument appears to be at odds with Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2004), which rejected an attempt to use trademark law to pursue a claim for copying a work on which the copyright had expired. If plaintiff can show that defendants took copyrighted expression and not merely facts, it should allege a copyright claim. It should not pass off potential copyright problems as a trademark claim.

2 Indeed, the International Trademark Association, the drafter and originator of the Trademark Dilution Revision Act, stressed this very point in testimony before Congress supporting the Act: "dilution is meant to be a special remedy for only a narrow class of famous marks, and against only a narrow class of uses . . . ." Testimony of Anne Gundelfinger, President, International Trademark Association, before House Subcommittee on the Courts, the Internet and Intellectual Property, Committee on the Judiciary, Feb. 17, 2005 (109th Cong. 1st Sess.), 2005 WL 408425.

3 Amici do not discuss the complaint's state law claims, except to note their skepticism that they can survive First Amendment scrutiny, just as the federal trademark claims would offend the First Amendment even if otherwise valid under trademark law.

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UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

JONES DAY,

Plaintiff,

v. BlockShopper LLC et al,

Defendants.

_______________________________________

Case No. 08CV4572

Judge Darrah

________________________________________

JONES DAY'S OPPOSITION TO ELECTRONIC FRONTIER FOUNDATION, PUBLIC
CITIZEN, PUBLIC KNOWLEDGE, AND CITIZEN MEDIA LAW PROJECT'S
MOTION FOR LEAVE TO FILE BRIEF AS AMICI CURIAE

The Court of Appeals for the Seventh Circuit has provided clear guidelines as to when to even consider permitting the filing of an amicus curiae brief. The proposed brief attached to Electronic Frontier Foundation ("EFF"), Public Citizen, Public Knowledge, and Citizen Media Law Project's (collectively, the "Movants") Motion for Leave to File Brief as Amici Curiae (the "Motion") does not satisfy any of the grounds that the Seventh Circuit has outlined as legitimate reasons for considering such a brief. Rather, it will do nothing more than inject partisan, interest-group views into the judicial process while failing to assist the Court with any area of fact or law not covered by Defendants' Motion to Dismiss.

I. Partisan, Interest Group Amicus Briefs are Disfavored

This Court's decision of whether to allow the filing of an amicus curiae brief is "a matter of judicial grace." Nat'l Org. for Women, Inc. v. Scheidler, 223 F.3d 615, 616 (7th Cir. 2000). It is well-established that amicus briefs should not be partisan in nature. See Ryan v. Commodity Futures Trading Comm'n, 125 F.3d 1062, 1063 (7th Cir. 1997) ("The term 'amicus curiae'

1

means friend of the court, not friend of the party."). 1 Amicus briefs injecting "interest-group politics" into the judicial process are also disfavored. See Nat'l Org. for Women, 223 F.3d at 617; Sierra Club, Inc. v. Envtl. Prot. Agency, 358 F.3d 516, 518 (7th Cir. 2004) ("Courts value submissions not to see how the interest groups line up, but to learn about facts and legal perspectives that the litigants have not adequately developed.").

By their own admission, the Movants are partisan interest groups dedicated to opposing perceived encroachments on free speech. (See Motion at ¶¶ 2-5). Their fifteen page amici brief will, should the Court let it be filed, be no "friend of the court" -- instead, it will simply duplicate the Defendants' twenty-five page argument and disparage the Plaintiff's. Courts in this district have refused amicus briefs for this reason alone. See Leigh v. Engle, 535 F. Supp. 418, 420 (N.D. Ill. 1982) (Leighton, J.) ("[I]f the proffer comes from an individual with a partisan, rather than impartial view, the motion for leave to file an amicus brief is to be denied."); Kostas Mechmet v. Four Seasons Hotel, 1985 WL 766, at *1 (N.D. Ill. April 25, 1985) (Aspen, J.) ("[W]e should be reluctant to hear from amici where, as here, one party objects and the amici are so strongly aligned with the other side such that that side can, in effect, file multiple briefs in support of its position."). The role of the district court as the ultimate finder of fact heightens this sensitivity. See Tiara Corp. v. Ullengerg Corp., 1987 WL 16612, at *2 (N.D. Ill. September 1, 1987) (Kocoras, J.) ("Since the principal function of the district court is resolving issues of

2

fact, district courts should go slow in accepting amicus briefs without the joint consent of the parties unless the amicus has a special interest or unless the court feels existing counsel need assistance."); Leigh, 535 F. Supp. at 422 (noting the "unfairness" that would result from partisan amicus briefs during summary judgment). Movants' amicus trips all of these wires: a partisan brief from interest groups offered to a district court.

II. The Movants' Amicus Brief Fails to Meet Any of the Categories of Permissible Briefs set forth by the Seventh Circuit

In the Seventh Circuit, amicus briefs are allowed only "when a party is not represented competently ..., when the amicus has an interest in some other case that may be affected by the decision in the present case ..., or when the amicus has unique information or perspective that can help the court beyond the help that the lawyers for the parties are able to provide." Ryan, 125 F.3d at 1063. "Otherwise, leave to file an amicus curiae brief should be denied." Id. Movants' brief does not fall into any of the three categories.

A. "when a party is not represented competently"
Defendants in this case are represented competently. Defendants' counsel does not require assistance in articulating its arguments.
B. "when the amicus has an interest in some other case that may be affected by the decision in the present case"

Movants have not articulated any interest in a separate case that may be affected by the outcome of the present litigation.

C. "when the amicus has unique information or perspective that can help the court beyond the help that the lawyers for the parties are able to provide"

As a partisan, self-serving brief, Movants' amicus fails to meet this criterion as well. Movants' amicus brief does not possess "unique information or perspective" helpful to the Court beyond what Defendants' counsel are able to offer for their clients. Movants' brief is instead duplicative of the arguments made in Defendants' Motion to Dismiss, as is evident by a

3

comparison of the two briefs' argument headings. Four of the five headings in the Motion are duplicative of arguments covered Defendants' Motion to Dismiss, and the fifth raises an issue that Defendants did not even think appropriate to raise.2Courts in this circuit have declined to entertain amicus briefs that merely repeat what has been said before. See Ryan, 125 F.3d at 1064 ("The amicus brief does not tell us anything we don't know already."); Nat'l Org. for Women, 223 F.3d at 617 ("[N]one of the rejected briefs presents considerations of fact, law, or policy overlooked by the appellants.").

EFF seems to argue that its experience with First Amendment litigation gives them some "unique information or perspective" that is helpful to the Court. (See Motion at ¶ 2 ("As a leading advocate for these groups, EFF has a perspective that is not represented by the parties.")). EFF has not explained how that perspective is any different than Defendants'. Indeed, Movants' can offer no additional facts or insights to the Court -- only an unnecessary regurgitation of caselaw that the Defendants already cite in their Motion to Dismiss. Indeed, "it is very rare for an amicus curiae brief to do more than repeat in somewhat different language the arguments in the brief of the party whom the amicus is supporting." Voices for Choices v. Illinois Bell Tel. Co., 339 F.3d 542, 545 (7th Cir. 2003) (denying motions for leave filed by the Speaker of the Illinois House of Representatives and the President of the Illinois Senate). Movants' brief will be no exception, and leave to file should be denied. Id. at 544 ("The judges of this court ... will deny permission to file an amicus brief that essentially duplicates a party's brief.").

4

III. Cases in the Motion are Distinguishable

Each of the three cases cited by the Movants in paragraph 6 of their Motion are distinguishable from the present case. None of the motions for leave to file amicus in those cases were opposed. In two of the cases -- Chicago Lawyer's Comm. for Civil Rights Under the Law, Inc. v. Craigslist, Inc., 461 F. Supp. 2d 681 (N.D. Ill. 2006) and Sherman v. Township High School Dist. 214, 540 F. Supp. 2d 985 (N.D. Ill. 2008) -- amicus briefs were filed on behalf of both sides of the dispute. In the third case -- NMHG Fin. Services, Inc. v. Wickes Inc., 2007 WL 3087146 (N.D. Ill. Oct. 17, 2007) -- the party moving for leave to file amicus was involved in a related litigation that would be affected by the case between NMHG and Wickes.

5

IV. Conclusion

For the foregoing reasons, Movants' Motion for Leave to File Brief as Amici Curiae should be denied. Should the Court, in the exercise of its discretion, be inclined to grant the Motion, Jones Day requests (a) it be granted ten pages to respond to Movants' fifteen page brief, (b) this response be due on October 14, 2008 (seven days after the presentment date of Movants' Motion), and (c) in order to not adversely affect the timetable in this Court's Initial Scheduling Order, Movants not be allowed to file any reply.

Dated: September 23, 2008

Respectfully submitted,

By: /s/ Paul W. Schroeder
Paul W. Schroeder
Illinois State Bar No. 2509113
[email]
Irene S. Fiorentinos
Illinois State Bar No. 6188533
[email]
Brent P. Ray
Illinois State Bar No. 6291911
[email]
JONES DAY
[address, phone, fax, email]

Attorneys for Plaintiff Jones Day

6

CERTIFICATE OF SERVICE

I hereby certify that on September 23, 2008, I electronically filed the foregoing Opposition to Public Citizen and EFF's Motion for Leave to File Brief as Amici Curiae with the Clerk of the Court using the CM/ECF system, which will send notification of such filing to the following at their e-mail address on file with the Court:

Martin B. Carroll
[email]
Daniel S. Hefter
[email]
Tracy Katz Muhl
[email]
Adam A. Hachikian
[email]
FOX, HEFTER, SWIBEL, LEVIN & CARROLL LLP
[address, phone]
Attorneys for Defendant

/s/ Paul W. Schroeder
One of the Attorneys for Jones Day


1 Public Citizen, in its Consumer Law and Policy Blog, has challenged the Court's neutrality by describing the Court as being on Jones Day's side. Public Citizen has supported this assertion by bluntly misstating the public record in this matter. In an article entitled Trademark Abuse by Jones Day to Suppress Free Speech (posted on September 12, 2008 and attached hereto as Exhibit 1), Paul Alan Levy (who has moved pro hac vice to appear in this case on behalf of the Movants), although not present at the August 26, 2008 settlement conference, which was held in open court but for which there was no transcript, said:

Judge Darrah reportedly tried to encourage the defendants to give up their rights by saying 'Do you know, young man, how much money it's going to cost you to defend yourselves against Jones Day?' Not surprisingly after the judge announced which side he was on, Blockshopper stipulated to a TRO barring any links to Jones Day's web site or mentions of Jones Day on BlockShopper's web site.
Putting aside whether or not the Court made this statement, which hardly evidences a lack of neutrality, the fact is that Defendants had agreed to the TRO before the parties ever appeared before the Court. As the Stipulation and Order (docket entry no. 20, attached as Exhibit 2) shows and as confirmed by the transcript of August 19, 2008 (attached as Exhibit 3), on the day set for hearing on Jones Day's motion for a temporary restraining order, the parties first appeared before the Court with an already executed stipulation, thus avoiding the need for any TRO hearing.

2 The Motion's arguments in Sections I.A, I.B, I.C, and II.B are duplicative. The Motion's outlying topic under Section II.A -- "'Jones Day' is Not a Famous Mark Under the Newly Amended Lanham Act" -- is not an argument Defendants chose to raise in their Motion to Dismiss. The partisan, interest-group nature of the Motion is therefore compounded by its inclusion of an argument deemed irrelevant to Defendants' Motion to Dismiss, and for good reason: whether a mark is "famous" is an issue of fact not suitable for a motion to dismiss.

7

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************************************

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

JONES DAY,

Plaintiff,

v. BlockShopper LLC, et al.

Defendants.

_______________________________________

Case No. 08CV4572

Judge Darrah

________________________________________

REPLY MEMORANDUM IN SUPPORT OF
MOTION FOR LEAVE TO FILE BRIEF AS AMICI CURIAE

Jones Day makes several points opposing the motion for leave to file as amici curiae, none of them meritorious.

1. Citing three opinions by Judge Posner, Jones Day argues, Br. 1-2, 3, that amicus briefs are a matter of grace, and such briefs should rarely be allowed because they are often filed by "partisan interest groups" and duplicate arguments made by parties whom the briefs support. There is no question that opinions issued by Judge Posner, particularly in his capacity as motions judge, reflect his well-known view that amicus briefs rarely tell him anything he did not know already, but those opinions are the exception, not the rule. Westlaw reveals more than a half-dozen reported Seventh Circuit decisions since August 1, 2008 alone where amicus briefs were allowed, and none where leave was denied.1In this case, the party supported is a business, but the amicus brief has

been submitted not by partisan groups but by four public interest groups with a long track record of defending free speech online and opposing abusive intellectual property claims. Jones Day also cites three cases in which district court judges denied motions for leave to file as amicus curiae, Br. 2-3, but in two of those cases, the amicus sought to introduce evidence that the party supported was not submitting, Tiara Corp. v. Ullengerg Corp., 1987 WL 16612 (N.D. Ill. Sept.1, 1987), or addressed "facts peculiar to this case" rather than more general principles of law. Leigh v. Engle, 535 F. Supp. 418, 420 (N.D. Ill. 1982).

2. Jones Day objects, Br. 3-4 and n.2, that the brief should be refused both because Sections I(A), (B) and (C), and II(B) merely duplicate arguments by defendants, and because Section II(A) makes an argument that defendants do not make. If Jones Day were correct, amicus briefs should never be allowed because any argument by amicus will either duplicate an argument by a party or make an argument that the party did not make. But as noted at the outset of this brief, acceptance of amicus briefs is the rule and denial very much the exception. Moreover, if amici's brief were duplicative, Jones Day would not need an additional ten pages to address amici's arguments. At any rate, a simple comparison of BlockShopper's brief and amici's brief resolves the question. Although both briefs may point out the obvious that Jones Day's trademark claims founder on free speech, fair use and other grounds the amicus brief sheds a different light on the basic arguments made by BlockShopper, closely attuned to the nature of materials that can and cannot be considered on a motion to dismiss under Rule 12(b)(6), based on the distinct concerns and unique perspective of the

2

four public interest consumer groups.2

3. Jones Day argues, Br. 4 n.2, that consideration of Section II(A) of the amicus brief should be precluded because whether a mark is "famous" can never be decided under Rule 12(b)(6). However, Section II(A) points out not only that most of Jones Day's allegations about public awareness of its mark are based on "niche fame" in the legal services industry and the big companies that typically hire Jones Day, but also that the one allegation apparently directed at knowledge of Jones Day's mark beyond that niche simply does not allege, as required by the Lanham Act as amended in 2006, that the mark is "widely recognized by the general consuming public of the United States" (emphasis added). This argument is cognizable under Rule 12(b)(6). To be sure, Jones Day may try to amend its complaint to preserve its trademark dilution claim, but that claim cannot survive as currently pleaded.

4. Finally, Jones Day takes issue with statements made by counsel for Public Citizen in a blog post published before Public Citizen entered the case, commenting on the following reported statement by the Court, "'Do you know, young man, how much money it's going to cost you to defend yourselves against Jones Day?" Br. 2 n.1. Although Jones Day goes out of its way to avoid acknowledging that the statement was made at all, it also says that the statement must have been

-3-

made on August 26, 2008, and hence could not have influenced defendants' decision on August 19, 2008, to stipulate to a two-month temporary restraining order ("TRO") in lieu of a TRO hearing. We accept Jones Day's implicit concession, and acknowledge that the initial stipulated TRO could not have been affected. Jones Day does not explain, however, how these facts are relevant to the grant or denial of leave to file an amicus brief. Presumably Jones Day does not argue that the exercise of a citizen's right to comment on a judicial proceeding should be punished by denial of a later request to participate in that proceeding. See In re Snyder, 472 U.S. 634 (1985).

CONCLUSION

The motion of Electronic Frontier Foundation, Public Citizen, Citizen Media Law Project, and Public Knowledge for leave to file as amici curiae should be granted.

Respectfully submitted,

/s/ Robert S. Libman
Robert S. Libman

Miner, Barnhill & Galland
[address, phone]

Paul Alan Levy (motion for pro hac vice admission pending)
Public Citizen Litigation Group
[address, phone]

Corynne McSherry
Electronic Frontier Foundation
[address, phone]

September 24, 2008


1 Steelworkers v. NLRB, -- F.3d --, 2008 WL 4192999 at *5 (7th Cir. 2008); Germano v. International Profit Ass'n, -- F.3d --, 2008 WL 4191269 at *5 (7th Cir. 2008); Barnes v. Black, -- F.3d --, 2008 WL 4206794 at *4 (7th Cir. 2008); U.S. v. Chube II, 538 F.3d 693, 694 (7th Cir. 2008); In re Comdisco, 538 F.3d 647, 648 (7th Cir. 2008); Baude v. Heath, 538 F.3d 608, 610, 615 (7th Cir. 2008); Tammi v. Porsche Cars North America, 536 F.3d 702, 713 (7th Cir 2008). Only one of the three Judge Posner opinions cited by Jones Day was joined by other judges; in that case, an amicus admitted that its brief was funded by a party, and that party suggested that amicus support was needed because it was denied leave to file a long brief. No such sharp practices are present here.

2 Whether Jones Day needs more pages, or whether the 2200 lawyers at Jones Day (Complaint ¶ 6) need an extra week, to address merely duplicative arguments, is another matter within judicial grace. We note that although Jones Day seeks time to respond following the presentment date of the argument, that date was set because it was the first motion date that both local counsel and lead counsel could be present. Now that the motion for leave to file has been fully briefed, proposed amici waive argument unless the Court has questions for counsel. We have grave concern, however, about Jones Day's demand that BlockShopper should be denied any reply to Jones Day's opposition. In light of Jones Day's filing of a blog post as Exhibit A, we point to bullet point 3 on page 2 as particularly relevant to its quest for an opportunity to make legal arguments to which no response is allowed.

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