Trademark Law as a Weapon to Stop Online Forum Discussions

March 3rd, 2008

Prof. Eric Goldman of Santa Clara University is a reliable source of updates on "Internet law".  This is a good summary of a tough situation:

Technology & Marketing Law Blog: Lifestyle Lift Tries to Use TM Law to Shut Down User Discussions; Website Countersues for Shilling–Lifestyle Lift v. RealSelf

LifeStyle finds itself being maligned in RealSelf’s online forums.  Established law says that RealSelf can not be held liable for statements made by third parties, so what’s an aggrieved business to do?

Lifestyle Lift goes after the forum owner for misuse of its trademarks.  The argument is mostly a dog- one can use another’s trademark to identify the business it relates to, but not profit from the mark.  The expense of litigation, however, usually makes people decide that removing the allegedly-infringing content is a better course of action.

RealSelf doesn’t do that though.  It gets made and countersues for . . . violating its terms of use.  The claim is that Lifestyle Lift posted "shill" reviews of its own product (the horror) in violation of RealSelf’s terms.

RealSelf may well win on the merits of the infringement claim, but it’ll still be out a bunch of cash on the defense, and the breach-of-terms-of-use counterclaim isn’t going to bring a whole lot of that back.

I don’t know any of the underlying facts of this case (were the critiques accurate?) so I won’t take sides.  As a UGC junkie, I am strongly in the camp that people should be free to post their opinions of products, including negative ones. There are limits, though.  Businesses also need ways to protect their reputations against untruthfulness and outright slander.

Tags: ,
  • Pat

    Since Realself has paid adverstising on the page where they talk about Lifestyle Lift and financially benefit from it, isn't “profiting from their mark”?

  • This is a good point, and one of the things that makes the whole
    issue murky. Not having looked at the site at all, the question is
    “does RealSelf use Lifestyle Lift's mark to generate revenue, or is
    it merely a topic of discussion?”

    The New York Times web site has ads, but no one (probably) would say
    they are attempting to profit from the Google (for example) trademark
    when writing articles about that company.

    There is a continuum here. At one end are sites that happen to use
    other companies' trademarks in discussing various issues. At the
    other are sites that try to drive revenue by co-opting trademarks.
    Trademark law permits the former and not the latter. Figuring out
    where the dividing line is, though, is a case-by-case effort, which
    is why I said Lifestyles' claim is “mostly a dog”.

    Thanks for the insightful comment.

  • Pat

    Since Realself has paid adverstising on the page where they talk about Lifestyle Lift and financially benefit from it, isn't “profiting from their mark”?

  • This is a good point, and one of the things that makes the whole
    issue murky. Not having looked at the site at all, the question is
    “does RealSelf use Lifestyle Lift's mark to generate revenue, or is
    it merely a topic of discussion?”

    The New York Times web site has ads, but no one (probably) would say
    they are attempting to profit from the Google (for example) trademark
    when writing articles about that company.

    There is a continuum here. At one end are sites that happen to use
    other companies' trademarks in discussing various issues. At the
    other are sites that try to drive revenue by co-opting trademarks.
    Trademark law permits the former and not the latter. Figuring out
    where the dividing line is, though, is a case-by-case effort, which
    is why I said Lifestyles' claim is “mostly a dog”.

    Thanks for the insightful comment.