Slashdot Mirror
Web Ad Trademark Law To Be Retested
scubacuda writes "News.com et al report that The Ninth Circuit U.S. Court of Appeals on Wednesday found Playboy Enterprises can pursue charges that Excite and Netscape Communications violated its trademark by selling banner advertisements triggered by the terms 'playboy' and 'playmate.' The decision reverses a district court ruling that dismissed the suit without a trial in 2000. Playboy 'clearly holds the marks in question, and defendants used the marks in commerce without (its) permission,' a split three-judge panel wrote in its majority decision." This is a shame, because the first judge to look at this case seems to have pretty much gotten it right: "Although the trademark terms and the English language words are undisputedly identical, which, presumably, leads plaintiff to believe that the use of the English words is akin to use of the trademarks, the holder of a trademark may not remove a word from the English language merely by acquiring trademark rights in it."
Trademark law is based on likelihood of confusion. I don't agree, and the courts won't either, that Playboy can stop all uses of these terms. But I think it's justified here, where someone is using a company's trademark to sell related but non-affiliated goods. This isn't a case of the search results including related goods; here the website brings up a paid-for banner advertisement: "Some consumers, initially seeking Playboy's sites, may initially believe that unlabeled banner advertisements are links to Playboy's sites...Once they follow the instructions to 'click here,' and they access the site, they may well realize that they are not at a Playboy-sponsored site."
I agree that most intellectual property law is subject to abuse (see, e.g., RIAA), but that does not automatically equal the proposition that it is all bad or immoral.When we remember we are all mad, the mysteries disappear and life stands explained.
Mark Twain
Microsoft can't sue people because windows is too general a term but Playboy can???
That seems a little hypocritical to me.
Chaos reigns within.
Reflect, repent, and reboot.
Order shall return.
I guess I'd better start watching which words I use for fear of lawsuits. Come on up to my... ahem... apartment-or-suite-on-the-top-floor and we can discuss it.
I suppose the instant reaction for a geek should be "anarchy! no laws!". So let's add trademarks to the copyright and patent laws that need repealing. Anarchy worked for a looong time before any system of laws was written up, so it can't be that bad. We even evolved under anarchy.
-Libertarian secular transhumanist
For example, I looked up "Jenners" in Google -- Jenners is a famous Edinburgh, UK department store -- I got a paid advert for Debenhams, a UK-wide department store who attract the same middle-class customers as Jenners.
Why the hell did Google let Debenhams brazenly advertise under their competitor's name?
Google has sent our company a number of emails saying they have disabled keywords we use in our Adwords campaign because they are trademarked. At first, the company with the trademark had to complain, but now it seems like the are actively searching for trademarked keywords and disabling them.
Check out this article over at Slate: slate.msn.com/id/2089879
There is no clear winner yet. Wait for the actual case.
Wasn't Microsoft developing something called SmartTags to place links in other parties web pages. I would think that if this ruling stands then there is no way MS could hijack the trademarks and copywritten material in a web page to 'use in commerce' without the authors permission.
"Linux" is TM to Linus Torvalds. The poster who thinks these judges decision is a "shame". I wonder if "Linux" were being used to drive search engine clients to Microsoft, Open/Free/NetBSD or whomever, would the politically correct (/.) views be different?
And who's to say that the Judge who "got it right" the first time had a decent understanding of the issues, or didn't have an axe to grind vs the pornography industry. Possibly she can't see the TM on the pages the way it would appear if it were used in a print-advertisement, and ruled accordingly, while anyone understanding that 'content' now exists in code that's not visible.
So it's pretty clear to me that yes PEI has a pretty good case here, that Excite, Netscape and their clients were profiting on PEI's TM's and that the use was commercial (i.e. it's much less of a free-speech issue - *yes* the rules for commercial speech are different). The article wasn't all that clear but it seems that all of this came about because Google was pro-actively seeking a judgement on it's own approach to TM's in search/advertising. Again no surprise here that Google would follow the letter of the law while Excite & Netscape would use a sleaze approach to gain revenues.
Linux is Linux, if One need clarify their dist: <Dist>/GNU Linux
bsds are of course just BSD
We might also note that the term "playmate" is being blatantly infringed by makers of toys, playground equipment, and publishers of elementary-education books and materials.
It's only a matter of time before Playboy goes after them, too. So they should start introducing a new term now. Of course, it might be difficult to find a word (even a made-up word) that isn't already registered as a trademark.
Of course, we should have known that the world had gone utterly insane when a court accepted Fox's suit against Al Franken over the phrase "fair and balanced". You might argue that Al won this one. But consider the implications of the fact that it even got into the courtroom, and the judge didn't just laugh and fine Fox for a frivolous filing.
Bankrupting via court costs has indeed become a business plan.
Those who do study history are doomed to stand helplessly by while everyone else repeats it.
Does anyone believe for a second that the people placing ad buys on the terms playboy and playmate are not specifically trying to target people looking for Playboy Playmates? When a trademark is the same as a common word, shouldn't the determination be made based on intent? Maybe some users searching for "playboy" might mean the english term, but that's not who the advertisers are targeting. They are making money off a trademarked name, and as far as I'm concerned, that's wrong.
666-607: 6th floor apartment of the beast
The initial judge wrote a well thought and poinient opinion, with which I agree. However, I also think that this should go to trial and have all the merits argued in court and a final decision rendered.
With this floating around without an official judgement, there's nothing stopping any compnay from suing anyone who uses the company's plain-word trademark.
Article X: The powers not delegated... by the Constitution...are reserved...to the people
I think I'm gonna have to side with Excite and Netscape on this one. These are common English words, even if they are associated with Playboy.
And as a company they have a right to "pop-up" whatever they want on their site. Do I think its deceptive? Well yes, because it is. But should it be illegal? Sorry I don't think so.
So yes I think the original judge in this case made a very valid point. The two companies did not use the words with specific references that would lead one to believe they would get Playboy the company.
Personally I don't believe this case will end the second time any different then the first time. Unless Netscape or Excite decide to just settle this with an out of court settlement, which is unlikely.
"why don't you just slip into something more comfortable...like a coma!"
The Ninth Circuit Court is considered the worst in the nation. It has had more of its rulings overturned than any other Federal circuit court. The court was packed with Clinton nominees during the 1990s. Most of these appointments were based on ideological factors and not sound jurisprudence. In general, the Ninth Circuit tends to rule against individual rights and freedoms, and in favor of special interest groups.
As a playboy,pimp, and all around playa. The ruling infringes on the rights under the Professionals in Management of Prostitution or PIMP act of 1972.
Once again the man is trying to keep a brotha down.
People who bite the hand that feeds them usually lick the boot that kicks them
whats this web ad trademark law all about?
is it cool or is it whack?
Now that goatse is gone, we have to find some other sites to post from. I, for one, suggest that we start posting tons of TS/TG related stuff. That's bound to annoy the idiots who think /. should be just purely news and not entertainment (ie. a sense of humor). Here is an example for starters...
This is a tough one, with that any company can copyright and trademark and term so long as no other company has allready thought to do so, it could soon be that we're so hideously restricted that we may have to start adding words to our language. On the other hand, in this specific case, how often does anyone use the word playboy or playmate in a search variable on the net without it being a direct relation to the magazine and the models? Honestly to parents go online and look for playmates for their kids? And how many women really search for playboys? I agree with one of the previous posts that thinks this case should go to trial and have the merits argued exhaustively, it's going to be a more and more prevalent issue, hell Comcast has the @ as a trademark, A&E has the ampersand, soon the courts will HAVE to weigh in and put some sort of guidelines in place for this issue. How in the hell they will do that I have no idea, I'm torn myself with wanting to tell the money grubbers to go screw themselves for thinking that they can somehow usurp the language by thinking their ideas are so unique that the word/phrase/punctuation should only be used when in conjunction with their corporate entity, but on the other hand, I can see an argument for someone who has scratched out a niche for themselves and then a pack of weasles come in behind them hoping to leech off of their success and name recognition.
Ah Well
HELP CANT BREATHE
up pandora's box. what if someone types Unix and you get advertisement for Linux? Is it a trademark violation? what if you go to a store, ask for iPod and the store clerk shows you Archos jukebox? Is it a trademark violation? i guess, it is a trademark violation if and only if the advertisers are somehow trying to sell you the item in a manner to imply some connection with the trademark. thus if you type 'playboy' and you are taken to web site 'playman' which has content to fool you that it is a playboy website.
When I first read about this case way back when, I thought, "Oh, geez, Playboy's being ridiculous," but then I thought about it some more and I have to agree that the websites in question were violating Playboy's trademark, in my non-lawyer, non-judge, never-went-to-law-school layman's opinion.
I mean, the words ford and mustang are in the dictionary, too, but wouldn't it violate Ford Motor Company's trademark if those words in a search triggered a banner ad for the Pontiac Grand Am? What about the words chevy and corvette, which are also in the dictionary? How many people think of the words ford, mustang, chevy,and corvette in relation to cars? I bet it's about as many people as would think of the word playboy in relation to a men's magazine.
I disagree with the post, and I think that the first judge in the case got it wrong, not right. I don't think he or she really understood just how the words were being used. The words playboy and playmate were being used to promote a competing product, which, AFAIK, is a violation of trademark law. But maybe another appeals court will feel differently.
You are in error. No-one is screaming. Thank you for your cooperation.
This ruling may actually have its merits. It is the first appellate court decision of its kind to rule on the legitimacy of squatters, or less than stellar companies, piggy-backing on trademarked terms as search keywords in sponsored results. It will set precedent, by whatever happens at trial in the district court.
:)
Further, it's also good because it is yet-another-blow to "seedy" companies like Claria and WhenU, which install so-called "adware" on users' computers and then produce pop-up ads when the user visits a Web site of the competitor of the very sleezy advertiser.
I'm all for reduced patents and trademark giveaways, but something like this, is a good ruling.
The district court got it wrong.
However, Playboy may have to refile its suit since, at the time, Excite was still owned by the now defunct/dissolved Excite@Home. It was since purchased by Focus Interactive and InfoSpace. And since then, Focus Interactive bought out InfoSpace's remaining stake and now wholly owns Excite.
So their suit may have to target Focus Interactive now.
Cheers,
Doug
Doug Mehus http://doug.mehus.info/
Igloo deserves a mention here, too. After all, they have elite playmates, little elite playmates, and even plus sized playmates.
We should all comply with their wishes. Do not search, use the word, talk about, or buy anything that has that trademark. Also Google and other search engines should remove any references to their trademark and supress any search results, news and links containing their trademark.
Then see if they really want to keep suing over this.
THe entire concept of trademarks is about the use of the 'word' in a context that takes advantage of the 'image' said company has built. ( or bought )
Its not about 'taking words out of the language'.
That just shows the judge isnt comptent to see this case.
---- Booth was a patriot ----
There was a case by Playboy on one of the prior Playmates using the Playmate trademark as a meta tag on her web site. The court ruled that her use of the term was proper because she was a playmate.
Trademark cannot be used to quiete discussion and commentary (see Mattel v. MCA records). But, this case is possibly on the line and it is good that an appeals court will write a decision that will become usable for other courts.
Fight Spammers!
No, dumbfuck and I'll go even further. I don't think Linus would have a problem if Microsoft used the keyword "Linux" in thier web pages about TCO. That's all "adwords" are. Words that actually existed before the company are even more repulsive targets of corporate ownership.
"Playboy" was a word before the magazine. The company's attempt to restrain all comercial use of the word is wrong headed. No one is going to confuse the average porn site for Playboy's, though they mostly don't care. Playboy's brand name has been eroded by competition, not tradmark infringment. They won't get what they had back even if they could, by some state sponsored black magic or Paladium, insure that no one but their authors could even use the word. They are just another bunch of pimps.
Friends don't help friends install M$ junk.
The judges got it wrong. These people are not selling a magazine called "Our Playboy" or anything that directly infringes. They are using the term to target people interested in that term.... Remember, these words are not being displayed to humans per se, but to MACHINES that index web pages.
It's more like when a marketer uses a computer-generated list to target BMW owners in order to sell them expensive car products.
Perfectly legal !@!!!
"Whoever would overthrow the liberty of a nation must begin by subduing the freeness of speech."--Benjamin Franklin
I realize this is a bit off-topic from the story posted here, but I'm curious ... what degree of copyright protection of webpages have once they're retrieved by a browser? Is stripping links from within the page a violation of the copyright? Most browsers already parse the title and render it in the browser's title-bar or as labels to tabs ... yet someone might argue that this is presenting only part of the complete copyrighted work. How about modifying links within the document? What amount of freedom do browsers have in presenting the content of a website in the manner in which they choose? Any good resources that address this topic?
If someone wants 'whatever.com', type it in - otherwise be prepared to get results not directly related. It's how searching works.
This ruling is assuming that people lack *any* abillity to tell what the real site is. Granted, eBay password grabbers are fake and look real, but where is any site trying to pass itself off as playboy.com or obviously infringing?
Isn't this what the cyber-squatting laws are all about? Do we really want to have all trademarks banned from communication because someone might get the wrong idea?
Where in trademark law is the following exchange prohibited?
You: Tell me what you know about Playboy.
Me: You can look Hustler* over there.
I am not passing myself off as Playboy. Nor is Hustler. So I don't think trademark law is being violated. I also don't think trademark law should force anyone setting themselves up as a provider of information to give owners of trademarks preference. It would suck if I got ford.com as the first link every time I searched for Ford Prefect.
* Chosen at random. I haven't bought a dead tree porn mag since I got an internet connection.
--
E_NOSIG
I don't think they can sue for the search engine doing its thing. But I totally agree that they can sue for paid placements on a tradmarked term!
a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?
Playboy's tradmark involves a goofey rabbit and typeface. Tell me how my search engine is supposed to know the difference between that and the common word.
If I own a titty bar, am I violating tradmark if I order my barker to say, "Playboys come this way"? What's the difference between that and adwords? Isn't that the association that drove Heffner to chose the word for his magazine in the first place? It's not like the banner ad is putting the actual trade marks up or my titty bar claims to be run by Heffner.
Friends don't help friends install M$ junk.
Oddly enough, to me the word "playmate" conjurs the image of something matching this:
:
From Webster's Revised Unabridged Dictionary (1913)
Playmate \Play"mate`\, n.
A companion in diversions; a playfellow.
Obviously, the only effective solution to this problem is to simply outlaw use of the word "playmate" in the context of people who are not wearing clothes.
This is, after all, what Playboy wants, with the stipulation that Playboy Enterprises is the only entity authorized by the US government to use the word "playmate" to describe a person who might not be fully clothed.
Penthouse is probably in a better position with regard to this since a pornographic competitor would have to have a good reason why "Penthouse" was being used in regard to peddling pornography. However they could easily get around this by having their site gimmick be "Sex in a penthouse apartment" with plenty of pictures out the window onto the city skyline.
"Eve of Destruction", it's not just for old hippies anymore...
The 9th "circus" court of appeals gets overturned something like 90+ % of the time, so when it gets out of California, and into somewhere other than the left coast, it will most likely get overturned.
Let's see, does this give them the rights to sue the estate of Ian Flemming for infringment upon their image?
The better question is where did they use playboy's trademark? Someone types "playboy" into a search engine. Yes, I realize that this is playboy's trademark. However, the information (ads, whatever) that I return does NOT have playboy's trademark, or use it in any way.
Effectively what playboy wants is a stiflimg of speech, in the sense that whenever a visitor to my site inputs "playboy," I can't return...anything related to adult material at all. Effectively, I can't even *acknowledge* this work in a way that admits it is a trademark.
Whenever crap like this pops up regarding the internet, which inevitably confuses people, I always make "real" world analogies. Here's one:
I have a newsstand. Someone comes up and says, hey, can I buy a playboy? I tell him the girl on the cover this month is ugly, and say, "Hey, want this month's Hustler instead? It's great!" Under playboy's interpretation, that's a violation of their trademark, because I "used" knowledge related to their trademark to promote another product.
I must have missed the part of copyright law where they have not only exclusive use of their term, but all *knowledge* related to the term.
"Some consumers, initially seeking Playboy's sites, may initially believe that unlabeled banner advertisements are links to Playboy's sites...Once they follow the instructions to 'click here,' and they access the site, they may well realize that they are not at a Playboy-sponsored site."
So? Had google (or whoever) had a link that said "Playboy" that linked to someone else, that would be valid logic. But that's not the case. They simply use the knowledge that their customer is searching for playboy, and decice to market something else toward him.
This is a basic right. Simply being in the information business does not obligate a search engine to serve the information playboy wants them too, particularly if the playboy term or logo isn't used on the page (or if references to it actually take you to playboy). Otherwise...what? All search hits for "playboy" have to take you to playboy.com? I think not.
-Looking for a job as a materials chemist or multivariat
I believe that our entire patent, copyright, and trademark system has reached the point of ridiculous.
... In issuing the court ruling, Wisconsin federal [j]udge C.N. Clevert sided with Referee magazine, a periodical holding the trademark to the word 'referee' for the purposes of publication." David Post, an associate professor of law at Temple, called the ruling "unbelievable", saying that regardless of whether eReferee.com had violated trademark law, as was alleged, by using a logo confusingly similar to its rival's, "You just don't want to let someone own the word 'referee'". (Lisa M. Bowman, "Judge approves domain name penalty on eReferee", CNet, Feb. 16; Gretchen Schuldt, "Referee Enterprises Seeks to Halt Competitor from Using 'Referee' in Web Name", Milwaukee Journal Sentinel/Corporate Intelligence.com, Feb. 23).
... well, by going on using his own name (Bill Wyman, "Will the real Bill Wyman please tune up?", Atlanta Journal-Constitution
... No matter: The geeks are infringing on Pillsbury's 'bake-off trademark,' the letters argued." (Damien Cave, "Pillsbury Doughboy mauls techies", Salon, Jan. 20)(Slashdot thread)
Consider these examples from Overlawyered.com:
Can you own common words? "In one of the broadest crackdowns ever issued against a domain name holder, a federal judge has ordered eReferee.com to stop using the word 'referee' in all of its domain names.
Using his own name a legal risk. The Atlanta Journal-Constitution's Bill Wyman shares his name with a somewhat well-known musician who played bass with the Rolling Stones. He was nonetheless unprepared when he received a letter from the musician's lawyer suggesting that he might be violating the other guy's rights by
"'Let's Roll' Trademark Battle Is On". Why'd she have to hire that lawyer? No sooner does the widow of Flight 93 hero Todd Beamer set up a foundation to honor his memory than its lawyer announces that he's having it apply for a trademark on the now-famous phrase "Let's Roll", so that anyone who wants to use the words on hats or t-shirts will have to fork over a royalty. Since September 11 numerous other individuals have also sought to copyright the phrase, although it was in common use before that date. (AP/Las Vegas Sun, Feb. 1)
Someone might get confused. "Just when you think the battle over domain names and trademarks can get no more ridiculous, Pillsbury goes and ups the ante. Universities and companies as large as Sun Microsystems received cease-and-desist letters this week ordering engineers to stop holding what the [giant flour maker] considers illegal 'bake-offs.' But it's not as if the engineers are huddling together around the oven trading stolen recipes -- in techie lingo, a 'bake-off' is a get-together in which software programmers test their creations against network protocols to see if they will work correctly.
It is becoming ever more apparent that the entire system needs to be evaluated and rewritten. But, as easy as this is to blame on an outdated system, this case (the parent post) shows that even when a policy is in place, it will be abused and ignored. Perhaps before Trademarking anything, they should read their own Trademark policy or, in the case that they don't recognize playmate as an English word, perhaps they should spend a little time reviewing the dictionary.
What next, Microsoft finally succeeding in Trademarking "Windows"??? Playboy goes after the children's toy industry because they unashamedly use the term "playmate" in many of its toys?
It makes no matter that these advertisers were using the popularity of these words to boost their services. Capitalizing on things is not a crime. Especially when the terms they are capitalizing on are not trademarkable. If anyone
*-*-*-*-*-*-*-*
"We are Linux. Resistance is measured in Ohms."
This is actually up to debate...Windows was registered in 1983 when personal computers were still in infancy. You would have to provide concrete evidence that the term was common before then which is not easy.
Nuts. Look, for one example, at Smalltalk-80, published in 1980 and writen / developed in to 1970s. Lots of copies of the book still exist, as do conference proceedings, etc. It only seems hard to prove if the web is your only research tool. The term was in common use in the mainfraim / mini world for ten years before MS tried to trademark it for (IIRC) "an audio / visual device".
Note that even then they did not get an unqualified mark. What they got is basically "Microsoft Windows"
-- MarkusQ
Hate the game, not the player.
Well, that's what this whole thing is about, isn't it? And what is Google's responsibility here? They shouldn't have to concern themselves with what names might or might not belong to competitors unless the law instructs them to.
Besides, what guidelines would they follow? If a company's proposed search term was trademarked? Like an earlier post mentioned, would a toy company not be allowed to use the search term "playmate"? Who would decide whether or not a company was a competitor?
I don't think Google has any responsibility at all here. And as for being surprised that Debenhams would do that...well, that's a bit naive to expect the free market NOT to do something like that.
1. For starters, you can't trademark a word in extremely common usage. Look what trouble MS had to go through to get the 'Windows' trademark.
2. A company should not be allowed to appropriate a name in an industry where the name is synonymous or nearly so with the purpose of the product being sold. The common term 'playboy' has always (at least well before the magazine started publishing) been synonymous with women and sex. If the magazine had been called "Corkboard" or some other off-the-wall name which originally had nothing at all to do with women and sex, and had come to enjoy the synchronicity the magazine does today, it would be a different story - because the company is solely responsible for the creation of the association. Then, if Yahoo or whoever used "Corkboard" in their advertising for something having to do with women and sex, there would be a legitimate suit. This is not the case here; Playboy (the magazine) leveraged (and built upon) the existing connotation inherent in the term 'playboy', for which it deserves little or no protection, since it is not responsible for the association. Kleenex deserves protection - it had nothing to do with tissues until the company made it so. Playboy does not.
I'm not saying this is the law - I'm saying this is how the law should be (IMO) interepreted based on the logic of trademarks. The original judge did get it right, though perhaps s/he didn't make enough of a distinction.
because gomer thinks to himself, "Now wat wuz that erl fer playboy? let me search....."
What about popup-blockers? They're essentially modifying the page in a way differently than how the author had intended.
If I go to the store looking for XYZ's widget, should they be allowed to stock ABC's widget on the same shelf? What if ABC is the generic brand? People aren't specifically coming in to find ABC's widget, but shouldn't they be able to have the option? Is the store in violation of trademarks by placing two similar products next to each other, even if people will generally be looking for the first one?
The problem I see with this is that trademarks give a company the exclusive right to use a name, within a particular industry. When it comes to pr0n, the word "Playboy" belongs to these guys, but in an unrelated domain, they wouldn't. You could start up the Playboy linoleum manufacturing corporation and have no problems as long as you didn't try to use the bunny logo or otherwise create confusion that you were otherwise related to the other company with that name.
For search engines, this requires a subjective call to be made as to which queries trigger the trademark-protected usage of a company's mark and which don't... "computer apple" and "apple ipod" probably relate to the trademarked usage of the word, but "apple granny smith", "apple pie recipe", and "apple orange banana pear" don't. An "apple corps music" query might even refer to someone else's trademark. For cases in between it becomes more and more of a subjective judgement call, which computers aren't so good at anyway, and if you throw threats of lawsuits into the mix, the situation quickly turns into a real mess.
Companies do have a limited right to refer to their competitors, especially when it's clear that they're talking about the competitor rather than claiming to be the competitor.
So, even if this case is lost, I think the worst damage that's going to occur is such ambush keyword buyers are just going to have to ad a fine-print statement saying X is a trademark of X Inc., and Y is a product of Y Inc., which has no relationship to X Inc.
Who wants to lay money on it that Hef cut a deal with the judges: "Rule in my favor, and you ALL can party at the mansion!"
Can we just impeach these clowns or what. THe 9th circuit is so outrageous and wacko that they need to all be replaced. We need to start with some clean (or how about SANE) judges. While I may frequently disagree with several justices in the supreme court (the only other court with which I am familiar with the individual members), they at least are friggen sane.
These are the same people who said that VOLUNTARY recitation in schools of the pledge of allegiance violates the 1st amendment for using the words "under God" among other things.
They've done more. Googling for their recent flububs is an exercise left to the reader.
Cthulhu for president!
IANAL, but clearly trademarks must be protected. I cannot be allowed to setup a store, call myself Macy's, and begin selling clothing. It is a clear violation of Macy's rights.
But if I were merely trying to associate myself with a well known product, is that the same an act of deception, or an act of comparison. I once ran a live action role playing convention (you know, dorks in costumes with foam swords :) After discovering that few people could find our website without knowing our exact name, and asking them the kinds of things they had searched for, I ended up adding "Dungeons" and "Dragons" to our list of keywords in the metatags. Should TSR/WOTC/Hasboro have sued me for that.
If someone asks you about a band, and you say, "well, they're kindof like the Beatles, with a little bit of Sex Pistols mixed in," are you infringing on the trademarks of the Beatles or the Sex Pistols.
This isn't as apples and oranges of a comparrison as it may seem. Music and Movies use such comparisons often in advertisements, via quotes from critics.
Ultimatly I am concerned about the wording of the ruling. To me it seems overly broad. The line, "clearly holds the marks in question, and defendants used the marks in commerce without (its) permission" could, in theory, apply to an individual who searches for a trademarked name to make a purchase of any search. Granted I don't think anyone would sue you for doing a web search to buy their product, but if, for example, Verisign knew that I did a search on the phrase "Cheaper than Verisign" and purchased from a competitor, would this ruling be used to support their case.
Trademarks are a needed part of commerce, like copyrights and patents, but they must be balanced with free speech, and the ability of the people to make use of the words they need to function in society.
Fantastic Post!
How could I say to men: "Speak louder, shout! For I am deaf!"? -Ludwig van Beethoven
You are allowed to cut a magazine up and paste the pictures (or ads) on the wall. You can do anything you want for private use.
love is just extroverted narcissism
"Some consumers" - What percentage of people doing search for "playboy" or "playmate" are really looking for www.playboy.com ?
When I do searches, sometimes I use some word as a "seed." The intention is not to see sites with that keyword precisely, but to see under what category of Google they fall under, or to see what are the other related sites to my keyword. This then allows me to do a more thorough search of the various possibilities.
For example, if I had to do research on inexpensive or free email I would do a search for "Yahoo email" because I know Yahoo provides free emails. The Google category that it falls under is Computers/Internet/E-mail/Free/Web-Based/Y/Yahoo/ Once I get the directory path, I can trim it to get Computers/Internet/E-mail/Free/
Now the list that I see Computers/Internet/E-mail/Free/ is what I was looking for. I can now select "free email" providers that might provide more space than Yahoo, or better pop3 or imap facilities, or more features like throw-away emails.
My point is that even though I started off with "Yahoo" in my search, I was not looking for Yahoo per se.
So, when I type in "playboy" or "playmate" or "Playboy" or "Playmate" in the search box, I think it is presumptuous of Playboy.com and the Hefners to think I was looking for their site.
And this is why I think they have made a very weak assertion. Look at the wording of their assertion - It is littered with initially ...
because the attorney's understand how weak their assertion really is.I think Playboy.com should be nailed on why they think everyone typing in playboy or playmate is looking for their site. And then, they must be made to prove that they are loosing revenue that might have come to them. Otherwise they are no different from RIAA which makes the assumption that every song that is freely downloaded would have been purchased by the downloader, and hence RIAA adds up the dollar values of the downloaded songs to come up with their "piracy related losses." BS. If I couldn't have downloaded the song for free, I wouldn't have even looked for it - let alone pay for the damn thing. To me, the situation for "playboy" and "playmate" searches is very similar.
To see a world in a grain of sand, and then to step back and see the beach where the sand lies
Courts have referred to that as "initial interest confusion."
There's no chance of confusion once they get to the website and take a look around, but if it wasn't for their use of the TM's, they never would have gotten there in the first place.
The purpose of trademarks is not to protect individuals or companies, but to allow consumers to properly identify the people with whom they do business. It is to facilitate an informed consumer base so that we can make choices about who we do business with. If I have found that Playboy produces a good product, it is reasonable to assume that thier next product will be of similar quality, and if they produce a bad product, I can refuse to do business with them in the future. Trademark is not designed to keep me from viewing similar products, it's simply to keep me from mistaking one for the other. If I were doing a search for playboy on excite, I might like to get links to Playboy(TM) as well as other related products. I think playboy would have a strong case if other products were allowed in this list, and Playboy were excluded. I think a sufficient remedy would be to require excite to make sure that if Playboy asked to be in the list, they were included free of charge. This would prevent me from thinking that Playboy has no web presence other than the top 3 brand X sites.
Although I don't always agree with their rulings, US courts, and especially the higher courts use a great deal of logic and thought on their decisions.
The school pledge issue, for instance, would have been fine if it were voluntary, but it is a teacher lead activity where your choice is to participate in a (although only barely) religious activity or stand quietly and shut up. It was this factor that lead to the school pledge ban, not a hatred of religion.
In his matter, the court is weighed with the issue of protecting property rights (which is what a trademark is, your property,) with the rights of others to make fair use of it.
Fair use usually precludes making money off of the said product (or name in this case,) but in this case it is awkward and different in many ways, because a name is intangible and readily used in many contexts.
So don't knock the court for being insane or stupid. Criticise judgements with which you disagree, offer up alternatives, and understand that the "wrong" answers to problems like this are usually easy to spot, but coming up with the "right" answers to a problem like this can be quite difficult, or even impossible.
...would be to ask what if Linus sued RedHat, Suse, and IBM for purchasing adwords related to Linux. The purpose of adwords is still to direct people to sites related to what they are searching for. If I search for Linux, the chance that I'm looking for Microsoft is slim. If I search for Playboy, I might actually want to find adult material. As I said in another post, I think a fair remedy might be to require Excite/Netscape to post Playboy(TM) as one of the top few links for free, and still be able to sell other adwords under the theory that thier products are related.
When a trademark acquires additional meaning it grows beyond its original and trademark use. Actually a success for the trademark. It's the greatest fault of trademarks that they attempt to control language while expanding it.
In my example, I've taken that expansion of the language, the trademark's acquired meaning, and used it to communicate an idea, an idea that is cumbersome to communicat otherwise. Their trademark has become associated with an idea. Restricting me from using that term restricts my freedom of expression. Allowing corporations to own words is just another step on the road to letting them control everything. When you control language, you control ideas.
The potato it is uninformed.
The search engine is a tool for me to find related goods. If I do a search for BMW, and Lexus and Infinity have bought adwords for BMW, I might like to also find information about Lexus and Infinity. There is extremely little risk that if I bring back those links, that I will confuse them with BMW and think I am being directed to a BMW web site. It would be different if Excite diliberately excluded BMW from this search, but adwords are simply a way for people to get eyeballs for searches which are related thier product. You'd have a hard time convincing me that a Infinity is in no way related to a BMW.
Coca-cola may be watching this case to help reduce bad PR.
Searching for "cocaine" on their site produces nothing. They even have a history section. Hmmm.
how is that not trademark infringement?
So, toss this idea around with me:
an internet consumer, when placing a term into a search engine, is accustomed to exercising a high degree of care in the search results, knowing full well that the first few actual results may not be the site/item/service/company they're looking for. This line of thought seems even more relevant, given the instant case involves banner ads rather than search results.
I'm honestly not sure how you show the requisite confusion, given you need some relative idiot to suggest that he/she expects the banner ads to provide a link to the sought-for site. Indeed, I think the facts can support the arguement that there is no likelihood of confusion: anyone with any brainpower looking for legitimate goods/services originating from, sponsored by, or affiliated with Playboy Enterprises, Inc. would try typing "playboy.com" before entering "playboy" into a search engine.
Isn't it possible instead that the term has become unsavvy-porn-surfer shorthand for "naked chick" and thus not subject to any indication of source in the mind of these surfers?
However, the word can be removed from use and association with a specific class of goods in the course of trade as a result of gaining the trademark (which has to be distictive in nature or nurture), which seems to be the main point regarding the change in perspective on this case.
Here, the issues are about free-riding and deception: it's unarguable that the competitors are "free-riding" on the legitimate playboy trademark so as to confuse and deceive the user so as to entice them into commerce with the same class of goods. Although playboy has an english meaning, the playboy company has invested considerable time and effort into nuturing the name so that in the minds of users it is linked with the playboy brand. This is entirely against trademark law as trademarks provide you with protection of a mark to be used in the trade of a particular class of goods.
Now, if someone had bought a pop-up advertisement that connected "playboy" to something about men in dinner suites have a good time gambling, then there probably would not be the same case as this is a different class of goods/services to that covered by the playboy trademark.
Other examples:
I use the coca-cola trademark to entice a customer into a shop that only sells pepsi. Clearly this is is a deceptive use of the trademark.
However, I would be safe in putting up a sign "60% of people find Pepsi(R) better than Coke(R): get your Pepsi here!" so long as the comparison is a fair one; this is a legitimate and factual use of the trademark.
Way to go, 9th Circus Court of Appeals...
I forget where I read it, but the 9th Circus is very frequently found to be completely incorrect by the Supreme Court. They are often ridiculed by legal scholars and other courts as being the biggest travesty to justice this country has ever seen.
*sigh*
yeah shocking that some companies will just ignore other companies trademarks, especially as they will earn a fortune from it, who cares if its a US trademark right ?
perhaps Steve Jobs should re-evalute his strategy before embarking on such violations, of course the real Apple Music (the beatles label) will be laughing all the way to the bank, Apple computers on the other hand better have deep pockets
cheers
A simple bit of research in the origins of the word will show that "playboy" comes to english from the french "bon vivant" and dates to at least from 1829. Similarly, "playmate" dates to the mid-15th century in the non-sexual meaning and to the mid-17th century with sexual overtones.
There is no legal basis to recognize a word in common usage as a trademark within the domain in which it is used commonly. For example, I can not make a company called "Carpenters" and trademark that term within the domain of people who work with wood; but, I could trademark it as it relates to music (if it wasn't so already trademarked!).
The problem here is that "Playboy Magazine" is arguing that the word "playboy" which was in common usage within the sexual domain for a hundred years prior to their existence is now exclusively there own. And for some reason these moronic judges are buying the argument.
A few years ago, Burger King (a British fast-food chain) ran an ad campaign about how their burgers were bigger than Big Macs, with a slogan something like "50% more meat than theM" (where the M was the Macdonalds "arches" logo). I seem to remember there was a bit of small print at the bottom, but nothing major.
Yes, these companies achieved ubiquitous name recognition, huzzah. But I believe they lost - for all intents and purposes - control over its use; they were too successful. The brands have become proprietary eponyms. If a company is unable to distinguish a brand name from the (over time) consensual general meaning, the word/s in question become de facto 'regular' words. The brand name becomes public domain - legal or not.
If people associate certain words with some activity, it seems unreasonable (read: impossible) to exclude everyone but the coiner of the phrase from using it. No one would be able to communicate. IP/copyright cannot achieve this, nor should it be able to.
I recall the first-to-market company Rollerblades, which came close to 'loosing' their brand name to the public domain when the sport (inline [skating]) was 'introduced' to the general public. People started "rollerblading". The company had to spend a lot of energy/money on educating people that the sport was inlines, and the(ir) brand was Rollerblades. (That's what their ads actually said.)
Cue "AstroTurf", "Band Aid", "Beer Nuts", "Chapstick", "Coke", "Dumpster", "Fiberglass", "Freon", "Frisbee", "Hi-lighter", "Jacuzzi", "Jello", "Jockey Shorts", "Plexiglas", "Popsicle", "Post-it", "Teleprompter", "Teletype", "Thermos", "TV Dinner", "UNIX", "Vaseline", "Velcro", "White Out", "Windbreaker", etc., even "Xerox".. [Fun with words]
668.5
Slashdot, please, tell me what a trade mark is! If I were to search for playmate or playboy, I wouldn't be looking for PlayBoy's stuff, I'd be looking for any products that fit the description. I consider playboy, playgirl, and playmate to be part of the modern english langauge that means attractive woman under 25 modelling nude for porn magazines. I consider alot of what companies would consider trademark to be part of the general US English language. Qtips, I don't have a clue about the brand but I know it is a noun that refers to cotton swabs.
Coke, Pespi, Sprite, and Dr. Pepper are nouns of specific drinks. They are part of the langauage now. Lang. changes! Dicitionaries never keep up with what we keep changing. If I did a search for Coke or Coke Products. I'd want things that had to do with the specific Coke product or product line not really any given soft drink. If I searched for pop, I'd be stupid. Now "Soft drink brands" might return generic soft drinks that I've never heard of.
Windows are those glass things in the holes in the side of houses and a specific software OS family. If I did a search for Windows, I would be ticked of to get returns for AIX, VMS, OSX, and Linux.
If I did a search for Operating System, then those would be valid returns.
I hate to let companies take words out of circulation as much as the next guy. But, no matter what folks with dictionary.com links may think, the word Playboy is associated with porn in most people's minds primarily because of the magazine. If some website buries meta keywords about Playboy somewhere and gets picked up as a google result, that's that site's fault, not google's. But when Google willingly sells people the right to have their competing service appear with more emphasis at the top of the search results than the actual intended search of the user? It doesn't look any different from a competing pop-up ad to me, only Mozilla won't block the google references for me.
Slashdot must be short on their hit quota for the month. If you count up the number of times Playboy and playmate appear on this page, slashdot is bound to be the top page returned when people search for those words.
I recommend the next story be about ideas for Paris Hilton's next Fox reality series such as "Paris Hilton Learns Linux" where she has to be stuck in a network operations center and be forced to install and configure various distributions. Lots of hits would be generated by that one, guys!
And speaking of Paris Hilton, has Marriott or Sheraton or any of them bought the google words "Paris Hilton" yet? Would that be trademark infringement or just poor taste? If they're still available, I think it would be great for a "hotel" with 4-hour rates and heart-shaped "love tubs" to snap them up.
He looked at me and said, "Kid, we don't like your kind, and we're gonna send your fingerprints off to Washington."
go suck a llamas ass and fuck off
I could see it being a trademark violation if the search engine doesn't clearly distinguish between search results and ads. But if the search engine clearly distinguishes between those two, then the ads for keywords should go to the highest bidder.
I could also see it possibly being a trademark violation if the trademark is a made-up word, like Clie or Linux. But for generic words like windows or playmate, prohibiting search engines from targeting ads based on common words that are also trademarked is essentially saying the trademark holder owns part of the English language.
The Ninth Circuit U.S. Court of Appeals gets about 90% of its decisions overturned. Biased in Northern California they are exceptionally liberal/left-wing. Its too bad there is no way for the government to remove a court that makes bad decisions over and over. They are a waste of our tax money.
I'm seeing a number of posts that feel that any use of a competitor's trademarked name is an infringment. That's not the spirit or letter of the law. The key goal is to avoid consumer confusion. If you're not (potentially) confusing consumers, there is no problem.
Now, if my ad for ExampleOffice 10 is entitled "Microsoft Office", that could be confusing. However, if my ad is titled "EXAMPLEOFFICE 10" with body text that reads, "half the price of Microsoft Office," no one is going to be confused. Even if my ad popped up because I paid for the keywords "Microsoft Office." I've clearly labeled myself. No confusion.
(That said, I expect that in some of these cases the advertiser did so something deceptive, like labelling their advertisement, "Microsoft Office" or whatever. That's clearly intended to mislead and confuse and I have no sympathy for them.)
Search 2010 Gen Con events
Using a registered trademark and then disclaiming that the name may confuse the consumer because he or she may believe they are at a Playboy sponsored site is an admisssion that the use of the tm is confusing. The 9th Circuit is 100% correct in its holding!!!!
Jax
It seems that adspace when someone asks for playboy. They are in no way saying that these are ads from playboy, but instead are saying "hey, if you like playboy, check this out".
Which, incidentally, has major implications for supermarkets.
Evern notice that those red-striped coupon printers at the checkout always print you a coupon for a COMPETITOR's alternative to one of the products you bought - typically one you bought a lot of?
That's because the competitor is trying to get you to try his as an alternative. He'll give you a discount, ONCE, to get you to try his version of something you already use.
The supermarket/coupon printer operation specifically sells the right for a manufacturer to get his coupon presented to customers of his compeititors. It's a good deal for the manufacturer because the purchaser has already been qualified on two criteria:
- They buy product FOO.
- They DON'T buy it from the manufacturer.
So the manufcturer gets much better response than if the printer spit coupons at random. (Meanwhile, the competitor can do the same by buying the right to get HIS coupons spit when the manufacturer makes a sale. Then both of 'em are buying coupons to try to steal customers back-and-forth - good for the coupon printing operation, not necessarily good for the manufacturers.)
If Playboy wins this case, such targeted advertising is interpreted as trademark infringement. Expect the next case to be from one or a set of established supermarket-products brand(s) against the coupon printing operation, to try to destroy an advertising mechanism that upstarts can use to attack their market dominance.
Bantam Dominique roosters crow a four-note song. Once you've heard it as "Happy BIRTHday" you can't NOT hear it that way
Anarchy worked for a looong time before any system of laws was written up, so it can't be that bad. We even evolved under anarchy.
Actually, government predates the evolution of human beings. The strongest primate or a clique of the strong is a typical organizational form for bands of social primates. The potential for anarchic social organization is relatively recent.
Don't confuse government with systems of written laws - which are also relatively recent (but ARE still older than recorded history).
And while we're at it, don't confuse anarchy {social organization without an explicit central authority} with either of the following:
- nihilism {opposition to social structure of any
sort}
- polyarchy {the violent chaos that results when two or more "governments" duke it out over who rules.}
Note that polyarchy often occurs when a strong government is overthrown. And that it is what government officials are usually pointing at while screaming "anarchy", using the havoc generated by a surplus of governments to tar attempts to organize a peaceful society without the "assistance" of even one set of control-freaks.
Bantam Dominique roosters crow a four-note song. Once you've heard it as "Happy BIRTHday" you can't NOT hear it that way
How is it different from those ads that say "if you like XXXX (TM), then you'll love YYYY (TM)!" ?
It's better not to use a common word but when this word was used, was it common- actually I have rarely heard it used outside of the girly mag world. It only takes 6 months to establish use of the word in commerce so even if people used this term in the 50s/60s by now it is distinctive enough to qualify for tm as it did. I do agree that if you are going to use a common word as a tradename it's best to include a symbol or a company logo with it. Think of the thousands of companies who do this and succeed at maintaing and defending the mark (i.e., monster, discover, giant,times, et cetera).
Jax
Software is like sex; if you feel the need to pay for it you can always find someone willing to take your money.
I've also seen
Software is like sex; one mistake and you support it the rest of your life.
Anyone got any more good comparisons of software and sex?
Those who do study history are doomed to stand helplessly by while everyone else repeats it.
Then I can't have my own website where if someone enters the text "playboy" in the field, a non-Playboy ad pops up in the next page.
Ridiculous!
This issue has nothing to do with common words, trademarks, or paid advertising. It's about Google's right to do whatever they want with their ads. If I, the user of google.com want links to porn sites by typing "playboy" or "donkeyass" or "aslkdjaslkdj" or whatever, and legit porn sites want to *pay* google to put their ads up, and google wants to do the dance between me and porn sites, then fuck it we should all be able to.
It *may* be wrong for google to omit playboy(tm) from the search results because other porn sites payed google to do so, but i'm not too sure that's illegal either.
Now, maybe SCO ppl should go work at Playboy for a while and learn how to sue people...
Oh wait, if forgot. this is /. .... you're all experts on everything.
How about the same exact thing happening last october in France to Google.fr, as you can check here ?
/. crowd, although educated, bright, open-minded and non-conventional, can be driven by low-level patriotism and turn itself into the anti-French "Fair and Balanced"(TM) Fox News of the "News for Nerds" ?
Now should I start bashing the US, it's stupid politicians, lawyers, its lack of free speech, or how it doesn't understand anything to the very nature of the internet ? Should I tell Excite and Netscape to get the hell outta the US and show these rednecks we don't care about them ?
Or should I just be funnily amused to see how the
Sorry for this rant that I couldn't refrain myself writing, and that will bring me to the lowest levels of the moderation system, but it had to be said. Greetings from the other side of the pond.
succinct. correct. thanks.