Traverse Internet Law: Internet Lawyers

Competitor Keys AdWords Off Lawyer Partner Name

The Internet Law Federal Court Report is the monthly report of key Internet lawsuits filed each month. Plenty of AdWords trademark infringement lawsuits have been filed each month. Now one comes with a slight twist. 

Cannon and Dunphy, a personal injury law firm, starting keying its adds off the personal names of the very unique name partners of a big competing law firm. The firm targeted was Habush, Habush and Rottier. Cannon is alleged to have keyed ads on Google off of each personal name.

In Wisconsin there is apparently a law prohibiting the commercial exploitation of someone's personal name. Seems pretty open and shut. But it is likely also trademark infringement since the name partners might have common law trademark rights, both state and federal, in their names.

This will be an interesting case to follow.

Webhost Hit With $32.4M Judgment For Hosting Site

At Traverse Internet Law, we counsel web hosts on how to handle trademark and copyright claims. That's become an even hotter topic in recent weeks as a jury in California returned a $32.4 Million Judgment on behalf of Louis Vuitton against a web hosting company for hosting a website that was allegedly selling knock-offs. The judgment is not surprising and the principles of law nothing new. But you would have thought the sky was falling.

The consumer rights groups and their fanatical followers are all over the web expressing outrage. It's as if they do not understand the laws of copyright and trademark infringement. So I will reiterate what I have been telling clients for many years: if you receive notice of a trademark infringement you had better act decisively and make a decision about whether you want to defend yourself in court or drop the customer. 

It really is that simple. Now, if you want to make it complicated and confusing, start reading the free speech and anti-intellectual property lawyers online. They'll encourage you to do otherwise. But I guarantee you if they were representing you they would mirrror my advice. If these public interest lawyers and professional professors had to stand behind the absurd "advice" they spew in their blogs and answer to their malpractice insurance carrier their advice would change overnight. 

And that wrong-headed advice...that's truly the big fraud that victimizes the typical netizen and can trigger cataclysmic events. And I can think of 32 Million of them right now.

Trademark Lawyer: Keying AdWords off Competitor's Name Illegal

Any trademark lawyer knows that one of the high profile issues in the US relates to whether one can use a competitor's trademark as a keyword to present advertising. There used to be a split in the Courts as to whether this is, or is not, trademark infringement. No longer. Unanimity has been reached, at least for now, among the Federal Circuit Courts, and while the public interest groups criticize the courts, any trademark lawyer exercising even the slightest bit of balanced perspective cannot avoid the obvious state of the law. 

And every trademark lawyer can now tell a client in confidence that you cannot purchase the trademark name (registered or unregistered) of a competitor in order to present advertising. Google is findng out that this huge revenue stream is at risk because it is now being successfully sued for contributory trademark infringement. It now seems like the time is right for businesses to begin taking competitors' ads out of action. As a trademark lawyer focused exclusively on the law of the Internet, it will be interesting to see how things develop now that there is no credible argument remaining that the courts support this practice. 

Internet Law: Using A Trademark of Another

Traverse Internet Law deals with the issue of using a business using a trademark of another to generate traffic. Basically the process goes like this.

When someone is searching for a competitor, it would be great for a business to be able to pick off that prospective customer. So an unscrupulous business might add the competitor's name to its meta tags. It might add the name to its html in a number of not so obvious ways that do not show up in the words on the page. It could use "hidden text", which means it could present the competitor's name in text that is the same color as the background so that it can not be seen. It could "keyword stuff" its site with the name like one might do if you are optimizing your own website to be returned by the search engines when you are searched. 

Many of the free speech expansionist groups are trying to justify this practice by arguing that an exception applies. They use the first sale doctrine, criticism, and comparative advertising, as well as a general technical argument that doing this is not a "use in commerce" required for there to be trademark infringement. And thus are the battle lines drawn in the ability to make money off of a competitor's name.

But the Courts are closing in using the doctrine, among others, of "initial interest confusion". Aside from all of the legal nuances, the bigger picture is that as these groups continue to justify trademark infringement by wrapping themselves in free speech, they are actually abusing our First Amendment rights. Because they are taking the sanctity of free speech and dragging it through the mud. These groups, including the ACLU, Electronic Frontier Foundation, Public Citizen, and a host of left wing interests continue to argue gross misconduct is permitted by our Constitution. 

But the Courts, now becoming more and more sophisticated and knowledgeable, are not buying their arguments more and more often. The latest setback comes in a Google case in which many of these free speech expansionists filed briefs arguing that keying commercial advertising (AdWords) off the trademark of a competitor is not trademark infringement. The Second Circuit found that it could be infringement. 

At Traverse Internet Law we often wonder how the misuse of these honest and fair and reasonable exceptions (criticism, comparison advertising, resale doctrine) to trademark infringement will hurt those very rights in the long run. Courts will continue to chip away at the doctrines because, well, they are all being grossly misused as a justification to break the law.