Canadian Court Notes That Keyword Advertising On Competitor's Trademarks Is Not Deceptive

from the good-ruling dept

There have been lots of lawsuits over the concept of buying search ads based on a competitor's trademarked term as the keyword, and more and more courts seem to be realizing that there is nothing wrong with this, so long as the ads themselves are not designed to confuse users. It looks like a court up in Canada has agreed that there's nothing wrong with putting up ads on other's trademarked keywords, because the likelihood of confusion is minimal. In this case, the plaintiffs found someone who claimed he signed up for a class at the wrong school because of a keyword ad, but that wasn't that believable, as "the registration came after a 90-minute in-person interview and the completion of an admissions test."

The court sided with VCC, concluding that its use of competitor names in its keyword advertising strategy was unlikely to deceive potential students. The judge noted "where a student erroneously chooses to examine a VCC Inc. 'sponsored link' website instead of the website of the institution they originally wanted, I am satisfied the information readily available on the various VCC Inc. websites is more than adequate to inform the student that they are examining a VCC Inc. institution and not the one they were initially searching for."

Always nice to see common sense prevail in court.

Filed Under: canada, keyword ads, trademark

Rescuecom Wants It Both Ways Over Keyword Ads; Involved In Two Lawsuits... But On Opposite Sides

from the that-won't-work-well dept

There have been a bunch of silly lawsuits over the use of competitors' trademarked terms being used in ads on Google AdWords. There are a bunch of different legal issues related to those lawsuits, including whether or not Google should be liable for actions of advertisers, whether it's trademark infringement to mention a competitor in an ad, and whether it's trademark infringement just to have an ad triggered on a competitor's trademarked phrase. There's a company called Rescuecom that has been particularly aggressive in these lawsuits, suing Google for a competitor having ads triggered on their trademarks. While a district court rejected that claim, last year an appeals court sent it back to the lower court to try again. And yet... at the same time, it appears that Rescuecom is involved in a lawsuit on the other side with Best Buy. Best Buy claims that Rescuecom is infringing on the "Geek Squad" trademark, and Rescuecom claims that it has a fair use defense... yes for the very same thing it's accusing others of doing. You have to imagine that's going to be pointed out in both of those lawsuits. Some have suggested that Rescuecom doesn't really care either way, and it believes that these lawsuits are a good PR campaign -- which could explain its different view in each lawsuit. If that's the case, it seems like a rather big abuse of the legal system.

Filed Under: keyword ads, trademarks
Companies: best buy, geek squad, google, rescuecom

American Airlines And Google Settle Keyword Advertising Spat

from the too-bad-it's-secret dept

Despite lawsuit after lawsuit ruling in favor of Google whenever a company sued Google because one of their own competitors was buying keywords based on their trademarks, American Airlines decided to get in on the game as well. Since American Airlines was probably the biggest company to take on Google in this manner, some undoubtedly were hoping that it might actually be able to succeed. However, the two companies have now settled the case. And, while the terms of the deal remain secret, Eric Goldman checked the ads on Google and doesn't see anything that indicates that Google has changed its usual practice of allowing non-confusing ads.

In other words, it sounds like American Airlines lawyers finally looked at the details of earlier rulings and realized the company had close to no chance of winning this. A trademark does not give the holder complete control over the use of the word, and a competitor using the word for competitive advertising is completely legal, so long as they're not using it in a way that is likely to confuse a consumer. Even more important, if there's any liability, it should be on the other advertisers, not Google, which is merely the platform provider.

Filed Under: keyword ads, settlement, trademarks
Companies: american airlines, google

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

from the please-explain dept

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!"

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

Yet Another Keyword Advertising Suit... And Yet Another Ruling That Keyword Ads Don't Violate Trademarks

from the please-make-it-stop dept

We're beginning to get quite sick of companies claiming that having a trademark give them total control over a trademarked phrase. That's simply not true and never has been true. Yet it shows up all the time in the ever popular lawsuits over keyword advertisements. Over and over again the courts have shown that it's perfectly fine to use a competitor's trademarked phrase or name as a keyword to put up a competitive ad. The latest such case highlights an important point. While many of the cases have argued that using a keyword isn't "use in commerce," (a key part in determining if a trademark has been violated) this ruling found that it actually was used in commerce... but it still didn't matter because just because you own a trademark doesn't mean you can prevent all uses of it. You can only prevent uses that are likely to confuse potential customers over who is actually selling what, or that will dilute your brand. That's not the case when someone is simply putting up a competitive ad -- and it's nice to see a court recognize that fact.

Filed Under: keyword ads, trademarks
Companies: ebay

More Misplaced Google Ad Lawsuits... This Time In Australia

from the everybody-sue-Google-now dept

Just as Google has settled the longstanding keyword trademark lawsuit from American Blinds (and as a new one starts up from American Airlines) in the US, it appears that Google is facing a similar challenge down under. The Australian Consumer and Competition Commission is suing Google for supposedly deceptive ad practices, but the details suggest that perhaps the ACCC is a bit confused. It seems to be complaining about a few different things, and it's worth separating those out. First, it appears that an organization named Trading Post, which appears to be an online classifieds site, bought deceptive ads on Google, pretending to be local Australian car dealerships. This can absolutely be seen as trademark infringement if the ads were (as the ACCC accuses) made to look as if they pointed directly to the dealership websites, rather than a Trading Post page. However, the infringement is by Trading Post -- not Google. ACCC is suing both, but it's hard to see why Google should be responsible for the actions of an advertiser.

The second complaint is even more bizarre. ACCC claims that Google hasn't done enough to distinguish the top ad slots from the organic search results. That seems like a stretch. Google has always done a good job highlighting and marking the listings that were ads, and you'd have to have pretty bad eyesight not to realize which slots are for ads and which are for organic listings. Nevertheless, ACCC claims that Google does not make this clear and that people would think the sponsored listings were the top organic listings. Of course, it's hard to see how they can back that up, since the sponsored slots are so well marked. However, why let little things like facts get in the way of a chance to sue the almighty Google?

Update: Well, that was fast. It looks like the judge in the case agrees with us, as he wasted no time slapping down the ACCC's arguments as "incomprehensible," "opaque," and "somewhat repetitious."

Filed Under: keyword ads, trademarks

American Blinds Realizes That It Was About To Lose Google Keyword Ad Suit

from the er,-can-we-go-home-now? dept

Just a week or so after American Airlines was the latest in a long list of companies to incorrectly sue Google claiming that Google violated its trademarks in allowing others to buy keyword ads on the trademark "american airlines," one of the more well known cases in this realm has come to a close. American Blinds was one of the more prominent companies who had fighting Google. Again, the complaint was both wrong and misdirected. It's only trademark infringement if the ad would confuse people into believing the ad was from American Blinds when it's not... and even in that case, the fault lies with the advertiser, rather than Google. After years of fighting, it appears that the folks at American Blinds finally realized its chances of winning were close to nil, and have agreed to settle the case, with Google paying absolutely nothing. In other words, American Blinds spent a ton of money in legal costs and ended up with nothing. As Eric Goldberg points out in the link above, some people would have liked a judges ruling that could be used as precedent out of this case -- but even this settlement should hopefully alert other companies not to follow American Airlines down this questionable legal strategy.

Filed Under: keyword ads, trademark
Companies: american blinds, google