Milwaukee Court Rules Competitors Can Buy Your Name

A Wisconsin court (Milwaukee County Circuit Court) recently ruled on the nationally publicized case answering the million dollar question, “Can your competitors rightfully buy your trade names and trademarked names as keywords to market their firms?” The court said, ‘yes’, and the plaintiff promises an appeal to the Wisconsin Court of Appeals.

The case is of Habush, Habush & Rottier vs. Cannon & Dunphy (ABA Journal), both of whom are Wisconsin PI firms. Cannon purposefully used the names of the attorneys at the Habush firm as keywords in its pay-per-click campaigns on search engines.

Keywords are triggers; each campaign contains keywords that trigger the related advertisements. A campaign manager can target just search engines or include the search engine’s network composed of high traffic/profile websites such as CNN, YouTube, etc.

In this case, when searchers conducted a search on a search engine or on a network site for any of the attorneys’ names at the Habush firm, Cannon’s ads would appear and link to the Cannon website.

Habush attorneys claimed a violation of their privacy; the court concurred that Cannon was indeed violating the privacy of those attorneys, but the judge rationalized that the violation was no different than placing the advertisements of the Habush firm and the Cannon firm next to one another in a yellow pages book. Both parties claimed unclean hands; judge concurred.

Habush’s appeal may reverse the Milwaukee Court judge, but until and unless it does, the gateways holding trademark infringing marketing tactics like these at bay just got lifted.

Notably, Google previously prohibited that type of conduct; now, Google declines to investigate trademark abuse in keywords; they will continue to investigate it in the text (or graphics) of advertisements.

Applying the Milwaukee Court judge’s logic, there’s little reach from keywords in search engine campaigns to keywords in metadata on a website, and then only a short reach to other forms of trademark infringements.

Sigma’s words of wisdom:
1. Your main website is on a ‘.com’; at minimum, you should also own the lease on the .net version, and may want to include other top level domain leases, such as .org, .biz. Ensure that you own the license for domains that depict your trade names, such as:
a. YourFullLegalName.com and .net (e.g. ChristopherTVanWagner.com, .net)
b. YourCommonName.com and .net (e.g. ChrisVanWagner.com, .net)
c. YourFirmsLegalName.com and .net (e.g. VanWagnerWoodSC.com, .net)
d. YourFirmsCommonName.com and .net (e.g. VanWagnerAndWood.com, .net)
e. YourFirmsMarketedName.com and .net (e.g. VanWagnerWood.com, .net)
2. Remember that keyword-intensive domain names (e.g. trademark-attorney.com) fail trademark protection rules

How did Cannon achieve getting their advertisements to display when people were searching for a Habush firm attorney?
Cannon setup numerous pay-per-click campaigns in the various search engines. They then selected the names of the attorneys at Habush and the Habush law firm name as keywords to trigger the campaign’s advertisements. They expanded their breadth of exposure to include all search engines and networks. When a search was conducted on the search engines for Habush’s firm or an attorney there, Cannon’s ads displayed. Cannon’s ads linked to Cannon’s websites.

Previously, search engines monitored the use of trade names and trademarks in two ways: in keywords and in ad text; they prohibited trademark infringement by prohibiting the use of trademarks and trade names without permission, and stated that they would close paid campaign accounts for violations. Those protections have changed. Google, for example, no longer will investigate the use of a trade name or trademark as a keyword.

Response to ABA Journal comment by Pul-lease:
The comment condemns Habush for having not thought of this first.
The court said that both parties came with unclean hands.

The comment continues to condemn Habush for having failed to buy his rights to the name keywords to prevent Cannon from directly targeting them.
In pay-per-click programs, the rights to keywords cannot be bought out. Pay-per-click programs use keywords for bidding purposes. Notably, the rights to keywords also cannot be bought in organic results.

We’re hopeful of a reversal on appeal; in the meantime, it’s a free for all on your names… keep a watch, please.

Sidebar – We disagree with the Milwaukee Court judge; his rationale fails. We also find Cannon & Dunphy’s behavior deceptive and underhanded. Since the court commented that both plaintiff and respondent came with unclean hands, we’ll note that we don’t condone either party’s actions along this vein. Cannon & Dunphy’s campaign was run by a relative of the one of their attorneys (Halloran); Habush’s campaign was run by the Search Engine Guys.

Fowled Rationale, Judge: He found that buying a competitor’s name as a keyword in a pay-per-click campaign paralleled placing an advertisement in the yellow pages, both pitting one firm against another side-by-side. Yellow page headings are generic (e.g. Attorney or a subheading, Personal Injury). Generic keywords such as attorney or personal injury would parallel the placement in a yellow pages book, but specific headings such as ‘Robert Habush’ or ‘Dan Rottier’ do not.

The judge relied on advertising rules that provide that advertisements may not mislead a consumer wrongfully (such as to place, person, product, time or price). Habush sued for invasion of privacy. Next, the judge concluded that a savvy online software shopper wouldn’t be mistaken. Last I read the reasonable person test, Mr./Mrs. Reasonable Person weren’t software shoppers. If we take that a step further, the fact remains that the majority of Internet users are common consumers. Lastly, the judge determined that folks wouldn’t be confused by reaching Mr. Halloran’s profile when looking for Mr. Habush's profile, for example. Perhaps a poll would help.

Our best wishes to Mr. Habush on his appeal.