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Best of 2007: MoveOn.org giveth

Originally posted 2007-10-15 23:31:07. Republished by Blog Post Promoter

Originally posted on October 15, 2007.

But does it then taketh away? Wired reports:

The left-leaning political advocacy group, MoveOn.org, is backing down in a flap over the use of its name in online advertisements, permitting an influential Republican senator to criticize the organization in a reelection ad on Google’s search engine.”We don’t want to support a policy that denies people freedom of expression,” says Jennifer Lindenauer, MoveOn.org’s communications director.

MoveOn has withdrawn its instruction to Google not to run ads utilizing its trademark, MOVEON.ORG.

That certainly sounds like the right thing to do if you’re “progressive,” or even if you’re not. In the article, Lindenauer says that the concern was not with the content of critical advertising, but with potential fraud — unauthorized advertisers raising funds in MoveOn’s name.

Ron Coleman on Fox News

The video of the post of the blog

Google remains unmoved, not surprisingly (U/D: “This doesn’t get Google off the hook”); its policy is still stuck at “maximum protection for Google,” ostensibly at the cost (to Google) of advertising dollars, in exchange (for Google) for a reduced exposure to involvement in lawsuits. The cost to third parties and to the public of this policy, which treats any use of a trademark as a potentially actionable trademark use, is incalculable — but that is not Google’s problem.

Advice to all public figures and organizations seeking to avoid criticism via Google advertising: Claim trademark in your name! (So? Is Google keyword advertising the only channel by which people can broadcast their opinions about public issues? — ed. No, but it’s an important enough medium that one of the most dominant companies in the world is built on it!)

One more thing: MoveOn left the door open, perhaps not intentionally, to slamming it right back closed again. Here’s what it told Wired:

“When we became aware of all the controversy around it, we opted out,” Lindenauer says. “Of course we support free speech, and the right of anyone to parody us, but what we do care about is protecting our members — we don’t want anyone using our name or logo in a way that could harm our members and mission.”

That’s a “yeah but” you can drive a Hummer through. Let’s see what happens down the road. We won’t be moving on so fast on this.

GEICO Isn’t Good News for Google

Originally posted 2005-02-21 21:14:00. Republished by Blog Post Promoter

Geico logo with geckoRemember the GEICO v. Google case? My former law partner and long-time spouse Jane Coleman does. She’s writing a chapter on secondary trademark infringement liability for the second edition of a book on trademark counterfeiting now being edited by our colleague Brian Brokate, a partner at Gibney Anthony & Flaherty.  wrote the definitive reference work on secondary trademark infringement.  (Brian is one of the leading anti-counterfeiting lawyers in the country. )  Her conclusion is one that Google and its lawyers doubtless know well: Having no trademark monitoring policy may be trouble, but a little policing may be worse than none at all.

The standard is set by a leading case in this area, Inwood Labs. Under Inwood, in a contributory trademark infringement case, a court will find contributory liability if the defendant has either (1) intentionally induced a third party to infringe the plaintiff’s mark or (2) supplied a product to a third party with actual or constructive knowledge that the product is being used to infringe the mark. The GEICO lawsuit, like most such cases, is a Prong Two case.

So, on to Prong Two, then: supplying a product to a third party with knowledge that the product is being used to infringe the mark. Product? Here there is no product; Google provides a service. But based on the principles synthesized in a later decision, Lockheed Martin v. Network Solutions from what are known as the “flea market cases,” the second prong of this definition of contributory infringement can apply to services, too. Then the court applies a modified version of the Inwood standard: It considers the extent of monitoring and control the defendant has over the infringing activity.

So, what happened in the GEICO case? GEICO, a discount insurance company, sued Google for using GEICO’s trademarks to sell advertising on Google’s search engine, alleging contributory trademark infringement. Two practices of Google were at issue:

  1. The sale by Google of GEICO’s marks as search terms or “keywords,” and
  2. The advertisements or “sponsored links” which contained GEICO’s marks in their text, generated by customers who selected those terms.

Regarding the sponsored links, GEICO had argued earlier that Google was contributorily liable, saying, “the advertisers themselves [made] ‘trademark use’ of the GEICO marks by incorporating them into the advertisements, which are likely to deceive customers into believing that the advertisers provide accurate information about GEICO products or are somehow related to GEICO.” GEICO also claimed — remember the “direct control and monitoring” standard of Lockheed – that Google in fact exercised significant control over the content of advertisements that appeared on its search result pages.

Last December, Google asked the U.S. District Court to grant judgment as a matter of law in its favor. It argued that GEICO could not win its contributory liability claim, because it could not prove that “Google affirmatively encouraged or knowingly assisted in violation of trademark law by the alleged infringers.” Google urged that its own internal trademark enforcement policy bans the infringing advertisements at issue, though “some ads occasionally slip through.” It insisted that the “inability to achieve perfect enforcement of that policy” did not give rise to contributory liability, and that there was no evidence that Google condoned or encouraged infringement.

But this would only matter if Prong One — intentional inducement– were at issue. Apparently, it’s not. Google understandably would have the court focus on its good intentions, but this is a Prong Two case such as Lockheed – where, again, the courts ask whether the defendant exercises a level of monitoring and control that Google acknowledges it does effect via its trademark enforcement policy. Google’s argument regarding its internal trademark policing policy may, in fact, prove too much.

It’s not clear that Google can get out of responsibility for ads that “slip through,” given its awareness of the existence of infringing ads. If it can police a little, perhaps it can police a lot. Judge Brinkema’s oral opinion did not address this, but a final written decision by her or an appellate court might. [UPDATE: As of early May, there is still no written decision. It’s a good bet that there won’t be one and the parties will settle…]

The court granted in part and denied in part Google’s motion, allowing the case to go forward on the question of whether Google was contributorily liable for trademark infringement arising out of the sponsored advertisements containing GEICO’s marks. The incentive to settle is high — and maybe that’s why it’s so quiet.

This is why I have argued that auction websites (read: eBay) should be subject to contributory liability for the sale of counterfeit or other infringing merchandise — because they (and other web auctioneers) do have control over the auctions. Courts have repeatedly found contributory infringement where a defendant claims “willful blindness.” Well, it’s certainly a sort of willful blindness to do some kinds of monitoring and not others.

Would it add to the cost of search engines and auctions to do more policing? Yes, of course it would: More fighting over rent. Considering the profits involved, and the tremendous costs imposed on brand owners to try and keep up with counterfeits and online infringers, an outcome that required more policing to protect the IP that contributes to those profits doesn’t seem like an unreasonable one.

The key to the kingdom

Originally posted 2007-08-17 13:36:51. Republished by Blog Post Promoter

american-airlines-vintage.jpg

Sooner a later, “the courts” are going to decide whether or not keyword advertising is a trademark infringement. Here’s the latest sortie taking off, via David Fish.

Bring your discomfort bag (revised and expanded)

Originally posted 2007-01-08 10:50:09. Republished by Blog Post Promoter

Technology & Marketing Law Blog: “The keyword advertising legal roller-coaster continues.”

The roller coaster I would not ride

As someone who is on that thrill ride — at least partly on the dime of my clients (as in the Buying for the Home case) — it is of course troubling for an expert such as Eric Goldman to acknowledge this. It is somewhat of a vindication, though, not least of the fact that attorneys practicing in this area really have no business telling clients they have any idea what the outcome of cases implicating these issues might be, no matter how well we think we know the law.

That’s fine as far as it goes. But what about the law? It is distressing enough to tell your client that his case involves an unsettled area of law and that two courts faced with similar facts could well come to different conclusions about the application of the “same” law to those facts. (It can even happen in the same case, as Eric points out in his commentary on Buying.) It is preposterous, however, that your client could get slammed on damages or, in theory, attorneys’ fees — which require a finding of willfulness, mind you — because courts are still feeling their way around.

What a fine opportunity for Congress to step in and provide guidance via legislation — for these angels dancing on the heads of virtual pins are in fact not so much legal decisions at all but real, live policy decisions: Shall the Lanham Act regulate, as a trademark infringement, the utilization of trademarks as search terms in Internet or other computer-based software engines?

This is not the case every time a trademark and the Internet get involved with each other. In the context of past trademark-on-the-Internet disputes, notably involving domains (which the world once thought would be the alpha and omega of trademark battlegrounds on the Web), we have argued that the issues at stake are not novel “cyberlaw” questions but merely require the application of hoary principles of unfair competition to somewhat novel situations. But that argument simply does not stand when we consider the search engine question. It is pedestrian to observe that Congress could not have contemplated this or that application of a law when it passed it. The common law tradition abjures us from such arguments. It is the job of judges to apply the law which affects the decisions we make about conduct to new factual situations by the application of analogy tempered with equity.

Yesterday you said tomorrowBut we are in a new world. When courts make fundamentally different conclusions about a question or cluster of questions — in this case whether trademarks are even “used,” as understood in the Lanham Act, by search engines [UPDATE:  See here.  They are.] It is time to recognize that these legal questions are political questions implicating not only law but commerce at all different levels, as well as technology and the shape of the Internet to come. Not everyone has the stomach for roller coaster rides. Let those who do have their fun. The rest of us, lawyers and clients alike, are entitled to the option of standing on terra firma while conducting our affairs. This is our stop.

Apple not the Apple of TigerDirect’s Eye

Originally posted 2005-05-03 20:15:00. Republished by Blog Post Promoter

Colin Samuels of the Infamy or Praise blog writes about the odd trademark lawsuit by Internet computer discounter TigerDirect.com, which is where the Coleman Law Firm PC gets almost all of its computing and electronics equipment. Colin’s treatment is terrific, but check out this excerpt from the AppleInsider.com article linked to above:

At the root of the issue appears to internet search results. Tiger Direct contends that Apple’s use of the name has adversely affected its ranking amongst the Internet’s largest search engines, Google and Yahoo, bumping the company from its usual spot in the first three results.

Now, what in tarnation have we unleashed here?! Is a search result for a trademark — even for essentially unrelated services or products (TigerDirect makes neither software nor computers under its own name) now actionable harm under the Lanham Act?

Grrrrrr!

UPDATE: TigerDirect loses at the preliminary injunction stage.

Google adwords hell breaks loose. Yay!

Originally posted 2009-05-14 20:25:11. Republished by Blog Post Promoter

The Google / ad words / trademarks story, long a mainstay of LIKELIHOOD OF CONFUSION®, may end up needing a blog of its own, so don’t be surprised if you see less and less coverage of it here.  (I just resent stories that outgrow me.)  We’re almost there.  But first, this, from Search Engine Journal:

Google plans to open up trademarked [sic] keywords to AdWords advertisers in June according to Michael Orey of Business Week. Beginning June 4th, companies will be able to bid on the brand names of their competition, which will heat up the AdWords listings throughout Google and lead to head to head battles in the SERPs over branded product, service and company names.

And litigation, litigation, litigation!  Yay!  And guess who’s Defendant Number One?:

Diversion:  Threat or menace?

Diversion: Threat or menace?

Firepond, a software company in Texas, has filed a class-action suit against Google claiming its AdWords service profits by encouraging companies to impinge on one another’s trademarks.

Firepond claims that Google’s sale of its brand name to its competitors amounts to trademark violation because people searching for “Firepond” end up clicking on the sponsored links of other companies, “thereby confusing Internet users and diverting a percentage of such users from [Firepond] and enjoying and benefiting from all the goodwill and ‘buyer’s momentum’ associated with” its trademark, the suit read.

That’s Texas, by the way.  Ask my friend Walter about Texas as a place to file lawsuits.  Here’s the complaint.  So, what’s going to happen?  If it weren’t for the fact that the case involves both Texas and judges, I would rely entirely on the sober analysis of Eric Goldman — who at least tells us what should happen:

This is a well-structured lawsuit that squarely raises the long-contentious debate over the legitimacy of selling trademarked keywords. (I won’t recap that debate here, but I still think this article of mine best explains why plaintiffs’ whining about competitive diversion from search ads is fundamentally misguided). Should this lawsuit reach a final judgment on the merits, we will have a very important answer about what search engines and other keyword sellers can and can’t do.

But, I don’t think this lawsuit will give us that answer because the judge is very unlikely to certify the class. As we saw in the Vulcan Golf lawsuit, where the court denied class certification over Google’s domain name parking program, trademark issues are just too complicated and individualized for class adjudication.  Every trademark is different, the identity of each competitive (or other) advertiser is different, every AdWords ad copy is different, the informational needs of every trademark owner’s customers are different (for more on this, see Hearts on Fire’s complicated standard for evaluating consumer confusion), trademark defenses are idiosyncratic, etc. Perhaps the reason no one has sought a trademark class action over AdWords before is that it probably can’t be done.

Really, why bother even thinking when Eric has everything figured out so squarely?  Well, because of Texas.  And judges.  Both of those being what they are.  Yay!

Errors and Omissions

Originally posted 2006-07-11 12:13:24. Republished by Blog Post Promoter

Doubleday’s flack emails me about a new book called Errors and Omissions by Paul Goldstein, a law professor at Stanford who wrote an earlier book, Copyright’s Highway, that was an early (1994) entry in the “new media law” category.  I reviewed the book (favorably) for the old (and evidently defunct) Barrister magazine of the ABA’s Young Lawyers Division, back in the age of the dinosaurs (i.e., white characters on a blue screen). (It was re-released and presumably updated in paperback in 2003.)

So? Well, according to the press release:

Michael Seeley, a take-no-prisoners intellectual property litigator, is virtually commanded by a movie studio to fly to Hollywood to confirm that the studio legally owns the rights to their corporate cash-cow Spykiller franchise. What he discovers in these gilded precincts will plunge him headfirst into the tangle of politics of the blacklisting era and then onto the even darker world of Nazi-occupied Poland.

I say that anyone who can schlep an IP litigator (“take no prisoners”! ooh! we really are the studliest!) through both Commies and Nazis and also write (in addition to Copyright’s Highway) numerous law school textbooks on IP law… well, that’s a guy who knows how to use his sabbatical!

Trademark lobby picks one up in Utah

Originally posted 2007-03-30 10:57:45. Republished by Blog Post Promoter

Per Michael Atkins:

On March 19, Utah Governor Jon Huntsman, Jr. signed a bill into law that bans some forms of key word advertising. The Trademark Protection Act, SB 236, establishes a new type of mark called an Electronic Registration Mark. Once a mark is electronically registered, the statute prohibits use of the Electronic Registration Mark to trigger advertising for a business, goods, or services of the same class as those represented by the Electronic Registration Mark.

Wow. I will admit this: For years I have been arguing that this field is so far out from what Congressman Lanham could ever have had in mind when he introduced our modern trademark law shortly after World War II that legislators, not courts, should decide how the Act should apply to keyword advertising. So I don’t have a huge problem with the concept.

My problems, however, are these:

  • As applied to fair use, which some keyword advertising utilizing someone else’s trademark, this law may be unconstitutional.
  • This should be the subject of national, not local, policy — a decision for Congress, not state legislatures.
  • The actual legislative outcome here is bad for commerce. I believe keyword advertising is often a useful method of comparative advertising. I do not believe at all in the “diversion” theory of trademark infringement, which is mere sophistry.

Hm. Utah, of all places, too. Who knew?

UPDATE:  Since this post first went up in 2007, Eric Goldman addressed the issue here (2009) and then, in the context of the 1-800 Contacts, Inc. v. Lens.com, Inc. case out of the District of Utah, wrote this:

[1-800 Contacts] flip-flopped on the Utah legislature’s efforts to ban keyword advertising, helping to kibosh the first law and then trying to sneak in a second law that favored their interests–aided by the fact that their in-house lobbyist is also a legislator and voted in favor of the bill her employer advocated. Yet, on its site, 1-800 Contacts claims “1-800 CONTACTS engages on public policy issues related to ocular health and the right of contact lens wearers to choose where they fill their prescriptions. We have not and will not get involved in public policy outside of the scope of this interest.” Sorry, I’m going to have to call BS on that.

And so he does.  The law, evidently, is still out there in the desert — as I am, from time to time, myself.  And you know how I love the desert.

Search for resolution

Originally posted 2012-11-07 16:48:57. Republished by Blog Post Promoter

It’s two posts in one (I like to pull that off when I can), not even counting this one:  Mike Masnick on Eric Goldman on the settlement of the Google / Rosetta Stone case that gets everyone so agitated alla time:

Perhaps the most well known [adwords lawsuit against Google] was the one that Rosetta Stone filed back in 2009 (the ninth such case). That case has been kicking around for years, with various ups and downs. Rosetta Stone even went so far as to supportSOPA’s predecessor, COICA, in the hopes that it would be useful in making Google liable for the ads others placed on its site. We had thought that a clear headed judge would point out the obvious, but instead, we got a massively confused ruling that was quite troubling in which it was unclear if the judge really understood the issues at play. Given all of this, it’s not a huge surprise that Google figured out a way to settle the case out of court. Metzenbaum Federal Courthouse, Cleveland, OhioWhile it probably had to pay a small sum to make that happen, Eric Goldman notes, nothing in what’s been announced suggests that Google agreed to change any of its practices. He also notes that, at this point, nearly every such case against Google has ended in a Google win or quiet settlement in which Google’s policies are left intact:

Irrespective of the specific settlement terms, ending this case is a strategic win for Google because it takes out the last “major” US trademark owner challenger to AdWords.  Combined with the recent dismissal of the Jurin lawsuit, Google is now down to two pending US trademark lawsuits over AdWords: CYBERsitter and Home Decor Center.  Despite CYBERsitter’s recent intermediate “win,” I don’t think either of the two remaining lawsuits are dangerous to Google.  As a result, Google is tantalizingly close to successfully running the table on all of the US trademark challenges to its AdWords practices.  When this happens, Google will have legitimized the billions of dollars of revenues it makes by selling trademarked [sic] keywords in AdWords.

Eric may be slightly more optimistic on this than I am. Having seen so many of these cases come and go, I still expect others to jump in, in the hopes of getting offered a similar “settlement” just to go away. Hopefully one of the remaining cases ends in a clear judicial smackdown against companies who are trying to stretch trademark law well beyond its intended purpose.

Hard to disagree with Mike here.   Read More…

MoveOn.org giveth

Originally posted 2007-10-15 23:31:07. Republished by Blog Post Promoter

But does it then taketh away? Wired reports:

The left-leaning political advocacy group, MoveOn.org, is backing down in a flap over the use of its name in online advertisements, permitting an influential Republican senator to criticize the organization in a reelection ad on Google’s search engine.”We don’t want to support a policy that denies people freedom of expression,” says Jennifer Lindenauer, MoveOn.org’s communications director.

MoveOn has withdrawn its instruction to Google not to run ads utilizing its trademark, MOVEON.ORG.

That certainly sounds like the right thing to do if you’re “progressive,” or even if you’re not. In the article, Lindenauer says that the concern was not with the content of critical advertising, but with potential fraud — unauthorized advertisers raising funds in MoveOn’s name.

Ron Coleman on Fox News

The video of the post of the blog

Google remains unmoved, not surprisingly (U/D: “This doesn’t get Google off the hook”); its policy is still stuck at “maximum protection for Google,” ostensibly at the cost (to Google) of advertising dollars, in exchange (for Google) for a reduced exposure to involvement in lawsuits. The cost to third parties and to the public of this policy, which treats any use of a trademark as a potentially actionable trademark use, is incalculable — but that is not Google’s problem.

Advice to all public figures and organizations seeking to avoid criticism via Google advertising: Claim trademark in your name! (So? Is Google keyword advertising the only channel by which people can broadcast their opinions about public issues? — ed. No, but it’s an important enough medium that one of the most dominant companies in the world is built on it!)

One more thing: MoveOn left the door open, perhaps not intentionally, to slamming it right back closed again. Here’s what it told Wired:

“When we became aware of all the controversy around it, we opted out,” Lindenauer says. “Of course we support free speech, and the right of anyone to parody us, but what we do care about is protecting our members — we don’t want anyone using our name or logo in a way that could harm our members and mission.”

That’s a “yeah but” you can drive a Hummer through. Let’s see what happens down the road. We won’t be moving on so fast on this.

Forward, into the past

Originally posted 2008-07-09 11:00:12. Republished by Blog Post Promoter

Trial Term Part 15Eric Goldman reports on a couple of cases that are doin’ the Time Warp — again:

It’s not uncommon for courts to make judgments based on outdated understandings of precedent and technology, especially when dealing with dynamically evolving areas like Internet trademark law. Nevertheless, it can be a little dispiriting to read opinions that ignore modern sensibilities and look like they could have been written years ago. Two such cases came out in June:

Standard Process, Inc. v. Total Health Discount, Inc., 2008 WL 2337279 (E.D. Wis. June 6, 2008) . . .

[T]hinking that consumers assume that high ad placement for the trademark implies sponsorship by the trademark owner is SO five years ago. Though this issue has come up in a few prior cases (for example, an analogous issue was central to the Playboy v. Netscape case from 2004), I’ve never seen any empirical evidence validating this assumption, and I am fairly confident that a reliable survey conducted today would thoroughly destroy this line of thinking.


Finance Express LLC v. Nowcom Corp., 2008 WL 2477430 (C.D. Cal. June 18, 2008)

The court goes through numerous gyrations to find potential trademark liability here. For example, Finance Express has a number of weak descriptive trademarks, but the court circularly uses the fact that Nowcom targeted the trademarks as evidence that the descriptive trademarks had derived secondary meaning. The court also struggles with the Ninth Circuit’s ambiguous caselaw on whether metatags and “keying” constitutes a use in commerce, but the court says that it sees lots of commercial activity on Nowcom’s part, so it must qualify. (Cite to two 2006 cases Edina Realty and Humble Abode–hey judge, there have been just a few use in commerce cases since 2006!). And finally on the likelihood of consumer confusion question, the court uses the initial interest confusion doctrine as a crutch (extensive cites to Brookfield). Overall, this analysis reads more like a ruling from 1999 than 2008. Preliminary injunction for Finance Express.

Empirical evidence, Eric? We don’t need no stinkin’ empirical evidence!

NB: Eric cites six cases besides the two he’s reporting on in the course of his discussion. We were counsel in four of them! If LIKELIHOOD OF CONFUSION® were an IP lawyer, why, I’d be … demanding something here! (How about a recount? — ed. Never you mind!*)

*Apologies to Mickey Kaus.

Not quite dead

Originally posted 2006-10-29 01:11:26. Republished by Blog Post Promoter

The Google / Kinderstart suit was dismissed, with leave given to amend, in August. What sounds like oral argument regarding the amended complaint is being reported by Reuters. It doesn’t sound too good for Kinderstart.

“I guess I am still not convinced … that a provably false statement has been alleged,” Fogel said during a court session on whether the suit should advance to the evidence discovery stage or be dismissed outright.

The judge asked whether Google has a free speech right to prioritize some sites over others in how it constructs computer formulas in its search system. “Assuming Google is saying that KinderStart’s Web site isn’t worth seeing. Why can’t they say that? That’s my question,” Fogel said.

Why, indeed? We argued earlier this year that Google is not a common carrier or a utility, echoing the judge’s question — “Why can’t they say that?” Wrong, dumb or even mean, there is no right to a Google rank. Is that a little scary if your business model depends on one? Perhaps. But we’re not there… not yet.