Preliminary Thoughts on GateHouse Media v. New York Times Company

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Like a storm coming over the horizon, the recent lawsuit filed by GateHouse Media against the New York Times Company, which operates Boston.com, has thrown the CMLP into disarray just as we were preparing to depart to warmer climes for the holidays.

For those who haven't yet heard about this case, here is a bit of background.  On December 22, 2008, GateHouse Media, which operates more than 375 newspapers and associated websites, filed a lawsuit against the New York Times Company in U.S. District Court in Massachussets, claiming, among other things, that headlines from -- and links to -- GateHouse content on Boston.com's "Your Town" sites constitute copyright and trademark infringement.  The New York Times, which owns the Boston Globe, operates local sites — currently in Newton, Needham, and Waltham, MA — that aggregate local content from the Globe, area blogs, and other newspaper websites, including GateHouse's Wicked Local websites.

GateHouse filed an eight count complaint alleging breach of contract, copyright infringement, false advertising, trademark infringement, trademark dilution, unfair competition, and unfair business practices.  On the same day it filed the complaint, GateHouse also filed a motion for a temporary restraining order and preliminary injunction.

Several commentators -- including Dan Kennedy, Dan Gillmor, and Walter Brooks -- have offered some insightful thoughts on the case.  Though we're still poring over the papers (including voluminous exhibits), it is clear that the case raises a number of interesting issues:

  • COPYRIGHT INFRINGEMENT AND FAIR USE -- GateHouse's copyright claim will likely turn on an anlaysis of whether the Globe's copying or adaptation of headlines and introductory sentences from GateHouse's news stories (with accompanying links to those stories) constitutes fair use. We blogged about similar issues earlier this year in the context of a dispute between The Associated Press and The Drudge Retort. That matter settled back in June, and the fair use questions thus never reached a court.

  • CLAIMS UNDER THE LANHAM ACT -- GateHouse's assertion of claims under the Lanham Act (arguing that, by using the names of GateHouse's sites, the Globe is creating confusion or diluting GateHouse's trademarks) is reminiscent in some ways of the trademark issues raised by Jones Day in its recent case against Blockshopper (recent blog post here).  Here, however, it is a slightly more plausible claim that readers might wrongly assume that Wicked Local licensed or otherwise approved of the Globe's reproduction of its headlines and ledes.  Plus, the parties are direct competitors and offer remarkably similar types of services.  Still, it is worrisome to contemplate trademark liability for accurate attribution and linking without some sort of affirmative statement seeking to deceive readers about source or sponsorship.  

  • CC LICENSES AND FAIR USE -- GateHouse alleges that the Globe breached the Creative Commons Attribution-NonCommercial-NoDerivs license under which its articles are distributed. CC licenses expressly state -- in Section 2 -- that they don't trump fair dealing rights (i.e., fair use under American law), so the existence of a CC license should not impede the Globe's ability to argue fair use as discussed above.

  • CC LICENSES AND NONCOMMERCIAL USE -- Among the reasons GateHouse claims the Globe violated the CC license terms is that the Globe allegedly makes commercial (as opposed to noncommercial) use of the licensed content. The question of what constitutes noncommercial use within the meaning of a CC license is the subject of some debate, leading the folks at Creative Commons to circulate a survey asking the public how they understand the term.

  • CC LICENSES AND ATTRIBUTION -- GateHouse also alleges that the Globe violated GateHouse's CC license terms by failing to properly attribute GateHouse as the source of the content. This claim raises an apparent tension with GateHouse's trademark claims: if the Globe attributed the GateHouse articles, the Globe would violate GateHouse's trademark rights; if the Globe failed to attribute the GateHouse articles, the Globe would violate the CC license term requiring attribution.

  • ALLEGED CIRCUMVENTION OF "SECURITY MEASURES" -- GateHouse asserts in its complaint (Cmplt. Pars. 43 and 44) that the Globe circumvented "security measures" it had instituted to prevent the Globe from "scraping" GateHouse's content. GateHouse doesn't use this allegation as the basis of a substantive claim but, rather, as support for an argument that the case is "exceptional" and that GateHouse is thus entitled to enhanced damages and legal fees on its Lanham Act claims (Cmplt. Pars. 70, 81, and 91).

With a list like this it is easy to see that this is likely to be an important case with far reaching implications. Rest assured, we'll have more to say about this lawsuit in the future.  In the meantime, you can  monitor developments (and read all of the pleadings) by going to our database entry, GateHouse Media v. The New York Times Company.

UPDATE:  The parties filed a joint motion to set a trial date of January 26, 2009.  More information: GateHouse Media v. New York Times Trial Set for Late January.

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