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Life of a Law Student, University of Houston Law Center

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Utah Legislators Ban Keyword Ads for Trademarked Phrases

By: Luke Gilman | Other Posts by
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Utah seems to be having a Ted Stevens moment. It’s legislature just passed the Trademark Protection Act which “establishes a new type of mark, called an electronic registration mark, that may not be used to trigger advertising for a competitor and creates a database for use in administering marks.”

For now I’ll leave aside the constitutional questions raised by the law until I actually take constitutional law and the thornier patent issues until Intellectual Property, but as an internet professional and a rational human being, I feel fully qualified to address its more obvious deficiencies.

Republican Dan Eastman sponsored the bill. He described the rationale for the bill in a blog post – Identity Theft: The Next Generation. See follow-ups here and here.

Trademark violations on the internet are rampant. In some cases people invest millions on their trademark, only to have their customers’ on-line word searches shanghaied by a pirate who bought off the search engines.

1 800 CONTACTS

In an interview, Eastman points out “You put 1 800 CONTACTS into Google and you get 47 different contact lens makers.” Eastman sees this as a problem. I don’t. I believe this is where our individual understanding of how the internet functions as a commercial proposition parts company. That position only makes sense if you see trademarks as granting rather expansive rights when used by third-parties. If you own a trademark, then you and only you have the right to invoke the magic words of your trademark for any commercial purpose. The ultimate question in his scenario is whether or not Trademark owners own the results of a keyword search on their trademark in the same way that they own the right for the exclusive use their trademark on their goods.

Identity Theft? Really? That’s the analogy you want to make?

Eastman correctly states the issue as one of identity. His illustrations, however, fail to show how that any identity is being stolen. Instead, it seems solely designed to protect companies from competition. If I search Google for 1-800-CONTACTS and I get an ad for LensWorld.com am I likely to mistake 1-800-CONTACTS for LensWorld? No. It’s clearly marked as LensWorld.com and I am capable of understanding as a separate entity and perhaps a competitor to 1-800-CONTACTS. No “identity theft” here. If it were a phishing site that looked identical to the 1-800-CONTACTS site then the danger of confusion is real and we’re now talking trademark infringement.

Scope Creep

Exploring the potential scope creep of this law, if it’s allowed to stand – it’s not clear to me how buying a trademarked keyword is all that different from any other scenario in which a trademarked keyword turns up a reference to a competitor. After this post goes up, you’ll be able to search “1-800-CONTACTS” on my website and get a clear reference to competitor LensWorld.com. Infringement? What if LensWorld paid me to do it? Assuming, of course, this site had enough traffic for anybody to care. Is it an infringement if a competitor’s site appears in Google’s natural keyword results of the search? In other words no money had changed hands, but Google’s algorithms turned up a competitor for that particular phrase. Would it make a difference if the competitor were paying a blackhat SEO firm to accomplish it?

As I understand it, Trademark law is designed to protect the consumer from being misled as to the origin or quality of a product or service. Instead Utah seeks to protect its businesses from an aspect of consumer choice. More along these lines from Prof. Eric Goldman.

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Category: intellectual property law, legislators behaving badly

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2 Responses

  1. What’s funny about this is that I went shopping for contacts lenses last week and I typed in 1 800 contacts and found the site clear as day. What the issue really is that people can’t tell the difference between what’s an ad and what’s a search result. Maybe the onus is on google to demarcate the areas between ‘paid for search terms’ and truly mathematically derived search results.
    We will never get into the mind of the google algorithm but highlighting an ad in yellow say doesn’t require a computer prodigy

  2. lukegilman says:

    That’s a reasonable response, I think, but not a tenable one. I know from personal experience that there is no amount of planning that can defeat the customers ingenious gift for misunderstanding. We can’t plan for the outliers of course, so we assume rationality and go from there. Enter the reasonable searcher standard. Did we really want to create law around people who have to be asked this question?

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