Federal Judge Says Business Names Provided By Reviewers At A Review Site Are Contributory Trademark Infringement

I have no idea what is going on with this decision. A federal judge in Michigan has decided a stupid trademark lawsuit is not a stupid trademark lawsuit and is allowing it to go forward. We'll just have to follow along with the decision [PDF] -- brought to our attention by Eric Goldman -- because taking any other route would lead to madness. I mean, more so.

Reliable Carriers sued Moving Sites, LLC for trademark infringement. Did Moving Sites -- particularly its review site TransportReviews.com -- use Reliable Carriers trademark in any way that would be infringing? The answer appears to be "no," and that's coming straight from the recitation of facts that opens the opinion.

A visitor to TransportReviews can find reviews and contact information for businesses with similar names to Plaintiff. A search for “Reliable” on the site generates 19 listings. Id. Some of these listings include the names and business information of companies infringing on Plaintiff’s Mark, such as RCT Reliable Car Transport LLC, Reliable Auto Shippers, Reliable Auto Transport Carriers, and Reliable Elite Auto Carriers. A visitor to TransportReviews can also find customer reviews. There is at least one instance in which it appears that a review for an infringing company, BK Reliable Transport, Inc., may have actually been intended for Plaintiff.

Users of the site submitted reviews of companies whose names contained the word "reliable." The plaintiff claims some of the company names are infringing. The plaintiff, illogically, sues the third party host of user reviews of companies whose names may be infringing on the plaintiff's trademark. This is where the suit gets tossed because the alleged infringement isn't taking place at TransportReviews. It's taking place at all of the businesses allegedly misusing a registered mark.

But the suit doesn't get tossed. Instead, the judge says it can continue. The judge actually says user reviews hosted at a review site of businesses whose names might be infringing is the review site's problem. The only intelligible part of the opinion states there's no direct infringement. These were only names returned in search results, all of which were input by third party users. The website did not use the plaintiff's mark to identify its own goods or services. In fact, the site never used the names at all other than to serve up relevant hits for users' search terms.

Everything goes sideways after that. The judge decides that because the defendant was notified about this alleged infringement and did not immediately kowtow to a bizarre request directed at completely the wrong party (a middleman hosting third party content that had nothing to do with naming related businesses names that might be infringing), the website can be held responsible for contributory infringement.

Comparing it to a decision involving a flea market operator refusing to kick out vendors selling counterfeit goods, the court says third party reviews of businesses whose names might be infringing is pretty much comparable to someone directly overseeing vendors selling bootleg merch. WTF.

The complaint satisfactorily alleges underlying direct infringement by the companies with listings on TransportReviews. Plaintiff alleges sufficient facts to show that it owns the registered trademark “Reliable Carriers,” that the names of several other businesses listed on TransportReviews infringe on that trademark, and that their use is likely to cause confusion.

Plaintiff has also sufficiently alleged that Defendant knew or had reason to know of this infringement and continued to facilitate it without taking appropriate remedial measures. The complaint alleges that Defendant published the names and business information of the infringing businesses on TransportReviews.

All the plaintiff has "sufficiently" alleged is that it informed a site some names looked like ripoffs of theirs and were probably told to stop emailing/calling since the site did not create the reviews using the names the plaintiff is so worked up about.

It is a stretch to call these actionable allegations, as the judge's decision does. These are speculative invoicing terms of art -- lobbed at the largest party involved in hopes of securing a settlement. The site did not engage in infringement, no matter how much the plaintiff (and the judge, apparently) want to believe it did. The users entered the infringing business names when submitting their reviews. If the plaintiff wants to stop trademark infringement, it should be targeting the 18 other businesses in the search results, not the site where the search results appear.

As for the intermediary defense (basically pointing out that it's not the offending party -- but not via CDA 230, since CDA 230 doesn't apply to trademark claims) that really shouldn't even need to be raised, the judge dismisses it out of hand, declaring it to be an issue that does not need to be addressed.

Defendant’s response–that it is not responsible for the business reviews on its website, which are entered by customers–is a factual allegation outside the scope of the complaint.

This is asinine. The fuck does that even mean? The site can't raise this defense because the plaintiff didn't provide an opening for this discussion in the complaint? This is seriously weird adjudication, suggesting a judge with very limited intellectual property experience is fielding something outside his expertise. Judge Sean Cox even goes so far as to speculate the plaintiff may be able to make a credible contributory dilution argument. Trademark dilution is already a questionable (and twisted) trademark theory -- but it makes even less sense than usual in this context.

At this point, the judge has only gone so far as to say the plaintiff has stated claims credibly enough to pursue this case. But that's the problem: the claims aren't credible, even when viewed in the light most favorable to the plaintiff. If trademark infringement has occurred, it was committed by the companies using similar names that showed up in the site's search results. The plaintiff should be suing them, but has apparently decided it's cheaper to sue 18 other business by proxy.

Maybe Judge Cox just has something against review sites. His is certainly a mess. If this case keeps going this direction, he's only going to be adding to this wall of shame.

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