Tillery v. Leonard & Sciolla, LLP, 437 F.Supp.2d 312 (E.D. Pa. 2006) (full-text).
Factual Background Edit
Plaintiff M. Kelly Tillery ("Tillery") is a former name partner of the defendant law firm, then called Leonard, Tillery & Sciolla ("the Firm"). When Tillery announced his resignation from the firm, where he had been a name partner since 1982, the firm renamed itself Leonard Sciolla, LLP, ordered new letterhead, business cards, and marketing materials; advertised its name change in a regional legal trade publication; and sent notices announcing the new firm name. The firm also registered and used the domain name "leonardsciolla.com" for its website and for all outgoing mail. But the firm maintained the "leonartillery.com" domain name, which initially forwarded users to the "leonardsciolla.com" site.
After Tillery objected, the firm instead posted a single page at "leonardtillery.com" stating that the firm "was formerly known as Leonard, Tillery & Sciolla, LLP" and that "Mr. Tillery is no longer associated with the firm." After a few seconds, visitors to "leonardtillery.com" were automatically forwarded to the firm's new site. The name "Tillery" appeared once in the metatags of the firm's website as part of the wording "Leonard Tillery & Sciolla locations."
The firm also continued to receive "@leonardtillery.com" email as usual except for e-mails sent to "email@example.com," Tillery's email address while at the firm. The firm initially forwarded Tillery's e-mails to him, and later senders automatically received a response with Tillery's new contact information ("M. Kelly Tillery, Esquire is no longer at this address. He can be reached at <firstname.lastname@example.org>"). The firm also instructed its receptionist to provide Tillery's new phone number to any callers looking for Tillery.
Trial Court Proceedings Edit
Tillery filed suit alleging that the firm's continued use of the "leonardtillery.com" domain name constituted cybersquatting, trademark infringement, unfair competition, and false advertising. Tillery moved for a preliminary injunction to disable the "leonardtillery.com" website and to prevent the firm from using his name in any way that associated him with the Firm. The court denied Tillery's motion.
Regarding Tillery's infringement and unfair competition claims under Section 43(a) of the Lanham Act, the court initially held that TILLERY was not a protectable mark because it lacked the secondary meaning required to establish rights in a personal name. In this regard, Tillery failed to provide any evidence that he used his name except as part of law firm names; that he had "a particularly large share of the market," or that he made "substantial efforts to advertise his own legal services separately from the law firms." Nor did he submit any customer surveys or testimony. Moreover, in his last 16 months with the firm, Tillery "generated only a few new client matters" and those were mostly referrals from others. According to the court, "[e]vidently Tillery's name was not so well known that strangers sought his services."
The court also noted that Tillery failed to cite a single case to support the proposition that an individual professional working within a professional firm owned trademark rights in his own name. Based on the record, the court also could not determine whether Tillery was the senior user of the TILLERY mark vis-à-vis the firms he worked for, and, even if he owned the mark, on what terms he licensed its use in marks other than the firm names.
The court also looked at the parties' partnership agreement, which provided for the firm's continued use of "a withdrawn, retired or deceased" partner's name in the firm name unless the use is a "violation of the Code of Professional Responsibility or the withdrawn or expelled partner continues to practice law." As noted above, the firm promptly removed Tillery's name from the firm name. But it was unclear whether continued use of Tillery's name in the domain name "leonardtilley.com" violated the Pennsylvania Rules of Professional Conduct, which replaced the Code of Responsibility. Rule 7.5 of the Pennsylvania Rules provided that "if otherwise lawful a firm may . . . continue to include in its name the name or names of one or more . . . retired members of the firm or of a predecessor firm. . . ."
The commentary to this rule stated that a law firm may be designated by, among other things, a "distinctive web site address." According to the court, it was unclear whether this commentary suggested that "'a distinctive website address' should be treated in the same way as a name and subjected to the same rules or that that a website address can actually be the firm's name."
Tillery claimed that he "implicitly licensed his law firms to use [his name] while he was a partner" whereas the firm argued that it owned the trademark "leonardtillery.com." The court noted that it was doubtful that Tillery, who became a name partner three years after he left law school, had acquired trademark rights in his name by then. And he produced no evidence of secondary meaning by 1998 when the firm registered "leonardtillery.com." Even assuming Tillery could establish trademark rights, the court held that he failed to show a likelihood of confusion because: TILLERY and "leonardtillery.com" were "only slightly similar"; the TILLERY mark was not strong as discussed above; consumers for Tillery's services were typically high-level administrators or general counsels and thus sophisticated customers who would exercise a "great deal of care" when purchasing legal services; the firm used the name for one year without any actual confusion; and there was no evidence that the firm tried to "capitalize on Tillery's renown."
Although the court found the one use of "Tillery" in the metatags of the firm's site "troubling," it was "not persuasive evidence of deceitful intent." Nor did Tillery show a likelihood of confusion regarding the firm's continued use of "@leonardtillery.com" email addresses. As noted above, clients or would-be clients sending emails to email@example.com were "instantly informed that Tillery had ended his affiliation with the firm and told how to contact him."
The court also denied Tillery's motion as to his cybersquatting claim. Even assuming Tillery could establish ownership of a protectable mark and likelihood of confusion, his evidence of the firm's bad faith was insufficient.
Regarding false advertising, Tillery claimed that the firm's website listed matters on which no current firm lawyer had worked or would be qualified to work. But the court found no impropriety in listing matters on which Tillery worked while he was a partner at the firm, and Tillery introduced no evidence that the statements were false or that they had a tendency to deceive the public.
Tillery also failed to establish a likelihood of success on its claim under the Pennsylvania right-of-publicity statute (42 Pa. C.S.A. § 8316(a)) due to insufficient evidence that Tillery's name possessed the required "commercial value" and uncertainties as to the terms of Tillery's consent to the use of his name in the domain name "leonardtillery.com" and corresponding email addresses.
Finally, the balancing of the harms slightly favored the firm, which showed that it would suffer "some harm from the initial frustration" of clients trying unsuccessfully to contact the firm. In contrast, Tillery failed to articulate any irreparable harm he would suffer without an injunction. He conceded that he did not lose any clients, that his practice had not been harmed, and that he was not aware of any instances that any client looking for him had instead retained the firm. Indeed, Tillery conceded that his clients were "pretty smart" and could find him by putting his name in a search engine.
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