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.

Report on RIAA's Litigation Campaign

The Electronic Frontier Foundation (EFF) has published a report on the RIAA's four year litigation campaign waged against college students and other alleged copyright infringers.

Douglas v Talk America Case Regarding User Agreements.

In July, a case called Rogers v Talk America came down in the Ninth Circuit regarding user agreements that I find pretty interesting. In the Cyberlaw class I took my last semester at Cardozo, we discussed how user contracts govern the actions of people online, and can sometimes be used to overcome copyright rights held by users (like first-sale principles.) The ability of contracts to trump other forms of law is important considering the complexity of the contracts that exist nowadays to download an application or use a website. People are often unaware of the terms that they have bound themselves to, because they are unwilling to spend 30 minutes reading a contract just so they can download a simple computer application.

There is a good discussion of the case on the Technology and Marketing Law Blog. In the case, an AOL user agreed to a contract with AOL regarding telephone service. AOL subsequently sold its telephony business to Talk America, which then posted amendments to the user agreement online. After a dispute arose, Talk America attempted to say that the dispute should be decided by arbitration because of a clause in the amended agreement. The Ninth Circuit did not buy the argument because "parties to a contract have no obligation to check the terms on a periodic basis to learn whether they have been changed by the other side."

The second question this raises is whether or not the parties can agree in the original contract to permit one party to unilaterally amend the contract. I think that it would be clear this shouldn't be the case, considering there should be new consideration for any amendments made to the contract. Yet after this case we might expect to see such a provision in similar contracts, as it does the companies no harm to insert the provision as insurance in the event that it is upheld.

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?