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

IMHO, but I must admit IAAL

[GnrlFajita]

I would have to disagree that the previous court "got it right," implying that this one got it wrong. 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? If the ad is for, say, children's clothes or toys, I can see it; but anything else is blatantly taking advantage of the consumer's use of Playboy's trademark and that is what happened here.

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.

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."

Re:IMHO, but I must admit IAAL

[Sloppy]

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?

Because the search engine is not obligated to show you a clear picture of reality, nor are they obligated to provide a service where the words you enter bring up what you're really looking for.

When you are looking at magazine covers and you see something titled "Playboy" that isn't the real thing, then the magazine itself has lied to you, misrepresenting itself. That's trademark infringement.

If you ask someone to get you a Playboy and he comes back with "Doctor Dobbs Swimsuit Issue" then your resulting anger is a matter between you and your him. DDJ didn't infringe a trademark, and more importantly, the guy who brought it to you, didn't infringe either. He just disappointed you (unless you like reading articles about how to use Java to see through women's clothing).

If you hired someone to bring you a Playboy and he brought you something else, then that might be fraud. But it still wouldn't be trademark infringement.

I think that using a search engine (especially a free one) is more like a stranger bringing you the wrong thing. The search engine owes its users nothing, so it's not fraud. And they're not saying, "Here's Playboy"; they're saying, "Here's something you might be interested in." That's a subjective judgement call.

I really hope Playboy loses this one. I don't want to open the door to search engines suddenly being under a bunch of restrictions and the obligation to always provide exactly the right thing. That will kill them. And just to put it in another light: when you search on "Scientology" do you want search engines to only be able to provide links to sites owned by that *cough* church? Aha, got you there.

Wait a minute...

[Stingr]

Microsoft can't sue people because windows is too general a term but Playboy can???

That seems a little hypocritical to me.

Playboy

[So Called Expert]

The word "playboy" (lower case "p") is an english word.

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.

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?

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

With all due respect to /. bias

[fw3]

This is (imo) clearly not a cut and dried case of 'removing a word from the English language'. From what I can read Excite and Nestscape were using trademarked keywords to sell banner advertizing directly competitive to Playboy Inc. business interests and doing so using their TMs.

"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.

Come on now...

[tbase]

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.

Re:Not quite

[Ryosen]

You must be thinking of Henry Fjord.