by Paul Alan Levy
Corynne McSherry and Eric Goldman have posted a timely joint warning about an effort within the Trademark Litigation Committee of the American Bar Association to put forward a series of resolutions that are apparently designed to revive the hitherto unsuccessful litigation efforts by trademark owners to prevent their competitors (and occasionally critics) from using keyword advertising and similar techniques to promote comparative and critical advertising on search engines. Because of the important consumer benefits from rules that protect the ability of businesses to engage in truthful comparative advertising, Public Citizen has litigated that right over the years in a line of cases running from Virginia Pharmacy Bd. v. Virginia Consumers Council to our current cases challenging bar rules that unduly limit lawyer advertising in Florida and New York.
Most of the major search engines, which show “sponsored links” as well as unpaid “organic” search results when Internet users enter specific search terms, now allow bidding on search terms that include trademarks. Thus, just as the local Ford dealer could buy a huge billboard next to the Chevy dealership saying “Don’t buy a Chevy until you have looked at our cars – they’re better,” or just as General Motors could buy a comparative newspaper ad on the automobiles page on just the day when Warren Brown is reviewing that snazzy new Ford model, and just as a drug store can strategically locate its generic products right next to the brand name products for which many consumers come looking, competitors can buy search engine advertising that appears when a given trademarked term, such as Chevrolet or Ford, is entered into a search engine. Search engines are able to put messages in front of an audience that has expressed an interest in learning more about a specific subject, which may often include a trademarked term (such as the name of a company or the name of a product or service). Trademark owners have been trying to invoke theories of infringement or dilution to prevent rival sites from being displayed to search engine users, but keep getting their cases dismissed.
I have participated in a number of bar meetings related to this issue, and the trademark owner interests on the plaintiff side of these cases admit that newspaper ads, billboards, and product placement would not violate anybody’s trademark. They have had a great deal of trouble, however, explaining why keyword advertising is any different from a trademark perspective.
For several years, the Special Committee on Online Trademark Issues of the ABA’s Intellectual Property Section has been studying this issue (last year's report is here), but apparently that Committee’s non-partisan approach does not appeal to trademark owner interests who are desperate to revive this issue. So, the Trademark Litigation Committee formed its own subcommittee on the subject this year and is considering four resolutions that would express disapproval of the various grounds that have persuaded courts to dismiss keyword advertising claims. Among other things, the resolutions express disapproval of an inconvenient Second Circuit ruling, and argue (apparently) that keyword advertising claims must always get to trial instead of being dismissed on summary judgment.
Apparently, that committee does not welcome general scrutiny by lawyers on the blogosphere, because when one of its leaders got word that Corynne and Eric were looking at their handiwork, she demanded that “any ABA-IPL Section 208 Keyword Subcommittee work product that you may have received be destroyed.” When asked to explain the basis for this demand, the committee leader who issued it has basically punted, deferring the issue to higher-level leaders to address. We look forward to hearing what they have to say.
Over the years, the ABA’s Intellectual Property Section has had a tradition of putting forward its proposals as representative of the IP bar generally. I don't see how such representative status can be claimed unless the process is transparent to all lawyers claimed to be represented. And transparency includes having their draft resolutions open to scrutiny and debate before they are adopted, not just afterward.
If you or your colleagues belong to the ABA’s IP Section, this would be a good time to start paying attention to the work product being put forward by the Trademark Litigation Committee.
In the interests of disclosure: I am active in the Online Trademark Issues Committee. But I emphasize that the views expressed here are my own, not that of any ABA body.