There was an article posted on Forbes.com back in February that’s just now getting attention in the IP circles. It focused on a Wisconsin case dealing with keyword advertising where one firm bought another firm’s name in their PPC program that ended in a lawsuit. Sound familiar? All too familiar I’m afraid, but there was a twist. The plaintiff in this case did not sue under trademark law or the new theory of unjust enrichment; instead they used a Wisconsin statute concerning “publicity rights”. Publicity rights law protects individuals (names, images, etc.) from being used for commercial purposes with authorization. The plaintiff’s firm name was the last names of the three partners. As we already know, you can develop trademark rights in your last name and use those laws successfully to fend off infringers under certain criteria. Using publicity rights was odd strategy to say the least, and as you might expect, the plaintiff ended up on the losing side of the argument. If the action had been pursued under trademark law, I believe the outcome would have been totally different.
In this article however, what’s more disturbing to me is the author’s rant about purchasing competitor’s names in what he termed as “ambush marketing”. He’s in favor of the practice and bases his argument on its good for competition and the public as a whole. Bottom line, he calls it “a win for the consumer”. I say, really? He goes on to justify his theory under what he refers to as giving the accident victim a “competitive alternative” to the firm that was actually searched for. Hmmm. All I can say is interesting…I guess. How can you argue that one law firm buying the trademarked name of a competitor, only to turn it around and use their own name against them, is an ethical marketing strategy? What about the years of hard work building a reputation, money spent brand building and goodwill efforts expended by a firm, only to find out their competitor is allowed to leverage, some might say steal, their good name. Surely there’s a better way to give consumers a choice when hiring a lawyer. Last I checked, it’s called advertising. The game where the battle for a competitive edge is played out in full view of the public and not based on trickery or a modified version of bait and switch. I do applaud the fact the author did at least recognize that “most courts have held that buying keyword ads on a trademark constitutes trademark “use”, even if the trademark doesn’t appear in the ad copy”, meaning if it’s purchased by your competitor through AdWords. That’s where utilizing trademark law should allow those plaintiffs who have suffered from “ambush marketing” tactics at the hands of a competitor find true justice.
If you would like to read the entire article, here’s the link: http://www.forbes.com/sites/ericgoldman/2013/02/25/buying-keyword-ads-on-peoples-names-doesnt-violate-their-publicity-rights/.
If you would like to reference the actual case, click here: http://www.wicourts.gov/ca/opinion/DisplayDocument.pdf?content=pdf&seqNo=93174