1-800 Contacts Sues Competitors For Keyword Ads Despite Losing Similar Cases And Buying Keyword Ads Itself

from the please-explain dept

Thu, Jan 10th 2008 12:20pm — Mike Masnick

We keep hoping that companies will realize that suing over competitors buying ads on trademarked keywords will finally go away, after case after case after case has shown that it's not a violation of trademark law. However, they just keep coming. The latest may be the most ridiculous, as described by Eric Goldman. 1-800 Contacts is suing competitor LensWorld for buying ads on the "1800Contacts" keyword. Again, assuming that LensWorld's ads are clearly for LensWorld, then there shouldn't be any chance of confusion and the case should be tossed out. However, what makes this case even more interesting is that 1-800 Contacts has already brought similar cases in the past -- and lost them decisively. In fact, in that case, 1-800 Contacts seemed to have a stronger case, as it involved adware popping up full ads next to their website, rather than just keyword search ads. So it seems odd that 1-800 Contacts would try again -- other than the fact that it's trying in a different circuit.

However, what's even more bizarre is that while 1-800 Contacts is suing, it has no qualms in doing the same thing itself. Yes, the company has a history of buying ads on the keywords of its competitors, which is part of the reason why the company lost the earlier case. Not only that, but when the state of Utah tried to put in place a law that would ban advertising on trademarked keywords, 1-800 Contacts was one of the companies that convinced Utah legislators that such a legislation was a bad idea, highlighting how the buying of trademarked keywords helped 1-800 Contacts promote its business. As Goldman says: "Hey 1-800 Contacts, maybe I'm missing something, but if you wanted to bring a keyword advertising lawsuit like this one, maybe you shouldn't have badgered your legislators to remove a law that would have ensured your success in court!"

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Filed Under: keyword ads, trademarks
Companies: 1-800 contacts, lensworld

8 Comments

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Craig Ferrante, 10 Jan 2008 @ 12:50pm

KeyWords
Many advertisers such as SignCompaniesOnline, YellowPages.com and others purchase ads to compete with other companies that offer same or similar services. If we do not purchase those key words and a customer meant to go to one site and typed in the other how are you going to redirect them? Its not illegal to advertise competitively yet but someday it probably will be so might as well do it now. SignCompaniesOnline.com chooses to advertise to local clients using words and phrases that local customers will use.
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another mike, 10 Jan 2008 @ 1:23pm

blind leading the blind?
or is this just another case of the left eye not knowing what the right eye is looking at? how else could they block a law that would help their anti-competitive lawsuits.
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Ima Fish, 10 Jan 2008 @ 1:34pm

It's cases such as this that you wish judges had and could utilize baseball bats in court. A few bloodied heads later and you wouldn't' see such cases being filed.
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- 4-80-sicks, 10 Jan 2008 @ 1:55pm
  
  Re:
  It's cases such as this that you wish judges had and could utilize baseball bats in court.
  
  You mean like Extreme Akim on Eye for an Eye?
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Anonymous Coward, 10 Jan 2008 @ 2:07pm

Left Hand meet Right Hand
Learn what each other is doing now.
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Anonymous Coward, 10 Jan 2008 @ 4:45pm

They are doing this so they can try to give their lawyers something to do every once in a while and make it look like they don't have lazy bums for lawyers
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Just Me, 10 Jan 2008 @ 4:54pm

Of Course
Well of course they don't want a law making it wrong to do this; if there was a law then it wouldn't happen. If no one did this then there would be no one to sue.
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MM, 4 Feb 2008 @ 8:41pm

Keyword Bidding
1800 Contacts once again proves to me that they are just lost in the haze when it comes to this form of marketing. As a past affiliate of theirs they have strict guidelines and than you will find them competeing with you on certain keywords that you know they learned through you when you were an affiliate... anyhow I am happy they bring these type of lawsuits forward for every time they lose it just makes it easier to set a precedent...
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