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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."
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?
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!"
As long as the advertisement doesn't claim to be from Playboy or advertising Playboy or providing a service/product named Playboy, what's the infringement?
What's next? Will this affect indexing?
Can a porn site no longer use the phrase "Playboy(TM)" (including the "TM") anywhere on their site, because it might get indexed and lead clueless/illiterate googlers there, when they were actually looking for the site of "Playboy(TM) Magazine"?
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I agree with you accept I think you're a bit confused. The PREVIOUS (initial) court denied any case of trademark infringement while the LATTER court said there was trademark infringement.
Additionally, I disagree with the comments by the main poster. Even though the initial decision is being overturned, I don't think the 9th circuit is disagreeing with the statement: "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."
I think what the 9th circuit is saying is that if you use english words that are obviously trademarks in order to mislead and confuse a consumer (especially into purchasing a different product) then that goes beyond the rights granted of just using English words. (i.e. You can yell "fire" at home, in your backyard, whatever. Freedom of speech. But if you yell "fire" in a movietheater then you're liable if anyone gets injured. It's circumstantial.)
I think the article sums up the point here: "In Playboy's case, it charged Excite with trademark infringement when it sold banner ads to adult-related sites keyed to the terms "playboy" and "playmate," arguing that it created consumer confusion and diluted its trademarked names."
"Injustice anywhere is a threat to justice everywhere." - Martin Luther King, Jr.
In the Lindows.com case, Microsoft has somehow trademarked the word "windows" in a category in which the term has a generic meaning, and Lindows.com may be able to win. Even Microsoft is not attempting to claim that the trademark "windows" is defensible outside of the computer category - a search result on "windows" for a window manufacturer won't upset them.
The issue with "playboy" is the scope of the trademark - does it beyond the hard publications and consumer goods, where it may be considered non-generic, into the realm of computer software? Is the Internet itself a form of "publication"? Since virtually all porn magazines have simple, generic words as their titles - "penthouse", "hustler", "oui", etc - rather disjoint subsets of various languages could suddenly be offlimits for search engines.
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/
Playboy & playmate are famous trademarks, even though they have independent English-language meanings. If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?
Well, one has to question the strength of these trademarks. The English-language words "playboy" and "playmate" have changed very significantly over the past 50 years -- moving to parallel the trademarks -- so it could be argued that the situation is similar to "Hoover [vacuum cleaners]", or "Kleenex [tissues]".
Personally, I'd say that if people search for "playmate" without intending to find Playboy's web site, the trademark has lost its value.
But IANAL -- I'd be interested to hear the parent's view.
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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.
Let's see, does this give them the rights to sue the estate of Ian Flemming for infringment upon their image?
I bring a DDJ containing the articles "Which programming language is the most erotic?" and "How to clean mysterious goo off your keyboard." And I didn't bring a Playboy. Have I infringed Playboy's trademark?
What if I bring you back a Playboy, but also an ad for DDJ? Does that infringe Playboy's trademark too?
As copyright owner of this comment, I authorize everyone to defeat any technological measure which limits access to it.
Go to your local McDonald's, and ask for a SuperSized cup of Pepsi. If the clerks are properly trained, they will inform you that Pepsi is not available there and immediately offer you Coca-Cola instead. Your improper request for Pepsi is interpreted as a request for generic cola products, rather than simply responed to with a blank stare or a yell of "No soft drinks for you!"
If you want Playboy content, you must go to the proper places where Playboy content is sold... Excite and Google are not such places. So, the user very well could be requesting "Who around here has Playboy-like content?"...
"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.
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According to webster -
playmate - a companion in play
playboy - a man who lives a life devoted chiefly to the pursuit of pleasure
Neither of these words are synonymous or nearly so with naked women, sex, party jokes or anything else Playboy (the magazine) puslishes as magazine content. As I understand it Playboy came out in the late 40's/early 50's. So IYHO, prior to that (WW2, Great Depression, and back) Americans were speaking about women and sex with these words? I think not. I think they are synonmous now BECAUSE of the magazine.... which means the company is solely responsible for the creation of the association.
I don't know what Yahoo or Excite was advertising when they used the terms, but unless they were talking about men who's life pursuits are pleasure (and lets admit it, what man isn't?) or compainions in play then they are on the hook, change the damn ad, why fight it?
Um, is it possible to prove trademark infringement when the trademark is *never displayed* by the allegded infringer? Because I'm not aware that the defendants ever put up any text or image with the word "playboy" or "playmate" in them.
If someone went to a newsstand and asked for _Playboy_, and the clerk silently handed him _Hustler_ instead, it may be poor customer service and lousy supply-chain relations, but is it trademark infringement?
If a telephone book publisher puts competing businesses on the same page (since they are trading in the same market), is that trademark infringement?