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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., 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…

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.

Rosetta Stone v. Google: Schwimmer, Goldman, Levy intervene, 4th Circuit listens – UPDATED

There's no limit for some of us!

The Rosetta Stone v. Google appeal:  Marty, Eric and Paul — listed in the caption as limited intervenors, but, really, the biggest sticks in the room — have spoken, and the Fourth Circuit has, um, also spoken:

Appellant Rosetta Stone Ltd. appeals from an order, see Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010), granting snmmary judgment against Rosetta Stone on its claims against Appellee Google Inc. for trademark infringement, see 15 U.S.C. § 1114(1)(a); contributory and vicarious trademark infringement; and trademark dilution, see 15 U.S.C. § 1125(c)(I). Rosetta Stone also appeals from an order dismissing its unjust enrichment claim under Virginia Law. See Rosetta Stone Ltd. v. Google Inc., 732 F. Supp. 2d 628 (E.D. Va. 2010). For the reasons that follow, we affirm the district court’s order with respect to the vicarious infringement and unjust enrichment claims; however, we vacate the district court’s order with respect to the direct infringement, contributory infringement and dilution claims and remand these claims for further proceedings.

Here’s the opinion (PDF with OCR).  For analysis of the secondary trademark  liability issues the court was presented with see here, of course.  Notably, the court readily reversed the vicarious infringement ruling below.  But regarding contributory infringement, first — hey, it’s my blog — consider what Jane Coleman said, in the excerpt posted here at the time, on how the district court in Rosetta Stone applied, or misapplied, the opinion in Tiffany:

The court drew heavily on the Second Circuit’s reasoning in Tiffany v. eBay to reject Rosetta Stone’s second argument, finding that it failed to show that Google knew or had reason to know that it was supplying its services to parties engaging in trademark infringement.  In Tiffany, “eBay’s generalized knowledge of infringement” on its website was insufficient to impose contributory liability on the online sales site eBay.  Compared to eBay, the court reasoned, Google had been presented with even fewer notices of infringement. It therefore declined to find the “specific” knowledge required by the court in Tiffany. . . .

In finding that Rosetta Stone had not met its burden of showing that summary judgment was proper as to the contributory trademark infringement claim, the court’s language left unclear what its conclusions were regarding Google’s liability for the sale of trademark-protected keywords to competitors who were not necessarily counterfeiters. Specifically it found that “no reasonable trier of fact could find that Google intentionally induce[d] or knowingly continue[d] to permit third party advertisers selling counterfeit Rosetta Stone products to use the Rosetta Stone Marks in their Sponsored Link titles and advertisement text.”  If indeed the court intended to limit its holding to direct trademark infringement arising out of counterfeit websites, then it is not clear how or whether its decision would apply to the scenarios presented in the cases of GEICO and American Blind. In these two earlier cases, the courts left open the possibility that search engine operators who use third parties’ trademarks might, in appropriate circumstances, bear contributory liability for trademark infringement arising out of those advertisements.

The Fourth Circuit seems troubled by a similar question, focusing on the contrasting procedural postures in the respective cases:

On appeal, Rosetta Stone argues that the district court misapplied the standard of review and incorrectly awarded summary judgment to Google where the evidence was sufficient to permit a trier of fact to find contributory infringement. We agree. In granting summary judgment to Google because “Rosetta Stone has not met the burden of showing that summary judgment is proper as to its contributory trademark infringement claim,” the district court turned the summary judgment standard on its head. . . .   Tiffany involved an appeal of judgment rendered after a lengthy bench trial.  Because of its procedural posture, the district court in Tiffany appropriately weighed the evidence sitting as a trier of fact. Accordingly, Tiffany is of limited application in these circumstances, and the district court’s heavy reliance on Tiffany was misplaced. We conclude that the evidence recited by the district court is sufficient to establish a question of fact as to whether Google continued to supply its services to known infringers. Accordingly, we vacate the district court’s order to the extent it grants summary judgment in favor of Google on Rosetta Stone’s contributory infringement claim.

Facts:  Important stuff!

UPDATE:  From the horse’s mouth —  Eric’s take:  “Fourth Circuit’s Rosetta Stone v. Google Opinion Pushes Back Resolution of Keyword Advertising Legality Another 5-10 Years.”  Highlights:

Direct TM Infringement. This is probably the most obvious place where the opinion mechanically marched through the doctrinal elements without acknowledging the big picture. It’s really makes so sense to hold that Google *directly* liable for trademark infringement for keyword ad sales, because Google’s products/services or marketing do not confuse consumers about the source and origin of marketplace offerings. If any consumer confusion takes place, it’s caused by the advertisers, and Google is at most secondarily liable for that. But the opinion is tone deaf about this key point. . . .

On the plus side, the opinion correctly notes that the standard multi-factor likelihood of consumer confusion (LOCC) test doesn’t work in nominative use situations. . . . I hope other courts similarly rethink the multi-factor LOCC test in nominative use cases. It really don’t work at all.  [Actually, the Third Circuit did so a while ago (see here) — RDC] . . .

The opinion says that the district court’s reliance on Tiffany v. eBay was misplaced because that ruling came after a bench trial and therefore couldn’t help on summary judgment. Unfortunately, the opinion gives short shrift to what evidence from Rosetta Stone could support contributory infringement. The only evidence cited by this opinion is the fact that Rosetta Stone identified some ads from rogue sellers and Google didn’t block other unidentified ads from those sellers. If that’s Rosetta Stone’s best argument for contributory infringement, I think it will lose the contributory claim handily.

Dilution. Characterizing keyword ad sales as dilution is unprecedented and virtually unsupportable doctrinally. This opinion doesn’t address that. It simply points out minor doctrinal errors in the lower court’s opinion (not surprising, as I said the lower court’s “rejection of the dilution claim was bizarre”), but misses the big picture that there’s absolutely nothing Google does that could dilute or tarnish Rosetta Stone’s marks. . . .

Best of 2011: Ninth Circuit. Keywords. Trademarks. Hike!

First posted on March 11, 2011.
Here’s a roundup of what other people are saying about the decision in Network Automation, Inc. v. Advanced System Concepts, Inc. involving keyword advertising using other folks’ trademarks (a form of the dreaded “diversion“!) and perhaps implicating secondary liability for trademark infringement:

Well, that’s almost all the roundup you need!  In fact, here’s the “takeaway” of Eric’s post:
We’ve had surprisingly few appellate decisions involving keyword advertising generally, and almost none involving trademark owners’ lawsuits against keyword advertisers (as opposed to suing keyword sellers like search engines). On that basis alone, this ruling is important. The case is also remarkable because the opinion, written by highly regarded Judge Wardlaw, gets so many things right. Perhaps that sounds like damning with faint praise, but the reality is that the Ninth Circuit’s Internet trademark law has become horribly tortured due to deeply flawed opinions like the 1999 Brookfield case. This opinion deftly cuts through the accumulated doctrinal cruft and lays a nice foundation for future Internet trademark jurisprudence.
The only sour note is that the opinion makes some unnecessary and empirically shaky “presumptions”–exactly the kind of unfortunate appellate court fact-finding that got the Ninth Circuit into trouble into the first place. Still, given how this opinion could have turned out, I still give this opinion very high marks.
Yeah, Eric is great on that “presumption” stuff — and how badly judges wing them when it comes to trademark.  And Rebecca?

Even in the middle of a good decision reversing a finding of likely confusion based simply on targeting ads to the competitor’s trademark, the Ninth Circuit can manage to reach out and do silly things: for example, the court said that (declaratory judgment) plaintiff Network’s use of the mark to buy keywords was use in commerce, and further said that Google’ssale of keywords was the same (“We now agree with the Second Circuit that such use is a ‘use in commerce’ under the Lanham Act.”). I guess we’ve all just agreed secondary and primary liability are the same for keywords? But Google gets a big kiss for its sponsored links labeling later in the opinion doubtless of more practical significance to it than a mostly-lost conceptual battle about trademark use.Because the panel can’t outright admit that Brookfield’s initial interest confusion analysis was just wrong, it increases the formal complexity of trademark law by hiving off metatag cases—they’re just different from keyword cases, which are different from domain name cases, for which the “internet troika” of similarity of marks, relatedness of goods, and simultaneous use of the internet still makes sense. Though of course we should at this point refer to the “internet duo” since it’s such a rarity to find a mark without an internet presence and the court explicitly endorses giving this factor “little weight”—indeed, the district court erred by weighing similar marketing channels against Network.

We have often discussed on this blog the misuse of trademark law to suppress online speech that protects and benefits consumers, including both consumer commentary and comparative advertising.  A Ninth Circuit decisionyesterday should make it harder to pursue such claims.Yesterday’s decision, Network Automation v. Advanced Systems Concepts, will be of particular interest in litigation over keyword advertising using trademarks, which we have defended as an important means for comparative advertising that provides useful information to consumers.  The decision strongly implies that neither the purchase nor the sale of keyword ads using trademarks is inherently infringing.  But the ruling also walks the Ninth Circuit away from several past rulings that are often cited by trademark holders to attack consumer criticism as well (although, to be fair, the Ninth Circuit itself has never applied its precedents that way).  The opinion holds out hope for a more sensitive treatment of claims about online trademark infringement.

Plenty to chew on there.  What could I add?  Little old me?

It’s Those Nutty Adwords!

Originally posted 2006-02-05 01:41:05. Republished by Blog Post Promoter

Check N’ Go sues Google over trademark.

And Let Google the Dogs of Law

Originally posted 2005-05-02 20:24:00. Republished by Blog Post Promoter

It had to happen — another piece of territory now being rented out in the Lanham-Act-as-competition-buster industry: A new service has announced that it will scoop up the Google infringements for ya for a few kopeks. Their proud slogan: “Online trademark infringement is the act of using search keywords that specifically target another company’s brand to generate online traffic. ” The name of their company, “Gooroo,” is obviously meant to “free ride” on the trademark equity of “Google,” but if they’re goring that ox anyway, may as well take an extra chunk, eh?

Myth becomes law becomes commercial reality — all based on the spurious judical-activism-made concept of “diversion” and its handmaid, “initial interest confusion.” But I repeat myself.

Still, watch this space: Some folks at INTA just may have something helpful to say about this….