Feb 11, 2013
Attorneys Target Competitors’ Name in AdWords a Costly Mistake
AdWords in Google also known as “pay-per-click” is one method of advertising that attorneys can use. At its most basic you create an ad and pick keywords or phrases that you think are relevant to legal consumers looking for your services. These AdWords have varying price. You only pay when someone clicks on your ad.
Some businesses including attorneys are using the highest ranking competitor’s name as an AdWord. I found this out when I would do a routine search on my name and a competitor lawyer’s ad in my area would pop up. In fact if I searched for my name in Google Maps his name would also come up.
Initially, I did not find much law in this area but with deeper research I’ve found multiple cases in this area. Recently I wrote an article on this “problem” of targeting a competitor’s name with AdWords. (Google is not alone with this as Bing and Yahoo also provide the same sort of vehicle.) At that time, I focused on a case from the United States District Court of California, Binder et al v. Disability Group, InC, et al. In California there is a cause of action for: 1. unfair competition in addition to the Federal claims for 2. false advertising 15 U.S.C. & 1125 (a) and 3. trademark infringement 15 U.S.C. &1114.
The crux of all the claims and an essential element of proof was the likelihood of causing confusion to consumers such that the competitor’s web site would be passed off as the other businesses’ web site. This would then cause consumers looking to hire one business ending up hiring the other’s business that was targeting the competitor.
Bloggers and commentators have started and expanded on the discussion in earnest. There is an extensive Law Review article Trademarks as Keywords. Much Ado About Something by Franklyn and Hyman University of San Francisco School of Law. Eric Goldman has written several articles and a law review article.
The bottom line is that trading on another’s name without paying for it just plain stinks. It’s not right. Yes, I know that’s not a legally sound argument but its the “moral ground” that my training as a personal injury lawyer has taught me to take. Is it just or unjust? Frankly, the law review articles miss the mark. Maybe that’s why they are so infrequently cited.
Goldman calls for more protection for Google as if allowing a competitor to bid on my name and take clients away who are searching for me is okay. He ought to come join The Circle of Legal Trust where practicing attorneys are using Google rules to create white hat methods to market themselves. They seek to provide useful content and not tricked up link building techniques. They seek not to trade on a competitor’s good name, but to teach organic search with highly relevant and unique content relevant to a legal consumers’s search.
Google Does Not Deserve Immunity
Goldman’s 90 page law review article comes down to arguing that Google should be protected from trademark lawsuits because search would be hindered. Here is an exact quote and what I believe is the crux of his position:
“In other words, if search providers are liable for using trademarked keywords, trademark owners can obtain an unwarranted outcome: exclusive ownership of the word, regardless of context.342 Such exclusivity arrogates the word from the social vernacular to a single trademark owner’s benefit, and in the course of doing so, deprives society of any minority definitions for the term. That particular trademark owner may benefit, but the rest of society loses.
In contrast, when search providers do their jobs successfully, they can increase the probability that searchers will find what they were looking for. This success does not merely create private benefit for the search providers; it creates social utility by lowering social search costs, 344 which promotes marketplace competition (both on price and product attributes) and increases social knowledge. Put differently, searchers want search engines to solve their needs by delivering the highest relevance results to them, and the law should remove any impediments to doing so.”
This argument just does not hold any water. It is ludicrous to suggest that Google should be free to use my name to let a competitor trade off it so that he gets found in search and presumably shifts my potential clients to themselves.
The conclusion in the University of San Francisco article is not as cavalier as that of Goldman, as it merely implies that the judges could be missing the mark and their needs to be more discussion on the issue. At least that’s what I gathered from this statement:
“All empirical work has limitations and deficiencies. This study is no exception. But, our study provides a far better foundation for discussion and analysis of the legal and policy issues associated with the use of trademarks as keywords than the casual empiricism that courts have engaged in to date in order to resolve such disputes.”
Punish Google Bing and Yahoo for Selling Trademarks With A Per Se Violation Subject to Proof of Damages As Confusion is Presumptive
Not every country allows the selling of trademarks as AdWords. In fact, Google did not allow the use specifically until 2004. Rosetta Stone v Google 676 F.3d 144 Court of Appeals, 4th Circuit 2012 is a must read.
Rosetta brought suit against Google for trademark infringement. In fact, pirates were advertising under Rosetta Stone. The Court of Appeals overturned the district court’s finding of no confusion. In fact, Google’s own tests warned of confusion but since 7% of their AdWords income was on trademarked terms Google basically said, ‘Oh, what the heck!” Here is a telling quote from the case:
“The record shows that prior to 2004, Google did not allow the use of trademarks as keyword search triggers for unauthorized advertisers or in the body or title of the text of an advertisement. In 2004, Google loosened its restrictions on the use of trademarks as keywords to “[p]rovide users with more choice and greater access to relevant information.”. The underlying reason was largely financial, as Google’s research showed that “[a]bout 7% [of its] total revenue [was] driven by [trademark]ed keywords.”
With the policy shift, Google understood that “[t]here [would be] a slight increase in risk that we and our partners will be the subject of lawsuits from unhappy trademark owners.” At that time, however,Google “continue[d] to prevent advertisers from using … trademarks in their ad textor ad titles unless the advertiser is authorized to do so by the trademark owner.” Indeed, internal studies performed by Google at this time suggested that there was significant source confusion among Internet searchers when trademarks were included in the title or body of the advertisements.”
Ultimately the case settled. My solution is continue with the law as is or change it slightly to make the search engines per se liable for selling key words once they have been shown to be selling competitor’s trademarks and/or requested to cease. If they do not cease, then just have a trial on damages; like the damage award in the Binder case $292,235.20. Although Binder was a straight trademark case against the actual keyword purchaser, the search engines are also culpable.
Have you seen your competitor’s name show up when potential clients search your name?
All opinions, advice, and experiences of guest bloggers/columnists are those of the author and do not necessarily reflect the opinions, practices or experiences of Solo Practice University®.