US Court Says Keyword Advertising Isn't A Trademark Violation

[Qui Gon Jinn]

Tweet

http://techdirt.com/articles/20070108/002456.shtml

"They found that simply buying an ad based on a competitor's keyword doesn't constitute a trademark violation, as there's not likely to be any customer confusion (however, if the ad itself is written with the trademarked term, that might be a different story)."

http://news.google.com/news?sourceid...-8&sa=N&tab=wn

-------------------------------------
I haven't read the whole article yet, but was passed on to me. Ebay take note !
-------------------------------------

[hpops]

I think the court is right - no idea if this applies in the UK, or if UK law is different.
If the consumer is confused its a problem, otherwise its comparative advertising.
To be honest, just think this means its business as usual for most (with the obvious exception of ebay!)

[pricethat]

ooooowww weeeeeeeeeeee and here comes another affiliate self justification to be able to bid on brand names and get lots of traffic that was going to the merchant anyway

And then there is of course the other way bidding on BT to send people to Telewest, quite a lot of merchants that dont like that specify it in their terms as its not gentleman like enough for some. And the ones that don't mind often do it themselves so dont need affiliates to do it for them.

So it doesnt look much has changed even with a ruling eh? Ahhh i get it now, what the brand bidding club will do is now alert the merchant to the fact that other people could bid on their brand name and that they have to let affiliates bid on their brand name cos they have to, cos we are the nice people, the holy protectors of all things brand......

Ok ok, i do brand bidding too in places and sometimes there is always reasons why and when affiliates can but i can just hear a whole load of affiliates screaming not fair because they cant use a merchants brand name for an easy ride coming off the back of that ruling, though there was another one that stated the same quite some time ago so this is nothing new.

[nim-b]

What does everybody think about this? Its a really interesting debate.

The main reason the court ruled that bidding on a competitors keyword wasn't trademark violation was that the ad appearing in google would be obviously for the competitor, and therefore would not cause confusion (which is the cornerstone of copyright law, you have to prove customers might not know the difference between two products).

However, I would argue that when a customer types a trademark into google they expect to get only results directly relating to that trademark, and therefore could become confused by competitors adverts.

I have also seen cases where the advert or link mentions one brand, but the url directs to another, which is a clearly confusing situation.

There is also the seperate ethical debate about whether its right that someone should profit from their competitors trademark.

I'd love to hear some input from more experienced members of this forum, as although I know a reasonable amount about copyright law (don't ask), its still really early days of it being applied to the internet. Although I'm sure not everyone will find this half as fascinating as I do!!

[Supercod]

For us to get a ruling that applies to the UK someone is going to have to take a company like Ebay down the High Court Route and once there is case law we will all know what is allowed for sure and what is not.

As it stands it's still very unclear, but do you want to be the one taken to court by Tesco for promoting Asda on the keyword "tesco" or vice versa.. I know loads of ways to make money from Affiliate Marketing without getting in to that. I am not saying it's wrong I am just saying, right now we don't have the case law to back up what is going on so why take the risk and be made the example.

This is the only thing I could find with a quick search that even comes close to what we are talking about, if you have time to read goes on about meta keywords and other stuff http://www.bailii.org/cgi-bin/markup...2002/1015.html

[Supercod]

Funny I should bring up Tesco in my post as I remember why now

http://www.nominet.org.uk/disputes/caselaw/index/tesco/

here is the full thing

http://www.bailii.org/cgi-bin/markup.../2006/403.html

I am sure that was a fun case for Tesco, Tradedoubler and the Affiliate.

[Qui Gon Jinn]

However, I would argue that when a customer types a trademark into google they expect to get only results directly relating to that trademark, and therefore could become confused by competitors adverts.

Valid point .. but by the same theory .. why should it only apply to sponsored listings & not natural search listings, therefore users are only presented with just one natural search listing, which is the brands. Where do you draw the lines? mEta TaGs, Copy & so forth. Much of which is to gain some personal and or commercial advantage.

[nim-b]

why should it only apply to sponsored listings & not natural search listings

hmmm. Well you could say that the reason it doesn't apply to natural listings is that these are a lot harder to control! I don't know enough about search to comment lots, however I think with natural search you could say that the vast majority of the time the pages returned would always be in some way related to the brandname/trademark? Unless a company had really bad SEO or someone else had done it a lot better, when you type in a trademark the first couple of sites returned are inevitably the companies own.

Also, you have to consider that other sites returned by natural search wouldn't be competitor's ones. You might get sites with the same brandname, but unless these were in competition for the same market this could never be taken as copyright infringement.

For example, when you put firebox into google you get our site first, then a couple down there's firebox records. We wouldn't see this as copyright violation because its obvious we don't sell records and they don't sell gadgets, so noone would get confused between us. And if they went to the other site by accident they would bounce out very quickly.

The problem I have is that if someone typed 'firebox' into google and saw an advert for a site that sells gadgets, games and boys toys, I'd have thought they would assume it was us. Because if they put firebox in and are looking for gadgets, then they want to be directed to us, they would expect our site to be the only gadget one listed. So a competitor putting an ad up would be confusing the customer.

[axod]

Seems to me like the right judgement.
If someone puts in 'tesco', they're probably looking for tesco.
Asda does pretty much the same thing, so advertising asda seems perfectly useful for the customer. As long as the advert shows clearly that it's a "Tesco competitor" eg not tesco.

Also what about related goods...
If someone puts in "nokia" surely you can advertise a ringtone site?

I am surprised when I watch adverts on TV in the US how they differ from over here though. There was one for 'lays' crisps that come in a tube, and they basically mentioned Pringles, and as much as slagged them off. "Lays are all american - not like Pringles" etc etc.
You just don't seem to get that over here (Which I think is probably a good thing - it's a bit ungentlemanly).

It'll certainly be interesting to see how it's decided in the UK.

[loquax]

The way I see it is... if you're setting up a campaign and select my trademark, by using that (regardless of whether it's used as the trigger word) you are deliberately using my mark to attract customers.

Therefore trademark infringement.

Perhaps a simplistic view (and it'd be interested to know what a legal bod thought of it), and no doubt there will be the "coke/pepsi/supermarket shelf arguments" - but I've invested time & money to create the trademark and would expect the law to ensure that it was protected accordingly - otherwise you may as well start doing away with them altogether.

Jason

[Hero]

Seems to me like the right judgement.
If someone puts in 'tesco', they're probably looking for tesco.
Asda does pretty much the same thing, so advertising asda seems perfectly useful for the customer. As long as the advert shows clearly that it's a "Tesco competitor" eg not tesco.

Also what about related goods...
If someone puts in "nokia" surely you can advertise a ringtone site?

When someone is searching for Tesco, they want to see the ads for Tesco (not necessarily from Tesco themselves, to prevent anyone from combining this with affiliates brand bidding), not an ad for Asda. The fact that they both are the same and sell the same stuff, does not mean Asda should be bidding on the Tesco name and say "hey! we're here too, come on have a look". They should convince the customer to search for Asda in the first place, rather than Tesco.
The fact that Tesco cannot trademark their name, for instance, for a variety of reasons, shouldn't be the reason why Asda is allowed to bid on that name. This is bad business, immoral way of conducting business, and it should say a lot about the way that company (Asda) is doing business overall.
It's frequent that companies who don't have any good thing to offer to the customers resolve in slagging their competitors off in an effort to gain from badmouthing them. And the customers who now buys from Asda, not because they prefer Asda, but because they have been convinced that Tesco is crap, what does that tell us about that customer's intelligence and "choice"?

[nim-b]

hero- I think you've got some really good points there about ethics, I totally agree.

Loquax, the problem is that your reasoning doesn't fit in with the legal definition of copyright/trademark. The reason this case went the way it did is that in order to prove trademark theft you have to prove that someone would click on the other advert believing it to be you. I think its technically known as 'passing off' and is the simplist form of trademark infringement. Still think there's an argument in there-and everything really depends on the wording of the adverts.

Does anyone know if its still illegal in this country to use competitors names in advertising (like above in the Pringle's example). I think they changed something on this a few years ago.
Because if its still illegal rather than just unethical, you could argue that the keyword forms part of the advert (even if it doesn't appear on the page, the ad is triggered by the keyword) and therefore it is wrong to use competitors keywords like this. I realise different advertising regulations apply to the net though.

[axod]

The way I see it is... if you're setting up a campaign and select my trademark, by using that (regardless of whether it's used as the trigger word) you are deliberately using my mark to attract customers.

Therefore trademark infringement.

I disagree. I think it's more like if Vodafone open a shop on the highstreet selling phones, and I open a mobile phone accessory shop next to it.
In that instance, most of the customers I'm getting may be because I'm next to Vodafone. They might "Search" the highstreet looking for Vodafone, find it, then look next door and see they can get accessories from me.
That's not trademark infringement is it. Even if I'm Orange and open a shop next door, that's not infringement, that's just common sense business.

Perhaps this is why all mobile phone shops seem to end up in the same street in each town I've been to.

Obviously using a trademark in your ad copy is violation... but 'listening' for someone who's looking for a trademarked item and suggesting they might like X as well/instead? Seems perfectly reasonable to me.

[drivetowin]

I disagree. I think it's more like if Vodafone open a shop on the highstreet selling phones, and I open a mobile phone accessory shop next to it.
In that instance, most of the customers I'm getting may be because I'm next to Vodafone. They might "Search" the highstreet looking for Vodafone, find it, then look next door and see they can get accessories from me.
That's not trademark infringement is it. Even if I'm Orange and open a shop next door, that's not infringement, that's just common sense business.

Perhaps this is why all mobile phone shops seem to end up in the same street in each town I've been to.

I'm sorry but I don't see that as the same thing at all - what people are doing in this instance is more like having a sign outside your shop on the pavement saying Vodafone with an arrow pointing to your shop, it's only when they get to the shop they find that it is in fact Orange.

Google could solve this problem overnight if they wanted, if they simply said for any brand name, unless you can prove you own the name and/or have traded using that name, then you can't bid on it - full stop. They won't do it of course because there's too much money at stake...

[Djion Jones]

Are the rules on trademarked keywords in the USA Google different to the UK Google?