Originally posted 2007-08-17 13:36:51. Republished by Blog Post Promoter
Originally posted 2007-01-08 10:50:09. Republished by Blog Post Promoter
Technology & Marketing Law Blog: “The keyword advertising legal roller-coaster continues.”
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.
But 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.
Originally posted 2007-02-03 22:22:15. Republished by Blog Post Promoter
The Electronic Frontier Foundation (EFF) warned the Chicago Auto Show to back off attempts to muzzle protestors [sic] who posted a parody of the show’s website.
The parody site, autoshowshutdown.org, is a clearinghouse for information about the “Auto Show SHUTDOWN Festival” — an annual event where hundreds of cyclists parade through Chicago to raise awareness about global warming and to promote sustainable transportation. The ride culminates in a rally at the entrance to the show. But this week, a lawyer for the auto show sent a threatening letter to the protestors, claiming that the website amounted to trademark infringement and that it would seek damages if the parody was not taken down.
So far, so good. This is my issue, and it’s not solely a matter of whose ox is being gored, believe me — I have little use for eco-hippies and bicycling polar bears. So what’s the EFF — which didn’t do anything when this happened to my client, mind you, but — what’s the EFF doing about it now?
In a letter sent in response today, EFF reminded the auto show that trademark infringement must involve some commercial use, which is clearly not the case in this non-profit, community-organized protest.”Auto show organizers can’t stop thousands of citizens from attending the SHUTDOWN Festival. Instead, they have resorted to baseless trademark claims to silence critics and interfere with planning for an event that embarrasses them,” said EFF Staff Attorney Jason Schultz. “Both trademark law and the First Amendment won’t allow for that.”
Sounds great! And — wait a minute. Come again?
EFF reminded the auto show that trademark infringement must involve some commercial use, which is clearly not the case in this non-profit, community-organized protest.
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?:
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!
Originally posted 2005-09-08 01:30:05. Republished by Blog Post Promoter
Google and Geico have settled.
Originally posted 2006-07-19 20:45:27. Republished by Blog Post Promoter
Just when the Southern District of New York was hinting that it might be safe to go back in the water and stop worrying about “initial interest confusion,” a friend in a position to care a lot about the result passes along the just-out decision in 800-JR Cigar, Inc., v. GOTO.COM, Inc., from the other side of the water (the Hudson, that is). Salient points: Read More…
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!
Originally posted 2008-09-22 15:53:59. Republished by Blog Post Promoter
Google has long played fast and loose with the sale of key words, leaning this way or that but claiming to have content- or politically-neutral rules of general application. Like a good big new media company, it may ultimately make whatever changes it has to get the heat off it, but it seldom acknowledges it was doing anything fishy.
We saw this with the bogus assertion of a trademark issue a year ago, done to protect MoveOn.org from online criticism. Google changed its practice but never acknowledged what was going on. Now, says the New York Times (via Glenn Reynolds), a lawsuit by pro-life activitists is changing all that:
In March, Google rejected an ad from the Christian Institute, a British organization, that read, in part, “UK abortion law: Key news and views on abortion law from The Christian Institute.”
The group, which wanted to advertise because the House of Commons was considering a bill involving abortion issues, filed a lawsuit against Google in April, saying the company was discriminating on religious grounds. . . .
In the past, Google would not sell the “abortion” keyword to religious groups, but did sell it to other groups, including secular groups, doctors offering abortions and resource sites like Our Bodies, Ourselves. . . .
Google reviewed its policy, and announced last Wednesday it had reached a settlement with the Christian Institute. Terms of the settlement were not disclosed, but Google immediately began allowing ads linked to abortion from religious groups as long as they were determined to be factual, and not graphic or emotional ads. Google uses a combination of automated and manual processes to detect advertising violations. The change in policy applies worldwide.
We don’t know UK law, but it would seem that in the US, this tactic would not have succeeded, at least to the extent it was based entirely on the risk of legal liability. Under the First Amendment, a privately – owned publisher has every right in the world to “discriminate” as to what messages it will publish, even for pay; virtually all do. And Google still isn’t a utility.
So, is this is victory for free speech, because a controversial key word is available to all sides that have something to say about an issue? Or is it a diminution of Google’s free speech rights because, on the threat of government coercion (i.e., a lawsuit), it has to make its platform available to messages of which it does not approve?
Originally posted 2007-03-30 10:57:45. Republished by Blog Post Promoter
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.
Originally posted 2005-01-24 13:10:00. Republished by Blog Post Promoter
Speaking of my post from yesterday, below — wow. Survey: Users Confuse Search Results, Ads. Hard to see how this doesn’t have some effect on any settlement discussions in the Google / Geico case.
Of course, this survey has not met, and presumably would not meet. the Daubert standard for admissibility in federal court. But it does require me to change my post below to read, “whether a search engine is or is not causing likelihood of confusion under the Lanham Act by delivering results utilizing key word searches that happen to be someone’s trademark is essentially a metaphysical one — which is to say that judges are making policy decisions, which Congress is supposed to do.”
Yes. And the reason I believe it remains a question, or should be, is because I am dubious in the extreme — as everyone who has ever met me knows — about the cooked-up concept of “initial interest confusion.” (I wrote about my discontent here.) This doctrine, never contemplated by Congress, is what is driving all these cases. If somebody doesn’t address this full-on (and the Seventh Circuit has already someone let me down — see the article), it won’t be the end of the world. But it will be world we never voted to create.
UPDATE: Via Marty Schwimmer, here’s a transcript of the proceedings in the Geico case in which the court and counsel address the topic of designing the appropriate survey.
UPDATE: Crack IP attorney David Nieporent from my office took a close look and confirms that far from meeting the Daubert standard, this survey wouldn’t even meet the Dilbert standard. Not only was it a phone survey, but it essentially consisted of asking the subjects whether they knew what “sponsored results” and other terms meant — terms that most people who are not involved in Internet marketing or IP wouldn’t know. That’s a long way, however, from saying they would be confused if actually presented with these different results on the screen.
Originally posted 2008-06-12 12:50:01. Republished by Blog Post Promoter
But it’s positively nerve-wracking reading the commentary of someone like Evan Brown!
Originally posted 2010-12-23 08:00:54. Republished by Blog Post Promoter
The Second Circuit, unsurprisingly according to most commentators, has affirmed the decision of the Southern District of New York refusing to find eBay liable for contributory trademark infrintgement in the Tiffany v. eBay case. I have been following the case since before it was filed (yeah, bitter as usual!) and have written bunches of posts on it — see, look?
In terms of the Second Circuit opinion itself, you can find that here. If at some point I have something really original to say about it–after all the blogging is done by everyone else–you’ll be the first to know. But here’s a little roundup of “takes.” First, the WSJ Law Blog on the thrust of the story:
So long as eBay takes steps to remove listings it knows are bogus — and isn’t otherwise willfully blind to fraudulent sales — it can avoid liability, the court ruled. Judge Robert Sack, writing for the three-judge panel, seemed to hang his hat on the “market”:
We are disposed to think, and the record suggests, that private market forces give eBay and those operating similar businesses a strong incentive to minimize the counterfeit goods sold on their Web sites . . .
EBay received many complaints from users claiming to have been duped into buying counterfeit Tiffany products sold on eBay. The risk of alienating these users gives eBay a reason to identify and remove counterfeit listings. Indeed, it has spent millions of dollars in that effort. . . .
Tiffany had argued that eBay knew it had a problem with counterfeit items being listed on its Web site and did little to clean it up. EBay insisted the obligation rested with the New York jeweler to identify and alert it to auctions of counterfeit Tiffany silver jewelry.
But that’s not the whole story, exactly, though it mostly is. As Law.com’s Corporate Counsel explains:
The court sent the case back to the district level for more discussion of whether eBay may be guilty of false advertising because it promotes the presence of “Tiffany” products on its site in both direct advertisements and paid ads that pop up when users search for Tiffany on Google and other search engines.
Those ads could be deemed false, because eBay is aware that “a significant portion” of goods advertised as Tiffany items on eBay are actually counterfeit, the court said. (The exact percentage of counterfeit Tiffany items among all those advertised is in dispute). EBay has pointed out that its site contains a special “About Me” page for Tiffany (and controlled by Tiffany) in which users are told that any Tiffany item advertised for sale on eBay is likely to be a fake.
To win a false advertising claim, Tiffany will have to produce evidence that consumers were confused by the advertisements, the court said. So far, Tiffany has not produced that sort of evidence, which usually comes in the form of consumer surveys.
Usually? Well, usually if anyone’s actually watching, I guess. Anyway, some more–here’s a great article by a partner at Pattishall McAuliffe (the law firm that bears the name of my late trademark law prof) named Uli Widmaier that gets to the heart of the matter (I’ve removed the citations for bloggy reading and added a link or two):
In other words, for a defendant to be liable for contributory trademark infringement, the defendant must have knowledge of specific individuals engaged in infringing activities. General knowledge that infringing activity might take place is not enough. This is an application of the “narrow standard” of contributory liability articulated in Inwood Laboratories, Inc. v. Ives Laboratories, Inc. eBay argued in the district court that this standard did not apply, but accepted the Inwood standard for purposes of the appeal. Thus, the Court “assume[d] without deciding that Inwood’s test for contributory trademark infringement governs.
Tiffany had also argued that eBay was “willfully blind” as to the sale of counterfeit Tiffany goods on eBay’s website. The Court stated that, as a general matter, “[a] service provider is not, we think, permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way.” However, the Court declined to impose liability for contributory trademark infringement on this ground because “eBay did not ignore the information it was given about counterfeit sales on its website.”
In sum, the Second Circuit affirmed that a service provider is not permitted to be willfully blind to alleged trademark infringement. But eBay’s removal of listings identified as counterfeit by Tiffany, as well as eBay’s affirmative steps to police its website for counterfeiters were enough to render eBay not willfully blind. Had eBay done less, it might have been found liable. Unfortunately, the decision gives very little guidance as to the dividing line between “willful blindness” and sufficient vigilance.
Great point. There’s something about trademark law that, for some reasons, makes judges want to make lawyers and businesses guess about liability until it’s too late. As usual, Eric Goldman gets that, too: Read More…