The Road Ahead For Bill Gates Lasts Just Two More Years

Yahoo Sued Over Its Google Ads (Yes, You Read That Right)

from the fun-with-trademark-law dept

Thu, Jun 15th 2006 3:07pm — Mike Masnick

The question over whether or not search engines can sell advertisements based on trademarked keywords is an old one that's been discussed countless times -- in cases involving companies like Geico and American Blinds. The fundamental issue in these cases is usually a misunderstanding of the purpose of trademark law. Trademarks aren't like other types of intellectual property law (patents and copyrights), but are more for consumer protection -- to keep people from getting confused. Advertising to someone looking for a competitor isn't confusing -- it's just standard every day business. That's why companies buy billboards near their competitors' offices or why you might get coupons for a competing brand when you buy something at the supermarket. Yet, too many companies simply assume that trademark is like a patent and gives them complete control. Unfortunately, this had resulted in a bunch of lawsuits against the likes of Yahoo and Google for running what should be perfectly legal ads. If the ads were confusing, that's a different issue -- but simply buying an ad on a keyword should not be a violation of trademarks. A secondary issue is why Yahoo and Google were so often the target of these lawsuits -- since it wasn't those companies actually buying the ads and violating trademarks (if there was any violation). It's the company doing the advertising.

With all of these lawsuits, though, Yahoo and Google took separate paths. Yahoo ended up settling the cases and then said they would stop selling ads based on trademarked terms. Google took a harder line stance, and while they eventually settled the case, Google made it clear it thinks it's fine to sell ads based on trademarked keywords. Oddly, it seems a different part of Yahoo agrees. While Yahoo may no longer sell such ads, Yahoo apparently has no problem buying them. The company went to Google and bought ads based on the name of a competing dating site. That dating site is none too pleased and, as Search Engine Watch has noted, has sued Yahoo for trademark infringement. This is a partial step in the right direction, as the firm is suing the advertiser (Yahoo) rather than the ad seller (Google). However, it's still the same story with a company believing no one else can ever use their trademarked term in any way. The company is claiming that it is still causing customer confusion -- but assuming the ad says it's from Yahoo, it'll be hard to prove that's the case. Perhaps, this is really just a desperate publicity attempt from the competing dating site.

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28 Comments

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doodle, 15 Jun 2006 @ 3:31pm

I was gonna say that.
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Anonymous Coward, 15 Jun 2006 @ 3:53pm

If we lined up all the lawyers in the world and shot them one by one in the gentiles a lot of this nonsensical wasting money would stop.
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AnnoyingGuy, 15 Jun 2006 @ 4:08pm

ummm...
genitals. Please don't shoot the gentiles.
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AnnoyingGuy, 15 Jun 2006 @ 4:08pm

ummm...
genitals. Please don't shoot the gentiles.
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lawyer, 15 Jun 2006 @ 4:08pm

Re: Shooting lawyers
If we shot all the lawyers, who would be left to point out that the word is spelled "genitals" not "gentiles"?
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drinkmorejava, 15 Jun 2006 @ 4:11pm

The question should be

trademark lawyers or copyright lawyers first, and if they happen to do both, well, I guess them first.
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Annoying English Teacher, 15 Jun 2006 @ 4:14pm

Re:
A Pedantic English teacher who taught those lawyers how to spell in the first place.
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lawyer, 15 Jun 2006 @ 4:17pm

Two Questions
1. Isn't "Annoying English Teacher" redundant?

2. Why is Padantic capitalized?
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Dale, 15 Jun 2006 @ 4:26pm

Did you read the article you linked to?
In the Denver Post article linked to, the lawyer for the plaintiff makes the point that the case is about consumer confusion:
But the sponsored links displayed a list of dating websites owned by Yahoo and two other companies named in the lawsuit, the suit said.

"This results in people clicking on the (sponsored link) that appears to the right rather than the actual search terms; it causes consumer confusion; and in a trademark-infringement claim, the issue before the court is 'Does it cause confusion?"' said Thomas Howard, a Louisville lawyer handling the case for JP Enterprises.
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Anonymous Coward, 15 Jun 2006 @ 4:28pm

Re:
And the earth would implode due to the lack of Evil. We just have to wait for a few years until Google has finished their Evil lair (with a tank full of friggin' sharks with friggin' laser beams in their eyes)
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Anonymous Coward, 15 Jun 2006 @ 4:33pm

WEEEEOOOOOOO WOOP WOOP WOOP WARNING!!! NAZI INTERNET SPELL CHECKERS DERAILING THREAD!!!! WOOP WOOP WOOP!!!!!
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Anonymous Coward, 15 Jun 2006 @ 4:39pm

Ummm... That's spelled "WEEEOOOOOO." Duh.
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DILGAF, 15 Jun 2006 @ 5:00pm

Re: Re: Shooting lawyers
Librarians, Englishteachers and so on and so forth
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Mike (profile), 15 Jun 2006 @ 5:13pm

Re: Did you read the article you linked to?
In the Denver Post article linked to, the lawyer for the plaintiff makes the point that the case is about consumer confusion:

Um. Yes. That's why I wrote in the post:

"The company is claiming that it is still causing customer confusion -- but assuming the ad says it's from Yahoo, it'll be hard to prove that's the case."
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Anonymous Coward, 15 Jun 2006 @ 5:34pm

Re: Re: Did you read the article you linked to?
Reading his comment, it looks like he's saying it's okay to sue a company for capitalizing on your own stupidity.
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Dale, 15 Jun 2006 @ 5:40pm

Re: Re: Did you read the article you linked to?
Ah, I did miss that line in the original post. In the 2500 words you wrote about the "misunderstanding of the purpose of trademark law", I took away the idea (incorrectly, it seems) that this dating site case was just another one of those misunderstandings/misuses of trademark law.

At least I made an attempt to understand the post rather than just submitting another lame lawyer joke...
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Anonymous Coward, 15 Jun 2006 @ 11:34pm

In my opinion, situations such as these are truly a sign of the times and an indicator of the decay in our modern society. You can't do anything anymore without a reasonable risk of a lawsuit. Very recently I had a disagreement with a co-worker that resulted in my inviting him outside. Long story short, of his choosing we wind up standing outside directly in front of a security camera. People don't even take a well deserved ass whooping these days without making sure they have the evidence necessary to carry out a lawsuit. The end of that story was me walking away, which I'm sad to admit. Stomping him out wasn't worth working the rest of my life to make sure he doesn' t have to. Although I've offered a completely off-topic example to support my argument, it's the same thing -- we live in a society fueled by constant litigation. When are we as a people going to pull our heads out of our rear ends and stop making a bunch of people with Masters degrees (although called a Juris Doctorate) who truly know nothing about anything the wealthiest people who walk in our midst? It's ridiculous, but there isn't a thing any of us can do but sit back and watch the show.
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Anonymous Coward, 16 Jun 2006 @ 4:18am

Oh, shut up and pass the sharpening stone...
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Anonymous Coward, 16 Jun 2006 @ 8:43am

If you killed all the lawyers, who would be left to chase the ambulances?
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saurab, 16 Jun 2006 @ 9:39am

in this case, i think the lawsuit is justified. Here's why: Yahoo was not merely putting up ads for the trademark "Lovecity", but they were also doing it for "lovecity.com" and "www.lovecity" which clearly demonstrates their motivations. Had their ads been merely for "Lovecity", one could have argued that this was merely a trademark issue, but here you're putting out ads for domain names which is kinda underhand.
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Confusious, 16 Jun 2006 @ 10:14am

Umm..
I am confused by these replies.
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Anonymous Coward, 16 Jun 2006 @ 10:33am

Re:
"but here you're putting out ads for domain names which is kinda underhand"

Uh, yeah, underhanded sure.. but brilliant marketing strategy, and NOT illegal.
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Nick, 16 Jun 2006 @ 10:48am

Its not the lawyers
Its not the lawyers... we are just as greedy as they are.
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Louis, 16 Jun 2006 @ 11:40am

Enjoy Coke
Anybody else ever wonder why Coke stopped advertising with the phrase "Enjoy Coke" and replaced it with the command "Drink Coca-Cola"? I suppose this may have cleared up some consumer confusion about whether or not the "Enjoy Coke" referred to snorting Cocaine.

Also, its spelled "Pedantic". And second, there`s huge difference between a Gentile and genitals. Some might disagree, like the Israelites, who believe that Gentile is a simile for "target practice".

WOOOOEEEE WOOOEEEE NAZI SPELLING POLICE!

That�s right I said "Nazi". Game over.

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Ben McNelly, 16 Jun 2006 @ 12:14pm

While we are on the subject...
If we have allot of gentiles as lawyers, I think we should go the way of the Jews that are lawyers. Circumcision of the genitals would be a good idea, and possiby give the lawyers a new perspective on the world...
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Michael, 16 Jun 2006 @ 12:41pm

From what I've heard the actual links on the adwords said 'lovecity.com' or something similar and when people clicked they went to Yahoo.

If thats the case I don't know how it becomes more blatent than that. Seems to me it would be the same thing as putting up a McDonalds sign in front of your restaurant when you're not McDonalds.
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Starky, 16 Jun 2006 @ 4:00pm

My theory:
Yahoo was hoping google would be sued for the ads.
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Anonymous Coward, 16 Jun 2006 @ 10:27pm

The full text of the legal complaint is filed on the always useful ResourceShelf.com

http://www.resourceshelf.com/2006/06/17/web-search-full-text-of-court-filing-in -yahoo-trademark-infringement-case-2/
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