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Commercial or Informational? - Your Choice
by: Mikki Barry
An issue has been brewing almost since the inception of Google AdWords, regarding who "owns" what rights to which words. Trademark holders and business owners alike have been calling "foul" when a competitor uses their name, product name, or trademarked slogan in order to cause their advertisements to appear either in the Google search results (by use of meta tags or otherwise using the keywords in their website itself), or by purchasing those words via Google's AdWords which would then cause their ads to appear in the sponsored sections of the search pages. In this particular case, Office Depot has sued Staples, claiming that Staples linked to words that are Office Depot trademarks, causing Staples ads to come up on searches for "Viking," which is a subsidiary of Office Depot. Office Depot claims trademark infringement, false advertising, unfair competition, and deceptive trade practices. So what's going on here? Does a trademark mean that you then "own" that word or that phrase, and nobody else can use it ever? Can the "trademark police" stop you from using the words "Office Depot" unless you're talking about them specifically, including disallowing anyone from saying they are a store "like Office Depot?" Trademark Infringement Let's take a look at the claims that Office Depot are making against Staples. First in line is trademark infringement. Trademark law is carved out of our general ability to use words in any way we choose (in the US anyway) in order to protect consumers against inferior products, by clarifying the source of a product or service so that you can be certain that an "Office Depot Product" was actually made by Office Depot and not by someone else. It is relatively clear in this case that a consumer would not be confused in the least by clicking on an advertisement for a shop that does not claim to be Office Depot, or have Office Depot in their domain name. If I were the judge, I'd throw that one out on its nose. False Advertising How about false advertising? Well, since Staples isn't claiming to be anything but Staples, how could they be advertising falsely? The advertisement they have created is purportedly true. The only difference is that the mechanism by which the ads are shown. Is this false advertising? Not in my opinion anyway. It could, in fact, be argued that use of competitor's words in search engines are pro-consumer in that it provides the consumer with far more choices then they would otherwise find. Unfair Competition Unfair competition? Now that one is a possibility. Unfair competition laws are set to protect companies against other companies, rather than protect the consumer against companies, as trademark law and false advertising are set up to do. Unfair competition actions grew out of trademark infringement law to prevent one trader from diverting patronage from a rival by falsely representing that his goods were the goods of his rival. But wait a minute here; Staples wasn't passing off their goods by saying they were actually Office Depot's goods. Again, there was no likelihood of confusion or misunderstand as to the source of the product. So that one doesn't work terribly well either. Deceptive Trade Practices That leaves us with deceptive trade practices. So what ARE deceptive trade practices? The Federal Trade Commission defines prohibited activities in the Uniform Deceptive Trade Practices Act as: 1) Passing off goods or services as those of another. Well, that looks a lot like unfair competition and trademark infringement. 2) Causes likelihood of confusion or misunderstanding as to the source or approval of goods or services; or an affiliation with or certification by someone else. Does a listing on a search engine imply an approval, affiliation or certification? Not to any consumer who has used a search engine for more than 15 minutes :-). Doesn't seem like this one fits either. 3) Uses deceptive representations or designations of the geographic source of the goods or service. Nope, don't see any of that here. 4) Represents that goods or services have sponsorship, approval, characteristics, ingredients, uses or benefits that they don't have, or that a person has some sponsorship, approval or connections that he or she does not. Office Depot hasn't claimed anything about the goods themselves, just that they are being advertised by purchasing words from AdWords that correspond to Office Depot protected words. So that doesn't work either. 5) Represents that the goods are original or new when they are not. See #4. 6) Represents that goods or services are of a particular standard, quality or grade, or of a particular style or model, when they are not. See #5 7) Disparages the goods, services or business of someone else by false or misleading representations. If you believe that simply displaying someone else's goods disparage yours, perhaps this one will fly, but likely not. So what is the real point here? So if such a cursory view by another attorney shows the large holes in the claims of this lawsuit, why file it? What is the point? It is highly possible that Office Depot has filed this suit in order to bring attention to the practice of competitors ensuring that their advertisements are shown along with their competitors' in hopes that Congress takes up the issue and passes new laws or modifies current laws to prohibit the practice. However, prohibiting the use of competitor's words, products or phrases in meta tags or programs like AdWords would likely create much more difficulty than it solves. As a consumer, one uses a search engine in order to find the best product, the best price, or information on that or similar products to fulfill your current needs. It is in the best interest of the consumer to provide as much information as possible so that the consumer would be able to make the best choice for that particular consumer's circumstances. The question comes down to a familiar one - should the Internet be primarily an outlet for information, or for commercialization? If you choose information, then anyone should be able to use whatever meta tags, adwords, keywords, or text that they desire, so long as they are not in violation of laws that protect consumers from poor quality, or confusion as to the source of a product or service. This would leave the constitutional right to "bash" particular products, use parody, satire, or simply mention products on your website and then sell AdWords to further promote your blog or whatever else you wish to promote. On the other hand, if you choose commercialization, use of trademarks in meta tags, on your website, or in AdWords would be prohibited, necessarily limiting the amount of easily accessible information on ANY subject, not just regarding products or e-commerce interests. About the author: Mikki Barry has been a trademark and intellectual property attorney for technology and small business companies since 1991. For more information see www.mikkibarry.comThis article is not meant to be legal advice. Circulated by Article Emporium

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