Another Murky Opinion on Lawyers Buying Keyword Ads on Other Lawyers’ Names–In re Naert

18 11 2015

Technology & Marketing Law Blog

October 3, 2015

Eric Goldman

I recently posted a co-authored article, Regulation of Lawyers’ Use of Competitive Keyword Advertising, discussing lawyers’ use of competitive keyword ads triggered by other lawyers’ names. That article examines both IP laws and attorney rules of professional conduct and explains why buying lawyers’ names for competitive keyword ads is permissible and desirable. If you haven’t read it, it will be a helpful foundation for the rest of this post.

In light of our paper, a new opinion from South Carolina Supreme Court left me scratching my head. The case reached the Supreme Court as an “Agreement for Discipline by Consent” between the state bar counsel and Zachary Naert–basically, a settlement agreement. The Supreme Court approved the settlement in an opinion with scant analysis.


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Do Online Retailers’ Search Results Constitute Trademark Infringement?

22 09 2015

Since the inception of the search engine, trademark owners, advertisers, search engine providers, and the courts have struggled with the issue of the use of third-party trademarks in keyword advertising and search returns, and whether such trademark use is likely to confuse consumers when they are searching for information regarding a particular brand. Despite an array of holdings on this issue over the years, following the 2011 decision in Network Automation, Inc. v. Advanced System Concepts, Inc., the Ninth Circuit and other courts have generally held that the potential for “mere diversion” of a consumer caused by the use of a third party’s trademark in connection with sponsored keywords or search results does not constitute trademark infringement unless a trademark owner can demonstrate that particular search returns or sponsored keyword advertisements are likely to cause confusion based on the specific use or presentation of a trademark in a search return.


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Keyword Ad Lawsuit Isn’t Covered By California’s Anti-SLAPP Law

24 08 2015

[note: ed– there’s another tricky issue lurking here, that Prof. Goldman doesn’t mention: even though it’s not DIRECTLY applicable, the more that courts say that search terms are “commercial,” the more likely that trademark litigation will hinge on whether search terms are a “use in commerce.” If/when courts settle that in favor of “yes, they are,” the Google-type auction model might be in real trouble. To his credit, Prof. Goldman provides a long list of relevant cases at the bottom of this post]

August 22, 2015 · by 
The plaintiff, Los Angeles Yellow Cab, and defendants compete in the taxi industry. The defendants bought keyword ads at the search engines, such as the following triggered by the search “Yellow Cab Los Angeles”:

Yellow Cab Los Angeles—Call 800–521–8294 or Book Online!
Our Cabs get you there Fast & Safe.

The plaintiff claimed this ad constituted false advertising (per B&P 17200 and 17500 and the Lanham Act) because the phone number and website misled consumers to contact one of the defendants instead of Yellow Cab Los Angeles.

The defendants moved to strike the lawsuit per California’s anti-SLAPP law.


Case citation: L.A. Taxi Cooperative, Inc. v. Independent Taxi Owners Association of Los Angeles, 2015 WL 4970092 (Cal. App. Ct. Aug. 20, 2015)







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Trademark Ruling Over Amazon’s Internal Search Results–MTM v. Amazon (Forbes Cross-Post)

20 07 2015

When a consumer asks a retailer for a product the retailer doesn’t carry, how should the retailer respond? A recent federal appellate court opinion suggested that gave the wrong answers to consumers searching for a watch brand that it didn’t carry.

The Ruling

Multi-Time Machine makes high-end military-style watches under brand names including “MTM Special Ops.” MTM tightly controls its distribution channels. As a result, doesn’t carry MTM’s watches. When Amazon consumers searched for “MTM Special Ops Watches” in Amazon’s internal search engine, consumers were provided a list of “aesthetically similar, multi-function watches manufactured by MTM’s competitors” such as Luminox and Chase-Durer, but the search results page did not expressly say that Amazon doesn’t carry MTM watches:

Amazon’s disclosures on its internal search results page differ from competitors and, both of whom “clearly announce that no search results match the ‘MTM Special Ops’ query and those websites do not route the visitor to a page with both MTM’s trademark ‘MTM Specials Ops’ repeatedly at the top and competitors’ watches below. Their pages show the search query playback but then forthrightly state that no results for the ‘MTM Special Ops’ search query were found, and then list competitors’ products.”

MTM claimed that Amazon’s search results constituted trademark infringement. The district court ruled for Amazon, saying that the search results page didn’t create actionable consumer confusion. In a split vote, recently the Ninth Circuit Court of Appeals reversed, holding that Amazon’s search results presentation might constitute trademark infringement and sending the case to the jury.

The majority opinion focuses on a much-criticized trademark doctrine called initial interest confusion. The Ninth Circuit has had a dozen or so cases addressing initial interest confusion, and its handling of the doctrine has vacillated wildly. In 1999, the Ninth Circuit adopted an exceptionally (and, in my opinion, unreasonably) overbroad definition of the concept. This led to a series of tortured and inconsistent rulings until 2011, when the Ninth Circuit adopted a more constrained definition that virtually killed the doctrine.

Case citation: Multi Time Machine, Inc. v., Inc., 2015 WL 4068877 (9th Cir. July 5, 2015)


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Appeals court: Amazon can’t dodge trademark suit over watch search results

10 07 2015

On Monday, a divided panel of appeals judges ruled that Amazon will have to face a trademark lawsuit because of online search results it published, which point to the competitors of a high-end watchmaker.

The US Court of Appeals for the 9th Circuit published its opinion (PDF) in Multi Time Machine v. today, reversing a lower court decision that held in favor of Amazon. In the original case, Multi Time Machine (MTM) sued Amazon saying its search results were confusing. The case now returns to the district court in Los Angeles for further proceedings.

Multi Time Machine may end up being an important outlier in technology law, since it approves a trademark owner bringing suit over search results. Many companies have filed lawsuits challenging the practice of “keyword advertising” by suing competitors or search engines themselves.


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Another Competitive Keyword Advertising Lawsuit Fails–Infogroup v. DatabaseLLC

28 06 2015

The plaintiffs run several well-known databases, such as infoUSA and Salesgenie. The defendants are former employees of plaintiffs who split off and launched a competitive rival. The plaintiffs are upset that the defendants’ databases contain fake listings created by the plaintiffs, despite the marketing claim that the defendants’ databases are “verified.” The plaintiffs are also upset about what they perceive as various marketing overclaims that relate to the companies’ common history.

Defendants bought plaintiffs’ trademarks as AdWords. Like most recent cases, the trademark claims go nowhere (some cites omitted):There are several other interesting nuggets in this opinion:

* the plaintiffs claimed the fictional listings showing up in the defendants’ databases provided evidence of trade secret misappropriation. But web scraping can’t be trade secret misappropriation when it involves publicly accessible data because, by definition, that data can’t be a trade secret any more. The court concludes: “to the extent that Infogroup’s motion is focused on “webscraping,” such conduct is not unlawful under Nebraska [trade secret] law.” I just did a more complete update on scraping law.


Case citation: Infogroup, Inc. v. DatabaseLLC, 2015 WL 1499066 (D. Neb. Mar. 30, 2015)

Some Related Posts on Keyword Advertising:



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Mixed Ruling in Competitive Keyword Advertising Case–Goldline v. Regal

25 06 2015

The lawsuit’s principal participants are rivals in the precious metals and coin industry. The defendant organization, Regal, has an affiliate program, and it appears that some affiliates bought competitive keyword advertising using the plaintiff Goldline’s trademark. The ruling is on Regal’s motion to dismiss, and the judge’s overly pithy opinion raises as many questions as it answers. The court based its ruling on the following facts alleged in the complaint:

According to Plaintiff, Defendants purchase advertising keywords that include the GOLDLINE Marks so their websites will appear when search terms intended for Plaintiff are entered in the search engine. Many of the search results are not identified as ads. The purpose of the affiliates’ websites is to divert customers away from Plaintiff and other competitors, toward Regal. To that end, Regal prepares for its affiliates’ use, scripts and website materials that purportedly offer objective, independent evaluations and facts related to precious metal dealers. These
materials allegedly infringe on the GOLDLINE Marks. The materials also allegedly offer endorsements for Regal; false information and
statements about the independent and unbiased views of the reviewer; and false and disparaging information about Plaintiff, including customer complaints, pending litigation, and poor consumer and industry ratings.

The court dismisses the Lanham Act trademark and false designation of origin claims:

Case citation: Goldline, LLC v. Regal Assets, LLC, CV 14-03680 DDP (ASx) (C.D. Cal. April 21, 2015)



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Can Lawyers Buy Keyword Ads On Each Others’ Names At Google? (Forbes Cross-Post)

25 06 2015

“Competitive keyword advertising” occurs when a company buys the trademarks of its competition as keywords for search engine marketing. In the 2000s, it was one of the most interesting and hotly-contested issues of Internet Law as trademark owners filed many lawsuits and sought legislative protection. In the last few years, however, the issue has mostly fizzled out. A major 2011 ruling in the Ninth Circuit Court of Appeals cleaned up many of the legal doctrines that trademark owners were relying upon, and the Tenth Circuit extended that approach in 2013 in a devastating trademark owner loss. Since the 2011 ruling, I am not aware of any trademark owner winning a competitive keyword advertising case in court, even in cases with plaintiff-favorable facts.

As the competitive keyword advertising legal battles wind down in other industries, the fight is still raging in the legal profession. That’s not particularly surprising. Bar associations have fought against lawyer advertising for decades, and lawyers–as late technological adopters–often fight battles over the last generation’s technology.


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Competitive Keyword Advertising Permitted As Nominative Use–ElitePay Global v. CardPaymentOptions

22 06 2015

I know, it’s getting repetitive blogging about competitive keyword advertising cases failing in court. But trademark owners keep bringing them, so I’ll keep blogging them.

The Ruling

The trademark owner does business as ElitePay Global. It provides “merchant payment solutions equipment, services and training business in the credit card processing industry.” The defendant runs a review website called It created a web page called “ElitePay Global Review” and included the trademark owner’s logo on the page and the trademark in the post-domain URL path. The website’s CEO wrote a review of the trademark owner and “rated Plaintiff’s service with a “C-” grade or 1.875 out of 5 stars.” (In response to this lawsuit, the defendant downgraded the trademark owner’s grade to an “F”). The page has over 40 other negative reviews and comments about trademark owner plus links to competitors’ websites. The defendant also bought keyword ads triggered by the phrase “ElitePay Global.”

On summary judgment, the court bypasses the standard prima facie trademark infringement elements and, relying heavily on the Toyota v. Tabari case, immediately jumps into a discussion about nominative use. The court runs through the standard Ninth Circuit three factors of nominative use:

Case citation: International Payment Services, LLC v., 2:14-cv-02604-CBM-JC (C.D. Cal. June 5, 2015)


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Google And Yahoo Defeat Last Remaining Lawsuit Over Competitive Keyword Advertising (Forbes Cross-Post)

15 06 2015

Keyword advertising using competitors’ trademarks is now so well-accepted, it may be hard to remember that the practice used to generate serious debate among lawyers and ethicists. In particular, the search engines drew substantial legal fire from trademark owners for selling “their” trademarks; at one point around 2010, I believe Google had about a dozen simultaneously pending lawsuits.

Recently, a California appellate court dismissed another competitive keyword advertising lawsuit against Google and Yahoo. As far as I know, it was the last remaining lawsuit of its kind. As a result, for the first time in at least a decade, I believe there are no more pending lawsuits against search engines regarding competitive keyword advertising.

About the Ruling


Case citation: Ison v. Google, Inc., 2015 WL 3395574 (Cal. Ct. App. May 27, 2015)



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