lawyers in advertising, promotions, and intellectual property trademarks: searching beyond keywords...

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lawyers in advertising, promotions, and intellectual property TRADEMARKS: Searching Beyond Keywords Internet Litigation

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TRADEMARKS:Searching Beyond

Keywords

TRADEMARKS:Searching Beyond

KeywordsInternet Litigation

lawyers inadvertising, promotions, and intellectual property

What We’ll CoverWhat We’ll Cover

• History of Internet Advertising• Meta-tags and Keywords: what are they?

• How Google Works its Keywords• The Cases• The Legal Upshot• Brick-and-Mortar

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History of the Internet(still fits on 1 page)

History of the Internet(still fits on 1 page)

• Developed for Gov’t Use• Consumer Explosion -- Billions of Pages

• Search Engines Needed• Meta Tags -- embedded html code • Keywords -- any word on any page can be searched

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History of Internet Advertising

History of Internet Advertising

• Novelty BOOM in mid-late 90’s• Co-Branding / Pop Ups / Banners• Downturn in economy• Co-branding “dangerous”• Not the expected results• Consumer PR Problems

Then, along came “keywords”

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Keywords Mean “Business” - literally

Keywords Mean “Business” - literally

• Internet ad revenue for search engines reached $2.2 billion in the last quarter of 2003, 38% higher than same time period the previous your (PWC estimate)

• For the second quarter of 2004 that number grew to $2.37 billion

• Projection of over $10 billion for 2005– Want to guess how Google makes over 90% of its revenue?

Jon Swartz, Growth of Online Ads Hits High Speed, USA Today, Jan. 16, 2005, at 1B.

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Targeted Advertising Means Results!

Targeted Advertising Means Results!

• Football Shows = Razors and Big Trucks

• “Soap” Operas = Detergent and Sippy Cups

• Internet Surfing– Real-time thoughts– Tracks where you’ve gone– Refines-as-it-goes

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How It’s DoneHow It’s Done

• Meta-Tags• Category of Keywords• Individual Keywords

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META-TAGSMETA-TAGS

• No cost• Words programmed in html• Picked up by Search Engines• First “trademark” infringement cases dealt with Meta-tags

• Meta-tags can still be valuable in trademark litigation

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How to Find a Meta tagHow to Find a Meta tag

<meta>my life my card </meta>

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Meta Tags are Obsolete (almost)Meta Tags are

Obsolete (almost)• Metatags are found only in code– Limits their reach– Limits their “flexibility”– Easy to “find” for infringers

• Keywords Can be used throughout site– More sophisticated– Easier to manipulate

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KEYWORD CATEGORIESKEYWORD CATEGORIES

• Purchase a group of words• Company purchases a category

– Adult Entertainment– Software Products– Children’s Goods and Services

• Search Engine Chooses Words in “Package”– PLAYBOY® SEX PAMELA ANDERSON– Impossible for purchaser to opt out

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KEYWORDSKEYWORDS

• Purchase by the “word”• Allows purchasing party to “choose” any word it wants (not just what may be in a category).

• Gives more flexibility to purchaser– Can change at a moment’s notice– Can view what words work

• Increases profits for Search Engines– Every word can be charged– Price can change as words increase in use -- overnight

– Allows even more targeted advertising

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How Keywords WorkHow Keywords Work

1. Pick keywords

2. Review “fame”

3. Select budget

4. Start “rolling”

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How Keywords WorkHow Keywords Work

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What Google AllowsWhat Google Allows

• Any Words in my H &T• Different H&T’s for different companies– Coblentz: “Don’t Overpay!”– Nate Harmane: “Try an ETHICAL attorney”

• Changes Made “on the fly”– Capitalize on Current Events– Eliot Spitzer Campaign

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What Google AllowsWhat Google Allows

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McCarthy’s StatementMcCarthy’s Statement

Where keyword. . . advertising is being sold, . . . search engines

are taking advantage of the drawing power and goodwill of

these famous marks.” QUESTION:

Fair competition or unfair free riding on the fame of well-known

marks.

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The CasesThe Cases

Key Points To Date

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Section 43(a)Section 43(a)

1) P owns mark;

2) D used mark in commerce,

3) In offering for sale, distribution, or advertising of goods and/or services

4) D used mark in a manner likely to confuse customers

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Contributory and Vicarious LiabilityContributory and Vicarious Liability

• Contributory -- Inwood Labs Pill Case– Knowing about, possibly inducing, but not controlling, trademark infringement

– Profiting from that infringement

• Vicarious Liability– Knowing about trademark infringement– Having some control over trademark infringement

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Brookfield Communications, Inc. v. West Coast Entertainment Corp, 174

F.3d 1036 (9th Cir. 1999)

Brookfield Communications, Inc. v. West Coast Entertainment Corp, 174

F.3d 1036 (9th Cir. 1999)

• Use by D of “MOVIEBUFF” in its meta-tags created actionable initial interest confusion

• Use by D of “movie buff” would not have been actionable– Meta-tags can bring up D’s website as first hit

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Playboy Ent. V. Terri Welles, 279 F. 3d. 796 (9th Cir. 2002)

Playboy Ent. V. Terri Welles, 279 F. 3d. 796 (9th Cir. 2002)

• D used PEI’s marks in meta-tags, which drove traffic to the site

• Court held fair use, because – D was a former PLAYBOY® PLAYMATE ®– D’s use was nominative

•Needed to show herself as former Playmate.

•Used only what was reasonably necessary•Sponsorship is not suggested

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Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1022 (9th Cir. 2004).

Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1022 (9th Cir. 2004).

• Excite sold a “package” of XXX words, including PLAYBOY and PLAYMATE

• Subsequently, banner ad with no source popped up.

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Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1022 (9th Cir. 2004).

Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1022 (9th Cir. 2004).

• Defendants used mark in commerce• Initial interest confusion must be tested like regular confusion (Sleekraft factors).

• Actual confusion found because ads were not labeled

• No fair use since but for PEI’s use of the term, it would not have been in the XXX category.

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GEICO v. Google: 330 F. Supp. 2d 700 (E.D. Va 2004):

GEICO v. Google: 330 F. Supp. 2d 700 (E.D. Va 2004):

• Google did “use” GEICO’s trademarks, so motion to dismiss not granted.

• Established that GEICO is a trademark, not merely a “word.”

• Didn’t establish whether Google’s use was a “fair” use or “contemplated” by Lanham Act

• Court emphasized that Internet was “easier” to undo that other “initial interest confusion”

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WhenU.com, Inc. v. 1-800-Contacts, Docket Nos. 04-0026 (2d Cir. June,

2005)

WhenU.com, Inc. v. 1-800-Contacts, Docket Nos. 04-0026 (2d Cir. June,

2005)

• WhenU (D) used P’s website address in directory

• Subscribers got a pop-up “offer” given certain website addresses

• Held no infringement– Website address was distinct from trademark

– No “use” because keying the trademark did not give a pop-up address, only “public” website address

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GEICO v. Google, Inc., (2005 U.S. Dist. LEXIS 18642) 4th

Cir. August 8, 2005

GEICO v. Google, Inc., (2005 U.S. Dist. LEXIS 18642) 4th

Cir. August 8, 2005• No infringement where Google sold ads that did not visually show a GEICO trademark

• Possibly liable where Google sold as that showed a GEICO trademark in text or heading

• Expressly declined to opine on vicarious or contributory liability

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Google’s Education Process

Google’s Education Process

• Little or no distinction between sponsored links and organic links

• Third party trademarks could be used by advertisers in headers

• Banner ad were unlabeled

• Sponsored shaded in blue and on right side

• No sponsored links in “I’m feeling lucky”

• Advertisers may not use third party trademark in headers and text.

• Banner ads must be labeled

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What’s on the HorizonWhat’s on the Horizon

• Mere “use” and no confusion probably not actionable as trademark infringement.

• Dilution claim? Confusion not necessary. – “Wilful intention to trade on defendant’s mark”

• Section 5 of the FTC Act has not been tested. Under it, action cannot– Mislead consumers or affect buying behavior

• Non-competing businesses

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What’s on the HorizonWhat’s on the Horizon

• Action against 3rd Parties– Text and header analysis– Discovery issues relating to selected marks

• Click-Thru comes back– Search Engines are not cops– Fair Use arguments

• “Safe Harbor” for Search Engines

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Does Europe Have Something to Teach Us?

Does Europe Have Something to Teach Us?

• Louis Vuitton v. Google (Mar 05)– unfair competition and misleading advertising.

• Viaticom and Luteciel v. Google (Mar 05)– Third party may not “use” plaintiff’s marks for products identical to those in its recorded trademark registration.

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Brick-and-Mortar Analogies

Brick-and-Mortar Analogies

• The Clothing Store Analogy• The Billboard Analogy• The Burger King Analogy

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Thank YouThank You

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