5 Comments

Bidding on Competitor’s Trademarks – New Case Law

Jan 10, 2007
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There has long been a long debate and a number of legal cases brought against one competitor using another competitor’s keywords to trigger Pay per click ads in search engines.

Eric Goldman Reports that in the most recent case of J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007), the court held, as a matter of law, the use of keyword-triggered ads and keyword metatags cannot confuse consumers if the resulting ads/search results don’t display the plaintiff’s trademarks. ,

Goldman points out that there has been a number of inconsistencies in past rulings, but he believes that if other courts follow this conclusion that we should see the quantity of silly litigation over keyword advertising and keyword meta tags reduce.

Goldman has a good review of the facts of the case that are worth reading, and he draws the following personal conclusion:

Even though I’m thrilled with the result in this case, I think the court got the analysis wrong on two fronts. First, I think that neither buying competitive trademarks as keyword nor including trademarks in keyword metatags constitute a trademark use in commerce because neither activity is perceivable by the consumer. Second, I think that it’s very difficult to make any determinations (even a pro-defendant determination) about likelihood of consumer confusion based on ad copy without reviewing the ad copy in question…

Nevertheless, this case stands for two clear legal propositions:

* if keyword-triggered ad copy doesn’t display the plaintiff’s trademarks, plaintiff loses
* if search results don’t display the plaintiff’s trademarks even though the trademarks were included in the keyword metatags, plaintiff loses

Filed under: Search Engine Marketing
  • http://www.get-in2.com Mike Hyland

    It's about time all the legal mumbo-jumbo was pushed aside. Trademark poaching by cookie setting advertising middlemen should be illegal.

  • http://www.cumbrowski.com carsten cumbrowski

    Shoot, now I have to abort my law-school classes. I was so hoping for a change in career and become a lawyer.

    This would have been almost as good of an opportunity to get filthy rich as the idea to require by law that legal counsel must be present in "fights" between spouses because nobody knows what the fight is about than the couple itself (or not).

    Does this mean that Brands have to or should at least talk again to the entities that support them? What's next? Talking to actual customers that have an opinion about the product they purchased? Good Lord. ;)

    Mike:

    What would you like to see on the SERPS, if a user enters a trademark term into the search-box?

    Ranked #1 the Trademark Owner.

    Rank #2 – #10 anybody that has no commercial relationship or could have a potential gain from mentioning the trademark or its owner.

    Notes:
    Anybody who praises the company or brand has to take a notary confirmed vow that no relationship exists, no financial gain direct and indirect is intended and any potential gain that might result from the statement will be rejected and reported to the responsible legal enforcement agencies as violation of the code of "No Money – No Lies".

    Comments:
    That will make all positive stuff show up on page 10 or higher leaving the spots #2 to #99 to anybody who wants to slam it or kick it or just hates it or is in a bad mood anyway and one brand is as good as another to use as valve to release some negative energy.

    Fine Print:
    The real constructive criticism results are sprinkled anywhere between page 5 and page 100.

    Something like that? ;)

  • http://www.ecomcity.com Mike Hyland

    Carsten I've always been tasked to police my ecommerce clients registered TradeMarks and positive/negative Brand exposure in Google and other major SE's. They back my observations of abuse with legal C&D notices to unrelated product & trademark poachers. (PPCSE & natural SERPs)

    Good question… "Mike: What would you like to see on the SERPS, if a user enters a trademark term into the search-box?

    Ranked #1 the Trademark Owner.

    Rank #2 – #10 anybody that has no commercial relationship or could have a potential gain from mentioning the trademark or its owner.
    ______________

    Happy to say my enforcement works as I type in their registered trademarks and brand names in Google and Yahoo. Not just position #1 shows up, but every single SERP listing through to page 3 belong to them, or an approved Super Affiliates like Bizrate, eBay, Amazon landing all Brand searchers on a product page showcasing my client. Sponsor results alos show many Super Affiliates spending their own bucks promoting the Brand on their own landing pages.

    You'd also be amazed that typeing in "TradeMark or URL or Brand + Coupons" Yields zero SERP results in Google, MSN or Yahoo. Maybe this is why my select clients have zip PPCSE click fraud and the highest conversion ratios of any product retailers on the internet year after year. No confusion for searchers, and affiliate white noise or trademark poaching is kept to a minimum.

    ps; building bookmarkable landing pages guarantees buying traffic coming from bookmarks exceeds all PPCSE sources in both raw traffic and conversion ratio.

  • http://AdJungle.com Brad Waller

    Carsten,

    I have to disagree. Your choice of analogy with an argument is not the same. I would use the analogy of a retail store. Let's say you go to a tire shop looking for new tires. You go in and ask the salesperson about some new Michelins for your car.

    Are you saying that the salesperson should not tell you about this great deal on Goodyears that are just as good but $25 a tire cheaper? What about the Pirellis that are more expensive, but will have better performance?

    If I go to Amazon and check out a Sony HDTV, is it then wrong for Amazon to tell me that others who view this TV ultimately buy a Samsung? Or that after I put it in my cart that customers who view this TV also check out Sony and Samsung products?

    I think it makes perfect sense that as long as you are not misleading or confusing the customer by including the mark or otherwise implying that the result is related. Why not give the customer all the choices and options. If someone searches for EPage, I would assume they are interested in classifieds and if Craiglist wanted to pay for an ad to show up, is this bad for the consumer?

  • http://www.cumbrowski.com carsten cumbrowski

    Brad, you actually agree with me :)

    The part you do not agree on was directed towards Mike as a question. I was leading him by giving a speculative answer to my own question.