12/29/10

Does a Law Firm's Blog Get First Amendment Protection?

I ran across an interesting post yesterday from a law firm that posted their response to a Cease & Desist (C&D) letter. It seems that the Berkeley, CA firm of Cobalt LLP posted a story on their "News" section of their website/blog about the Utah case of Wilcox v. Career Step. At the beginning of the post, they used an image of Career Step's logo. A week later, Cobalt LLP received the C&D from Durham, Jones & Pinegar firm out of Salt Lake City, UT on behalf of Career Step, demanding that Cobalt remove the logo from their website.

Cobalt decided to post the letter, and their response to the C&D on their website… which they don't refer to as a "website" but rather as their "blog":
 We are a law firm; and we are reporting news in our blog. Clearly is that stated under the category on ‘News’ as you acknowledge in paragraph two of your letter.
The next part of the response is what caught my eye, and made me wonder if a calling something a "blog" as opposed to "website" allows for extra protection… in this case First Amendment protection under "Freedom of Speech?" It is also interesting that on Cobalt's on website, there is a disclaimer that calls the site a "website" … even at the bottom of the "News" page.

Here is Cobalt's answer on the trademark issue of the C&D:
We acknowledge that your client has trademark rights. However, protection for trademark rights under the Lanham Act is limited to protection against another’s use of a designation to identify its business, or in marketing its goods or services in a way that causes a likelihood of confusion. Such trademark rights do not override First Amendment rights.
Now, it has been 15 years since I took Intellectual Property classes in law school, but this seems to be a bit of a stretch in claiming that labeling a section of a website/blog as "News" allows for a law firm to use a company's trademark by claiming First Amendment protection.

Anyone think that Cobalt has a leg to stand on here? Can a law firm use a trademark logo when reporting on a case and claim that it falls into a safe haven against trademark rights because it is listed under their "News" section?

I'd like to see how this plays out… Maybe Durham, Jones & Pinegar will post their response on their website/blog, too!!

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3 comments:

Anonymous said...

Good morning,
I also responded on Twitter, but I think the trademark owner is barking up the wrong tree. I wouldn't assert a First Amendment defense, but there is a statutory defense of nominative fair use, and that doesn't require the portion of the website to be the "news" portion.
I see your point about website vs. blog, but I don't know that you can rely on the copyright notice to establish that. I think that the use of "website" in the notice is referring more generally to the overall software of the site, which is clearly set up with different sections (one of which is "news"). Though I admit that the issue is not clear.

Bryan

Anonymous said...

Greg: I think their claiming normative fair use (which, I imagine, is tied to First Amendment concerns but I'd have to check).

Trademarks are classically used to ensure that consumers get the real Coca Cola product when they see the Coca Cola logo, for example. So, if another person uses the Coca Cola logo to refer to the real Coca Cola product, even if not sanctioned by the owner of the mark, the use is allowable so long as consumers won't think that the other person has the endorsement trademark owner.

That's why Pepsi can use a Coca Cola mark in a taste competition, the mark is being used to actually identify the real Coca Cola product and no consumer is likely to think the Coca Cola Company is endorsing Pepsi.

I imagine the the distinction between "website" vs. "blog" is one of perception vs. material legal difference; the issue is whether the site is using the mark to identify the real product/maker/servicer and doing so in a way that consumers won't think there's endorsement by the product/maker/servicer.

To be quite honest, I think the law firm is well within its rights, although normative fair use law varies by circuit

Anonymous said...

Trademark fair use falls into two categories: nominative fair use and descriptive fair use. Nominative fair use embodies a party's first amendment right to discuss a case. Moreover, the fact that the contents of the "news" section of the blog are all simply postings about various legal issues makes clear that regardless of its name, the area on which the firm posted the comment (and the third party trademark) is in fact simply a place where legal news is reported. Fair use. Utah attorney barking up the wrong tree.

 

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