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?”