Judge Rules Ads on a Web Page Do Not Make Use of Company Name a Trademark Violation or Commercial

I’m really just posting this article here for now because I’ll need it in an upcoming story I plan to tell.

A site was sued and as part of the suit it was alleged that because the site had advertisements on it the use of a company trademarked name did not commercial comments. Additionally the suit discusses the use of a company trademark name by others.

Houlihan admitted that, as the host of a message board, Forte would ordinarily be immune from suit under the Telecommunications Act of 1996, 47 U.S.C. § 230. As we have often discussed on this blog, section 230 provides a key protection for online speech by preventing those who are unhappy about being criticized from putting the hosts of online speech in the position of being sued if they guess wrong about whether claims of defamation are baseless. But the new way to try to escape section 230, especially trendy among commercial litigators and other lawyers with limited knowledge of intellectual property law, is to include a count under the trademark laws.

Using this ploy, Houlihan claimed that its own name is trademarked, and that by using its name in their false posts, the posters had “tarnished” its trademark in violation of the Illinois anti-dilution statute. It also said that by using the names of Houlihan employees who were criticized in the comments, the posters violated their rights of publicity. And, Houlihan triumphantly concluded, both dilution and the right of publicity are intellectual property claims, ergo Forte was on the hook for allowing the criticisms to remain on her web site. Houlihan also noted that, the results of searches for “Houlihan Smith scam” or “Houlihan Smith fraud” produced Google search snippets for 800Notes that included the terms “Houlihan Smith” and “fraud”; this meant, Houlihan argued, that Forte was placing its name and the critical words in the title tags and description meta tags of the pages abut Houlihan Smith’s telemarketing calls; Houlihan said that these tags were Forte’s own content, and could be sued for trademark tarnishment for those tags.

Turning to the trademark claims themselves, Judge Kendall drew from the Lanham Act’s definition of blurring by tarnishment to hold that a tarnishment claim under Illinois law must show the use of a tarnishing mark that injures the reputation of the mark, not just the overall reputation of the trademark’s owner. Because, as she had previously ruled, Houlihan’s claims were based entirely on injury to its own reputation, there was no likelihood of success on the merits of the tarnishment claims. Moreover, Judge Kendall decided that the use of Houlihan’s mark to identify it as the subject of the posters’ criticism was protected by Justice Holmes’ opinion in Prestonettes v. Coty that a trademark may always be used to “tell the truth” about the identity of the goods and services at issue. Although Prestonettes involved the resale of the trademark holder’s own goods, the use of a trademark to identify the trademark owner as the topic of conversation was comparable, regardless of whether the things being said about Houlihan were true or false. Finally, Judge Kendall also ruled that there was no likelihood of success on Houlihan’s trademark and right of publicity claims for another independent reason — non-commercial use. The fact that Forte’s web pages carry advertisements does not make the posters’ use of its trademarked name in their comments commercial. – Source

Sincerely,

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