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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.
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.
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
"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
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!"
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/
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 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
Let's see, does this give them the rights to sue the estate of Ian Flemming for infringment upon their image?
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."
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!
"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
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?
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.
Tell that to Ford - a motor company that's named after a shallow river crossing. Or one of their major rivals, General Motors, which has a purely descriptive name. Come to think of it, most brand names are in common usage. Try calling a movie studio Universal.
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.
Well, dictionary.com says it's a man devoted to the pursuoit of pleasure. The magazine "Playboy", has managed to redefine it so that it's more specifically about sex. The comapny is pretty much responsible for "the creation of the association."
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.
Why? Playboy has spent a lot of money from the beginning, in becoming a major porn mag. It has made the name its own. If people are searching for Playboy, they most likely mean Playboy magazine, and they are most likely not searching for a hedonist. They are after porn, and since Playboy has spent their money and efforts in making their name succesful, why should some other company be able to take advatntage of this brand recongition to peddle a competitor? Why can't they produce the same level of brand awareness?
And when did "leverage" become a verb?
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!
Have you compiled your kernel today??
And all this time I thought it was named for the company founder Henry Ford. Learn something new everyday.
Support the First Amendment. Read at -1
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*
You must be thinking of Henry Fjord.
Ryosen
One man's "Troll, +1" is another man's "Insightful, +1".
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.