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."

Comments

Google AdWords

[Anonymous Crowhead]

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.

9th Circuit famous for bad decisions

[elhondo]

Check out this article over at Slate: slate.msn.com/id/2089879

Re:IMHO, but I must admit IAAL

[Boing]

Agreed. This reminds me of the FreeCraft cease-and-desist letter from Blizzard scandal. A lot of people were saying "Oh, Blizzard's trademark can't apply to everything meeting the pattern 'n-craft'!"

But what they failed to notice is that Freecraft was using that word pattern, established through the marketing dollars of Blizzard, in the promotion of its own product which was a direct competitor to Blizzard's products.

The parent post is right, the spirit of trademark law is to prevent piggybacking on established product names by competitors. "Freecraft" was against that spirit. So is hijacking "Playboy" and "Playmate" to benefit Playboy's competitors. Whether these things are against the letter of the law is up to the courts to decide, but we shouldn't hide unethical behavior behind the letter of the law when we lambast Microsoft, RIAA, etc for doing the same thing.

Re:Not quite

[stevew]

I'll just point out that this decision was from the 9th Circuit, i.e. The "Silly" Circuit. This group of judges gets overturned at a rate of 92% for those cases accepted for appeal.

In the quick research I just did - they are over turned about 30% more than any other circuit in the US. Heck - they even overturn themselves. First the CA recall is off, then its on...

Life is always entertaining out here on the Left Coast!