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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.
"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 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 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
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"We are Linux. Resistance is measured in Ohms."
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.
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*
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.