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

It's pretty shocking what some firms will do.

[Anonymous Coward]

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?

Re:IMHO, but I must admit IAAL

[Seehund]

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"?

Re:IMHO, but I must admit IAAL

[FreshFunk510]

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."

I think it's obvious

[The I Shing]

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.

Don't use the trademark...

[iconnor]

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.

R "playboy" searchers looking for playboy.com ?

[leoaugust]

"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."

"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 ...

"Some consumers,initially seeking Playboy's sites, may initially believe that ....

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.