Ascentive, LLC v. Opinion Corp.
842 F. Supp. 2d 450
E.D.N.Y2011Background
- Ascentive and Classic sue Opinion Corp. and officers over a consumer-review site, PissedConsumer.com, under Lanham Act and RICO.
- Plaintiffs seek a Rule 65 preliminary injunction to disable specific PissedConsumer pages containing negative reviews featuring their marks in domain names, metatags, text, and ads.
- Plaintiffs allege trademark infringement, unfair competition, and false designation of origin due to use of their marks in subdomains, content, metatags, and advertising for competitors’ products.
- PissedConsumer offers “reputation management services” for a fee, allegedly enabling negative postings to be addressed or altered; RMS terms were disclosed under NDA to Ascentive.
- Classic did not sign the NDA; its CEO opened a PissedConsumer account and posted a negative review, which was later removed by PissedConsumer.
- Judge consolidated Classic’s and Ascentive’s actions for purposes of the preliminary injunction and ultimately denied the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of Lanham Act success | Ascentive’s and Classic’s marks are valid; use in domains/metatags/text/ads creates confusion | No likely confusion; site is critical commentary, not sponsor or source; First Amendment protection | No likelihood of confusion; Lanham Act claims unlikely to succeed. |
| Use of marks in domain names and content | Domain names and site content cause confusion or sponsorship by plaintiffs | Gripe-site domain names and critical content negate source confusion; no sponsorship | Use not likely to cause source confusion. |
| Initial interest confusion/metatags | Metatags and SEO create initial interest confusion benefiting PissedConsumer | Modern search engines deprioritize metatags; no active deception; no proximity to plaintiffs' goods | Initial interest confusion unlikely. |
| Advertising network liability (Chitika) and contributory infringement | Advertisements bearing marks cause infringement | Chitika, not PissedConsumer, controls ads; contributory infringement not adequately pled | No direct liability; liability uncertain; no Lanham Act success. |
| CDA immunity and RICO viability | PissedConsumer may be information-content provider; RICO predicates met; damages exist | PissedConsumer is an interactive service provider; immune under CDA; no viable RICO predicates | CDA immunity applies; RICO claims unlikely to succeed. |
Key Cases Cited
- Salinger v. Coiting, 607 F.3d 68 (2d Cir. 2010) (irreparable harm and likelihood of success required for injunctions)
- eBay, Inc. v. Mercury Exchanges, L.L.C., 547 U.S. 388 (U.S. 2006) (irreparable injury; public interest considerations for injunctions)
- Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961) (polaroid factors for likelihood of confusion (non-mechanical))