NYSSCPA Sues Over Use of nysscpa.com

By James A. Woehlke, CPA

The NYSSCPA filed a lawsuit on April 27 against the recruiting firm Eric-Louis Associates for unauthorized use of the Society's "nysscpa" service mark and for unauthorized reproduction of Society copyrighted material on the Eric-Louis Internet website. The Society's Executive Committee authorized the suit at its April 21 meeting.

As set forth in the complaint, in March Society staff members learned that Eric-Louis Associates had launched a website with the address, www.nysscpa.com. At the bottom of the Eric-Louis Associates home page is a hypertext link to the Society's website, www.nysscpa.org, and when an individual clicks on the link, the Society's home page is "framed" within the Eric-Louis Associates' page. (Framing occurs when one website places the contents of a second site within borders designed by the first website. This permits the first site to portray the contents of the second as if they were its own.)

On March 25 the Society, through its attorney, Mark Skolnick of Skolnick, Hochberg & Bernfeld, PC, who has served as outside counsel to the Society on matters of intellectual property and the Internet, sent Eric-Louis Associates a cease-and-desist letter threatening to file a lawsuit if Eric-Louis Associates continued its unauthorized use of the Society's service mark. The next day Brian Elias, president of Eric-Louis Associates, responded by agreeing to cease and desist but only if the Society paid $20,000 or in the alternative provided free booth space at NYSSCPA trade shows for five years. Shortly thereafter, Elias contacted the Society's attorney again to notify Skolnick that two CPA firms had contacted Eric-Louis Associates wanting to acquire the website containing the Society's service mark. Skolnick warned Elias in writing not to attempt to sell that site name.

"An important part of the NYSSCPA's asset portfolio is its intellectual property," President George Foundotos (Suffolk) said. "The Society has no choice but to aggressively assert its intellectual property rights if those rights are to continue to have value."

This appeared to be the general sentiment of the Executive Committee when it voted 9 to 0 (with one member abstaining) to file a lawsuit against Eric-Louis Associates.

"On April 27 we obtained a federal court temporary restraining order against Eric-Louis Associates," Skolnick said. "We are also seeking a permanent injunction to prohibit Eric-Louis Associates from continuing its use of the 'nysscpa' service mark and framing nysscpa.org within its website. In addition, we are seeking treble monetary damages and attorney's fees, all of which are permitted under federal law. We also intend to seek punitive damages and believe that, in cases like this where the defendant's conduct is so outrageous, the strongest measure of compensatory and punitive damages is proper."