Trademarks are words

Wendy Davis argues that online search advertising isn’t trademark use at all, and here’s why:

People use search engines to discover information not just about companies, but also about their competitors and critics. It’s easy to understand why some companies might not be happy with this state of affairs, but their recourse is to offer better or cheaper goods or services, or to counter critics with arguments, as opposed to filing trademark infringement lawsuits.

That’s the position the EFF has taken, and they’re often approximately right. Here’s their brief, too.

Now, this argument didn’t by and large fly when it came to domain names — usually, though there were exceptions, and important ones. I am leaning toward Wendy Davis’s view. (I wish I could figure out from the blog she writes on, Just an Online Minute, who she is — a journalist? A lawyer? Too common of a name to Google.) That doesn’t mean that false and misleading uses — such as buying the search term TIMEX to sell counterfeit Timex watches, or to sell other watches entirely without in any way commenting on or otherwise directly involving Timex watches — should be exempt from Lanham Act liability merely because the promotion of the discussion, commercial or otherwise, is by Internet search term.

But there should not be a per se violation for anyone but Timex to buy that search term, either. Such a rule essentially limits the public’s, and the trade’s, ability to promote the discussion of a topic, even one protected by a trademark. It also would outlaw lawful alternative means of distribution of bona fide trademark-protected goods as well — and this is a growing area of trademark “enforcement” by trademark owners who want, though they have no right, to control how, by whom and for how much their products are sold.

Trademarks, like all intellectual property, are a narrow category of monopoly over the use of a source indicator such as a word, logo or similar device. The courts should leave it to Congress to say if it wants to extend that monopoly to search engines. And Congress should decline to do so, if it’s ever actually asked.  Now, like Hollywood, the trademark trust — led by INTA (of which my law firm is a member and I am an active participant) — usually gets what it wantswhen it does ask, so watch this space if, as expected, the courts don’t go the way the trademark “industry” wants them to.

Originally posted 2007-02-25 17:00:34. Republished by Blog Post Promoter