Thursday, December 18, 2008

Spiegel v. Spiegel: internet coexistence is possible

H. Jay Spiegel & Associates, P.C. v. Spiegel, 2008 WL 5211784 (E.D. Va.)

This local case caught my eye because of the unusual result: preliminary relief denied despite the court’s conclusion that consumer confusion was fairly likely.

Plaintiff, a law firm specializing in patents and trademarks, registered in 1999. The domain name was registered on the Supplemental Register in 2000, and plaintiff applied for registration on the Principal Register after five consecutive years of use; that registration issued in 2006.

In 2008, defendant, an attorney with a sole practice focusing on employment law, created a website at Plaintiff sued and asked for a preliminary injunction shutting down the website.

You know the plaintiff has an uphill climb when the court starts out with a reminder that preliminary injunctions are extraordinary remedies, to be granted only sparingly and in limited circumstances. In trademark infringement cases, a presumption of irreparable injury is generally used when a plaintiff shows likely confusion. However, the balance of harms here favored the defendant, and the other elements of the preliminary injunction standard were uncertain. Even with irreparable injury, a court must still balance the harm to the defendant. An irreparable harm may be small.

The court assumed a likelihood of confusion, triggering a presumption of irreparable harm. Plaintiff argued that the harm was significant here because many people, including foreign clients, seek to reach it through its website, and defendant’s use threatened its goodwill. The court agreed that there was “some threat” to plaintiff’s goodwill, given that the names are nearly identical and that people searching for plaintiff could be misled or diverted to defendant’s site, especially if they were working from oral instructions to visit the site. There was evidence that at least one person was confused by defendant’s site, though that person was a fellow lawyer and not a potential client (apparently the lawyer cc’d defendant and plaintiff both, suggesting at least one typo).

However, the court determined that harm during the pendency of the litigation was not likely to be significant. Plaintiff’s practice is specialized; a search for a patent lawyer named Spiegel would not end with defendant’s site. And someone who heard the address given orally might just as easily visit, another website in use by a solo practitioner named Spiegel. “In other words, the online presence of Defendant does not pose a wholly novel threat to the ability of potential clients to locate Plaintiff's Website.” There may well be a likelihood of confusion, but not of serious harm. There was no evidence of any attempt to “poach” clients, which would be counterproductive for an employment lawyer. The single misdirected email was an isolated instance, not large-scale confusion among clients.

On the other side, enjoining would significantly harm defendant, who uses the site primarily in his capacity as class counsel in a civil rights class action lawsuit. Shutting the site down would disrupt defendant’s law practice and harm the interests of his clients. “The nature of a class action lawsuit puts a premium on the ability of counsel to communicate with individuals who may be geographically diverse and, indeed, may never meet their attorney in person. Disrupting a major line of communication and information sharing between class counsel and a class of plaintiffs poses a real threat to the ability of counsel to advocate in an effective and efficient manner.” Thus, the balance of harms favored defendant, requiring a stronger showing of likely success on the merits before a preliminary injunction could issue.

The court was uncertain whether plaintiff’s mark was protectable, making overall likelihood of success uncertain. Plaintiff argued that its mark was “stronger” than merely descriptive and “more likely than not suggestive,” given that could connote the provision of a variety of legal services via the internet. You know, I wouldn’t give a student much credit for making that argument on an exam: the mark, describing the provision of legal services by somebody named Spiegel, is descriptive. Deal with it.

The real argument here is acquired distinctiveness. The registration was prima facie evidence of validity, but defendant could challenge this. The evidence of secondary meaning was unclear at this stage. (Defendant also argued that any secondary meaning wouldn’t extend beyond IP lawyering, but that’s not an argument for unprotectability; that’s just an infringement consideration.) It’s not clear from the opinion what evidence, if any, defendant submitted here: it doesn’t seem likely that he could have overcome the prima facie validity of the registration from argument alone, but I’d have pointed to that site at least as evidence that plaintiff’s use wasn’t exclusive.

The public interest favors protecting valid trademarks, but also communication between lawyers and clients. It wasn’t any help here. On balance, plaintiff wasn’t entitled to a preliminary injunction.

I found it interesting how this issue was resolved without any overt reference to something that the common law would have considered quite important: defendant’s name really is Spiegel. Of course that factors into the mark’s descriptiveness, its protectability, and probably the likelihood of confusion, but that just shows that the law of personal names has been basically submerged into broader trademark doctrines.

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