First posted on May 13, 2012.In the previous INTA post I raised the question of how a significant session discussing a significant topic — the effect of developments in keyword advertising cases on trademark rights on May 9th, the first day of the 2012 Annual Meeting — could have been so seriously skewed. I promised, as they say in Washington (but not the way they mean it when they say it), to extend and clarify my remarks.
I linked to this item from Managing Intellectual Property, the really interesting part of which will be discussed in another post. We’ll start there, however:
More than 1,400 attendees crowded into a session on keyword advertising yesterday, where Rosetta Stone counsel John Ramsey and other panelists shared their frustrations about the issue and also faced tough questions about the proper legal approach.
Ramsey could not discuss specifics of the company’s closely watched case with Google over trademarks as keywords in sponsored ads, but he explained to attendees the aggravation the brand has experienced over search results incorporating the ROSETTA STONE trademark that managed to appear above links to the company’s authentic site.
Ramsey has every right to be aggravated: Rosetta Stone has a serious counterfeiting problem; the real actors are essentially untouchable; and it sure as heck seems as if Google is making money off it by taking the pirates’ money for display advertising.
I am not unsympathetic to the concept that intermediaries — at some level — should be held to account for their actions; as regular readers know to death by now, I have long advocated that secondary liability attach to eBay for its comparable role in this process, and remain at odds with many, including the Second Circuit, on this topic. I was also involved in early efforts, not all of which I can disclose, to get at what seems to be willful blindness by at least some credit-card issuers – an effort regarding which, of course, some small results have finally been achieved by others.
On the other hand, as an outgrowth of my work defending entrepreneurs against fallacious trademark claims based on “unauthorized distribution” of branded merchandise as well as my First Amendment work involving bloggers, I have had the opportunity to see the Lanham Act misused a slightly different way: As a would-be workaround of the safe harbor provision of Section 230 of the CDA. That is, they are state-law defamation claim dressed up as federal trademark infringement suits.
Now, as dissimilar as Google and eBay may be in their purported roles as secondary infringers, gripe sites in Section 230 cases are yet another increment less similar.
Yet the claims against all three types of defendants raise related issues:
- Infringement allegedly arising out of SEO-related techniques, such as keyword purchases, metatags and supposed “black hat” SEO
- Network or affiliate marketing where the ad content is not controlled by the defendant
- Claims of consumer confusion based on affiliation or sponsorship arising out of such advertisements
Would the distinction among fact patterns and defendants be acknowledged in this discussion, which was advertised as addressing SEO in trademark infringement but whose focus was the arguably unique (and, by the way, pending) case of Google v. Rosetta Stone? I was quite interested in this panel and not unsympathetic to Rosetta’s plight. Yet.
My heart sank, however, when I heard John Ramsey–however understandably–utilizing the loaded vocabulary of advocacy, not reflection: Defendants in SEO cases operate “rogue websites”; they use “black hat SEO”: they are guilty of the well-known tort of “diversion.” Well, okay: Rosetta is dealing with rogue sites utilizing black hat SEO that diverts traffic to trademark infringers. Really.
But while the use of these terms by the man responsble for solving Rosetta’s counterfeiting problem is understandable, they colored the presentation at the outset. Not that hardly anyone else seemed to mind. Let’s put it this way: When I turned to a neighbor sitting with me in the front row and made some comment about where this panel seemed to be going, a fellow behind me sneered, “What do you, work for Google or something?”
The irony abounds on that one, and not just because of this little jaunt. But, yeah, hardly anyone seemed to mind. This is the meat those in attendance had seen on the menu outside. They were salivating.
This balance problem, however–which, as I will address in the next installment, Rosetta’s litigation counsel, Howard Hogan, made some effort to remedy in his presentation–is not merely aesthetic, or even a matter of old-fashioned intellectual honesty. The problem with a panel member in a professional context using loaded, conclusory terminology is that notwithstanding how strongly we may identify with our clients’ problems, we have a professional obligation to those very clients to retain the ability to perceive and explain the other point of view dispassionately.
And when, as was the case here, that panel doesn’t include a semblance of a representative of the other point of view, what is broadcast is a powerful but misleading signal. The attendees have not only had their prejudices about such situations reinforced. But worse, as to how our ability to anticipate or understand how “a Google” might defend itself, the name-calling obscures rather than enlightens. While the CLE credits have been earned, how much education has taken place among have those who nodded in agreement about the evils of “diversion” for an hour? How did this echo chamber increase our capacity for reasoned, professional consideration of the defenses that may arise when such claims are presented to us?
No less important–especially to me and my oxen–how will such consideration operation in situations involving materially dissimilar facts and defendants? Consider the gripe site “trademark” cases: Like Google, these defendants are also are being accused of trademark infringement which implicates abusive SEO, unlawful keyword purchases, and consumers befuddled by affiliate advertisements. Only in these cases, there may be important factual distinctions: Like a complete lack of trademark infringement.
Of course everyone hates trademark counterfeiters; of course. But does everyone at INTA hate the use of trademark law as an anti- competitive bludgeon?
Code words such as “diversion” divert the audience from consideration both of this distinction and the hard question waiting at the end of the road not taken at this session. The result is more, though not necessarily smarter or more efficacious, trademark litigation — or so-called trademark litigation. That means more fees for trademark lawyers, though not necessarily better trademarks.
Another result is more fees for the go-to guys who represent those clients who can afford to defend against such claims. If this last was even a subsidiary purpose of putting this panel together, then I really should not have felt so left out at INTA after all. But I think there is more to this… more to come.