A Thought on Trademarks as Keywords

On my Advanced Trademark final during my last semester at Cardozo, there was a question regarding the use of trademarks as keywords for purposes of banner advertising. The cases that exist hinge on whether or not such a sale constitutes a "use in commerce" for the purposes of trademark law. If it is a "use in commerce" then the practice should be considered trademark infringement. When thinking about the issue, I decided to take a step back and ask what the possible effects would be if the practice was prohibited. One of my conclusions was that banning this practice would result in favoring fanciful marks above all other kinds of trademarks.

To illustrate, let's take a fanciful mark like a drug name such as Viagra. In a world where TM as KW sales are illegal, you would type "Viagra" into Google and no banner advertisements would exist. Pfizer would possess a monopoly over the upper portion of the search results because no one could buy advertisements. However, a company that uses a non-fanciful mark, like American Airlines, could clearly not prevent the sale of "American" as a keyword considering the other uses of the word. This example also proves the difficulty of the implementation of such a plan. Would it just be prohibited to sell the words "American Airlines" in conjunction as a keyword? Could competitors buy the rights to have advertisements pop for the word "American" by speculating that a majority of the searchers will be looking for American Airlines? I have of course picked a grossly oversimplified illustration, but I feel that it demonstrates the issues with such a prohibition and its implementation.

From my perspective, it is preferable to retain the TM as KW practice for several reasons. First, as I demonstrated, a prohibition would result in unequal treatment of trademarks. Second, I believe the practice is a direct analogy of the real-world practice of placing generic products next to their legitimate counterparts on a CVS shelf. This is one of the contexts where the Internet should not be treated differently than its closest real-world analogy. Third, just like the CVS scenario, this encourages more direct competition which is theoretically supposed to benefit consumers.

Nobody Puts Lion's Gate in a Corner.

I am back from my Greekeyrael vacation (Greece+ Turkey + Israel), which was absolutely amazing. The measure of a good vacation is how difficult it is to return to normalcy, and I am having withdrawal symptoms already. The only blemish was having to scrounge from Internet cafe to Internet cafe just to check up on nytimes.com and my fantasy baseball teams. I now appreciate how amazingly reliant I am on the Internet. Well, absence makes the heart grow fonder, and so here I am ready to catch up on the interesting goings-on in the IP world.

First order of business is a case relating to the line "Nobody puts baby in a corner" from the Oscar-winning epic "Dirty Dancing." I take this case very seriously as this line has been a personal mantra for the past 10 years (don't worry, I am kidding).

The line has gained widespread notoriety, and was even included in AFI's list of top movie quotes. Lion's Gate supposeduly trademarked the line so it could sell merchandise based on it. After discovering that 15 companies sold merchandise using the line, Lion's Gate filed a trademark infringement lawsuit, Lion's Gate Entertainment v. The Urban Smalls Corp.

What is interesting in my mind about this case is that the line really isn't a trademark. It is not a mark used to designate source, but rather a phrase that has value in and of itself. The line cannot be copyrighted because it is too short, and so Lion's Gate decided to pursue trademark protection. Should Lion's Gate be able to trademark a movie line considering it is not the intention of trademark law to protect such an item?

The case certainly has some implications, as an entire industry exists based on using movie quotes for T-shirts, as evidenced by the following T-shirt immortalizing Steve Carrell's quote from the movie "Anchorman."

Why exactly is he wearing a headband with the Japanese flag on it?

There is an interesting discussion of this topic on the Blawg IT by Brett Trout. First, he says that he conducted a trademark search and could not find anything relating to cornering Baby. Second, he calls our attention to Section 1202.03 (f)(i) of the Trademark Manual of Examining Procedure-

1202.03(f)(i) Slogans or Words Used on the Goods Slogans or phrases used on items such as t-shirts andsweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating source of the goods. See Damn I'm Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) ("DAMN I'M GOOD," inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988) ("SUMO," as used in connection with stylized representations of sumo wrestlers on applicant's T-shirts andbaseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) ("[T]he designation 'ASTRO GODS' and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant's shirts."); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) ("YOU ARE SPECIAL TODAY" for ceramic plates found to be without any source-indicating significance).

However, each of these cases seemed to revolve around a phrase that the maker of the goods had no real claim of right over. Lion's Gate, on the other hand, owns the underlying work from which the quote was taken. It certainly has a more legitimate claim over the line than someone who peddles a T-shirt saying "Damn I'm Good."

This begs the question, when can we expect a lawsuit by Bobby McFerrin over the "Don't worry, be happy" T-shirts?

Keith Urban vs. Keith Urban

This piece, entitled "Al Bundy for President" is by the artist Keith Urban from New Jersey
This is Keith Urban the singer (also known as Mr. Nicole Kidman)

So this is a bit amusing, but there is a trademark cybersquatting dispute brewing between Keith Urban, the Aussie country singer, and Keith Urban, the New Jersey painter. Apparently, Urban the painter beat Urban the singer to the punch in registering www.keithurban.com.

Here is a quick review of what Urban the singer will need to prove in order for Urban the painter to be found to be cybersquatting. The Anti-cybersquatting Consumer Protection Act (ACPA) was enacted in 1999. Cybersquatting was becoming an increasingly common problem in the early days of the Internet, as random people were snatching up .com domain names of gigantic trademark owners, and holding them for ransom.
Under the act, Urban the singer needs to prove-
1. that Urban has a bad faith intent to profit from the registered trademark and
2) that Urban the painter registers, traffics in, or uses a domain name that is identical, confusingly similar, or, in cases of famous marks, dilutive of a mark that is distinctive or famous at the time the domain name was registered.

Interesting enough, one of the factors considered when determining whether there has been "bad faith intent" is if the domain name consists of the legal name of the registrant. That is one point in Urban the painter's favor.


However, this is not a clear case by any means. Other blogs have focused on the fact that the site says "You have reached the site of Keith Urban. To those who don't know, oil painting is one of my hobbies." This potentially implies that the singer is a Renaissance man of many talents.

What people haven't commented on and I find interesting (despite being unsure of its evidentiary value) is that Urban the painter enlisted Google Adwords to do advertising on the site. Being the intelligent program that it is, the end result is that the advertising displayed prominently front and center on keithurban.com consists of three ads for "Keith Urban Tickets" and one for "Keith Urban Concert Tour."

Will post later with a suggestion for Keith Urban The Singer's legal team. Over and out.

Initial Interest Confusion Online- Cyberlaw Wiki Post

Here is my Cyberlaw wiki post that initially discusses the Brookfield Communications vs West Coast Video case (summary here). I then posit a new framework for thinking about initial interest confusion online

I find the decision of the court in Brookfield Communications to be slightly troubling. The highway analogy employed by the court was at first blush a convincing argument that West Coast had acted unfairly. However, if one considers the decision in relation to the real world concept of generic products the decision becomes less firm. Trademark law has deemed it appropriate for Duane Reade to place a generic form of Advil right next to Advil on a product shelf. The Duane Reade generic box is permitted to have similar coloration and to even have a similar shape. The box is even allowed to include the brand name Advil on it and say that consumers should compare ingredients to the original Advil. Clearly this analogy can be applied to the online world. While it admittedly doesn’t seem appropriate for one company to use a competitor’s brand name in their metatags, let us think about the result of such an action. Compare Google search results to a product shelf. If a person googles “moviebuff”, Brookfield’s webpage would presumably pop up next to West Coast’s. Each page would have a description below it including the terms moviebuff, from which it could or could not be clear which one was which. Assuming it was clear which one is Brookfield’s then there is no question that West Coast has not caused any confusion and should prevail. Assuming there is some confusion as to the website and a person clicks on West Coast’s site, it would either become apparent to them that they were at the wrong site (and they would click “Back” and find Brookfield’s site) or choose to stay on West Coast’s site with similar services. I don’t really see that much of a difference between this and staring at a product shelf. When a customer is choosing between an original and a generic juxtaposed with each other in the physical world, one can think of the thought process as an economic equation:

Perceived difference in quality (Qual Diff)+ strength of original brand name (Brand S.) WEIGHED AGAINST the difference in price between the two products
If
(Qual Diff) + (Brand S.) > (Price Diff) then the consumer would choose the original.
And if the opposite holds true
(Qual Diff) + (Brand S.) < (Price Diff) then the consumer would choose the generic product Now let’s think about how to apply this to the online context when comparing sites where the product is information, and the consumer has mistakenly clicked on the competitor’s website rather than the original. Here the ultimate act is not purchasing a product but rather viewing the site. So in my opinion the equation would look something like this: (Perceived difference in quality) + (Brand strength of original) WEIGHED AGAINST (The cost of finding the original website) If the viewer has any attachment to the original site or any estimation of its quality they would presumably take the couple seconds necessary to click back to the search engine and find the original. This equation also reveals the shortcoming of the highway analogy. As constructed by the court, the price difference/cost is to get back in the car and drive another exit. This really isn’t an appropriate comparison to the seconds necessary to find the desired website, and so the court really shouldn’t have attempted the analogy in the first place. Now, comparing the real-world equation versus the online equivalent leads me to a couple of conclusions: 1. The cost in the online world appears to be less than the cost in the real world. This is of course a gross generalization. But if one takes the time to stroll down the aisles at Duane Reade there is generally a significant price discrepancy between the original and the Duane Reade equivalent. While it doesn’t seem fair to compare dollars to seconds, I think that it isn’t patently unfair to come to my first conclusion. (If you really want to make this a mental exercise, you would have to figure out
2. The smaller the cost/price difference, then the less likely the generic will steal market share from the original. This is relatively straightforward from the equation.
3. If 1 and 2 hold true, then online competitors should be permitted to compete in this fashion. In the real world, generics take significant market share from the original because they can produce similar products at a much lower price. In the online world, the “generics” face a much stiffer obstacle when competing with the originals, because the cost of finding the originals is so small. If generic products are allowed to compete so efficiently in the physical world it is a double standard to not permit placing competitor’s brand names in metatags when the only practical consequence is landing next to the original in a search engine result. This whole discussion doesn’t even factor the idea of nominative fair use into the analysis, which I feel would further strengthen the argument that such practices aren’t antithetical to the principles of trademark law.