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Social Netwok Entries are Subject to Civil Discovery; Kentucky Federal Court Allows Trademark Claim Over Adwords
March 18, 2008
SOCIAL NETWORK ENTRIES ARE SUBJECT TO CIVIL DISCOVERY
Parents of teenaged children often joke that they learn more about their kids from Facebook and MySpace than they do from conversation. That joke recently became a reality in a New Jersey based federal court room. The court there ruled that an insurance company attempting to determine the cause of its insureds' eating disorders may examine blogs, Web pages, and other electronic communications concerning those eating disorders that were posted online.
The case arose when a Horizon Blue Cross Blue Shield subscriber filed a class action, alleging that the insurance company wrongfully denied or reduced coverage for the treatment of eating disorders.
As part of its defense, Horizon pointed to a New Jersey law that requires insurance companies to cover only those mental illnesses that are biologically based. Included in the discovery Horizon sought from the plaintiffs were various online writings. Horizon contended that those writings might reveal the cause of their eating disorders.
Initially, the court ordered the plaintiffs to "provide emails, journals, diaries, and communications concerning the plaintiffs' eating disorder(s) or manifestations/symptoms thereof, and related health conditions."
The plaintiffs asked the court to reconsider that order, based on their concern that disclosure of materials the children considered private would cause the beneficiaries stress, anxiety, and present a potential for relapse.
In response, Horizon argued that it needed the information because the court had already prohibited depositions of the minors.
The court attempted to fashion a compromise. Noting that "The privacy concerns are far less where the beneficiary herself chose to disclose the information," the court modified its previous order to include only those materials the children shared with others, including entries on Internet social networks such as Facebook and MySpace.
The law adjusts to the times. Two years ago, it's likely 90% of practicing lawyers hadn't heard of social networking sites. Now they are mining them for valuable data in civil litigation.
KENTUCKY FEDERAL COURT ALLOWS TRADEMARK CLAIM OVER ADWORDS
The United States Court of Appeals for the Sixth Circuit may get a chance to decide if the sale of trademarks as part of a "keyword" advertising program violates federal trademark law, if a recent ruling from a Kentucky based federal trial court progresses. That court found that such a use "could" violate the federal Lanham Act.
The defendant in the case, Gold Preservations Inc. purchased a number of "keywords" from Google, including "XGD" and "XGD SYSTEMS." Those two terms were trademarked by the plaintiff, T.D.I. International, a maker of golf course drainage systems. The adwords program was structured so that when a Google visitor searched for "XGD" or "XGD Systems", an ad for Gold Preservations would appear on the right side of the screen.
Contending that Gold's actions were out of bounds (get it?) TDI filed a trademark infringement suit, alleging that Gold's purchase of the trademarked terms constituted infringement.
In response, Gold filed a motion to dismiss, arguing that the purchase of keyword ads was not a "use in commerce" within the meaning of the Lanham Act.
Courts have divided over the question whether the adwords program constitutes a "use in commerce." Those courts that have decided it is not a use in commerce have concluded that because the use is essentially invisible, it does not qualify as an actionable use.
The Sixth Circuit, which governs federal trial courts in Ohio, Kentucky, Michigan and Tennessee, has not ruled on the question. Lacking direction from the Circuit, the trial court did not take a definitive stand on the question. Rather, it held merely: "In light of the uncertain state of the law on the specific issue presented in this case, the Court does not find the Defendants' arguments sufficient to warrant dismissal of the Plaintiffs' Lanham Act claims at this stage in the proceedings ... [because] the Plaintiffs have alleged facts sufficient to state a claim to relief that is plausible on its face."
Ultimately, the United States Supreme Court will need to clarify this issue once and for all. Until then, hopefully, the Sixth Circuit will have the opportunity to provide some guidance. This case may provide the opportunity.
This Newsletter is a periodic publication of Graydon Head & Ritchey LLP and should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult your own advisor concerning your situation and any specific legal question you may have.