January 2009 Issue

Civil Cases

Spiegel & Assocs. v. Spiegel,
2008 U.S. Dist. LEXIS 100558 (E.D. Va. Dec. 11, 2008)

ABSTRACT
The Eastern District of Virginia denied plaintiff’s motion for a preliminary injunction against defendant’s use of the domain name spiegellaw.com for a law firm website based on plaintiff’s prior use of the virtually identical domain name spiegelaw.com, also for a law firm website.  Because the parties operated in different practice areas, clients and potential clients would immediately recognize if they had visited the wrong website.  As a result, the risk of serious harm to plaintiff was low.  In contrast, an injunction shutting down defendant’s website would likely seriously harm defendant’s practice.

CASE SUMMARY

FACTS
Plaintiff H. Jay Spiegel & Associates, a Virginia intellectual property law firm since 1989, registered the domain name spiegelaw.com in January 1999 and established a website at that domain a month later.  Plaintiff federally registered the mark SPIEGELAW.COM on the Supplemental Register in 2000 and later registered the mark on the Principal Register in 2006.  Defendant Steven Spiegel, a Virginia employment lawyer, created a website at spiegellaw.com in 2008, using the domain name apparently registered for him by his sister in March 1999.  Both plaintiff and defendant maintained law offices in Alexandria, Virginia.  Plaintiff became aware of defendant’s website when an opposing lawyer sent plaintiff an email copied to defendant using a spiegellaw.com email address.  Plaintiff then sent defendant a letter demanding that defendant shut down his website and transfer his domain name to plaintiff.  Defendant refused and plaintiff filed this action for trademark infringement and unfair competition.  Plaintiff also filed a motion to preliminarily enjoin defendant from using his spiegellaw.com domain name.

ANALYSIS
The court initially noted that preliminary injunctions are extraordinary remedies that should be granted sparingly, and that plaintiff had to make “a clear showing of irreparable harm” to establish entitlement to a preliminary injunction.  The court then applied the Fourth Circuit’s four-factor test for preliminary injunctions:  (1) the likelihood of harm to plaintiff if an injunction is denied, (2) the likelihood of harm to defendant if an injunction is granted, (3) plaintiff’s likelihood of success on the merits, and (4) the public interest.  Applying these factors, the court denied plaintiff’s motion.

For purposes of plaintiff’s motion, the court assumed that plaintiff could show a likelihood of confusion, which created a presumption of irreparable harm.  Plaintiff also argued that it will suffer actual harm in several ways.  First, because its law practice is international in scope, many clients contact plaintiff through its website.  Second, plaintiff expended “time and energy” to create its website and to update it over the past eight years.

The court agreed that defendant’s use of the spiegellaw.com domain name “pose[d] some threat to the goodwill [p]laintiff has built up in his [spiegelaw.com] domain name” because the two names were “nearly identical” such that “some risk of confusion certainly exists.”  According to the court, “[i]ndividuals searching the Internet for [p]laintiff could be misled or diverted by [d]efendant’s website.”  In addition, the court noted that persons given oral instructions to visit spiegelaw.com could be confused by the spelling of the domain name and “stumble onto” defendant’s website instead of plaintiff’s.  And plaintiff submitted evidence that at least one person was confused by defendant’s website.

The court was not convinced, however, that plaintiff would be harmed to “a significant extent” during the pendency of the litigation for several reasons.  Primary among these was the noncompeting, specialized legal practices of each firm, such that a potential client searching for an IP attorney named Spiegel and finding defendant’s website “would quickly realize he had located the wrong attorney.”  Moreover, noting the existence of the website www.spiegel-law.com for yet another law firm, the court found that defendant’s website did not “pose a wholly novel threat” to potential clients’ ability to locate plaintiff’s site.  As a result, “the actual possibility that potential clients will be confused in a way that leads to serious harm to [p]laintiff appears low.”  Nor was there any evidence that defendant had attempted to “poach” plaintiff’s clients.  Finally, the court gave little weight to the single, misdirected email.

In contrast, an injunction shutting down defendant’s website “present[ed] a substantial likelihood of significant harm.”  Defendant used his website primarily in his capacity as class counsel in a large civil-rights class-action lawsuit, and he claimed that he spent 18 months planning the site before launching it earlier in the year.  If required to shut down his website, defendant would lose the ability to communicate with geographically diverse members of the large class, which would “disrupt, perhaps severely,” defendant’s law practice and the interests of those he represented.

Regarding plaintiff’s likelihood of success on the merits, the court noted that a stronger showing on the merits is required if the balance of hardships favors the defendant.  Here, however, the court found that plaintiff’s SPIEGELAW mark was likely descriptive, not suggestive as plaintiff argued, and there were questions at this early stage of the case whether secondary meaning existed and, if so, the extent of such secondary meaning.  Accordingly, the court could not conclude that plaintiff was likely to win on the merits.  Finally, the court found that the public interest did not clearly favor either party.

In sum, balancing the four preliminary injunction factors, the court denied plaintiff’s motion because the balancing of harms favored defendant and plaintiff failed to show that it is likely to prevail on the merits to overcome the harm factor.

CONCLUSION
In contrast to the Visa case where the contextual differences between the parties’ websites was deemed “largely irrelevant” to a dilution analysis, a different approach was applied in this infringement case.  In addition to the balancing of harms favoring defendant, the court relied on the fact that the parties’ websites offered different, noncompeting legal services to deny plaintiff’s motion for preliminary injunction.