Wednesday, December 12, 2012

Can firms advertise using names of inactive lawyers?

Hullverson v. Hullverson, 2012 WL 6013209 (E.D. Mo.)

James Hullverson sued his family members John and Thomas Hullverson along with his former law partners Ringkamp, Becker, and Burke, and former law firm, The Hullverson Law Firm, P.C., alleging violation of the Lanham Act and the Missouri Rules of Professional Conduct.  James alleged that defendants, by continuing to use John and Thomas’s names in their ads when those two are voluntarily inactive members of the Missouri bar, were falsely advertising.

The alleged violations of the Missouri Rules of Professional Conduct provided no independent cause of action.  James argued that the violations of the rules were integral to his false advertising claim and provided an objective standard for what is misleading as well as what’s false, but the court also found references to the RPC immaterial to the Lanham Act claims and struck the relevant allegations.

James sought to enjoin defendants from continuing to advertise that John and Thomas were firm attorneys and from linking James’s website with defendants’ site.

James alleged that he owned a federal registration for Hullverson & Hullverson and that the similarity in names and services created a risk of confusion.  Defendants argued that their use of the Hullverson Law Firm mark predated James’s first use by at least 20 years, since he only started when he left defendants’ employ and started his own Hullverson & Hullverson law firm in 1998.  But registration creates a rebuttable presumption of validity, and the court accepted James’s allegations about the likely confusion factors.  (It seems to me that the special rules for personal names should be doing more work here, at least under Iqbal/Twombly.  And that if defendants establish prior use of the nature alleged, James should be at risk for fees.)

The court also accepts as an ACPA claim the allegation that defendants “have linked his Hullverson & Hullverson L.C. internet domain to their website, thereby misappropriating his name and the name of his firm and directing traffic away from Plaintiff and to Defendants.”  Linking doesn’t implicate ACPA, so the reference to "domain" must really mean "mark," but I think it indicates a certain casualness in the opinion.

The false advertising claim was based on the allegation that John and Thomas are inactive and unauthorized to practice law in Missouri, but are still featured prominently in signs/ads.  This allegedly created an illegal bait-and-switch for clients.  Defendants argued that these representations didn’t relate to the “nature, characteristics and qualities” of their services.  James argued that these constituted a misrepresentation of the “origin of services.”  At this stage of the pleadings, that was enough.

No comments: