Never underestimate the value of an email. Email marketing has proven itself again and again to be the one marketing avenue that consistently brings in the highest conversions for companies all over the world.
There is a reason they are always pushing to get customer email addresses.
No matter the size of your enterprise, you can benefit from building an email marketing list. The faster you do it, the sooner you will start seeing the results.
Not only is that a significant increase for such a short period of time, but it proves that those who claim email is dead are dead wrong. It is a more powerful tool than ever.
There are many different ways that will help you rapidly build up an email list. These are some of the most effective.
1. Build A Landing Page With A Sign Up Sheet
If you have a website or product launching, you can create a simple landing page to begin building hype. Get customers early by putting up an email form for people to be alerted the moment you launch, and so be the first to know.
Services like LeadPages exist to help you do this more quickly. You could have a page up in minutes, and begin gathering those sign ups as soon as it is live.
2. Host A Webinar
Webinars are becoming more popular by the day, and it is no wonder. They give people all the benefits of going to a conference lecture without ever having to leave their home. It is convenient and a lot cheaper without the hotel and airfare.
Host a live webinar, and then put the recording on your website for people to see in their own time. Not only is this a great content strategy, but it gives you an opportunity to create a sign up form that includes both email addresses and other important data.
A single webinar can bring in thousands of emails.
3. Offer Premium Content
Let’s say you are reading this post, and you want more information. You get to the end and you find out there is a much more thorough, instructive version available. All you have to do is provide your email, then follow the confirmation link to this premium content.
This is another great strategy for both content marketing and email acquisition. Usually referred to as content upgrading, it is guaranteed to get your reader’s attention, and their info.
4. Offer Emailed Incentives
When Google first released Google Plus, they have a genius idea. They took a handful of invites and gave them to early adopters as they anticipated the launch. Then those users gave out invites to their friends that wanted to try it.
The sheer number of invites that were sent out this way was incredible, and all done through email. It created a powerful force that made the G+ launch a busy and highly anticipated one.
Offer users the ability to send special offers to their friends if they provide their email. The friend gets the offer, then provides their own email address, and passes it on.
5. Publish eBooks
eBooks are a great way to spread your content, increase authority, and gain traction in your marketing campaign. Offer your ebooks free for an email signup, and you will see your email marketing list grow very quickly.
Just make sure you are creating valuable and well written ebooks. Don’t sacrifice quality for a quick product that only exist to build your marketing list. That should be a plus, not the singular goal.
Building an email list is important, and will lead to greater conversions than any other method available. These are some of the most effective ways of gathering them. The sooner you put them into practice, the sooner you will start reaping the benefits.
I had a great time delivering the keynote one time at the Wednesday live conference in Stockholm, which featured an all-too-typical show of hands. First, I asked how many of the marketers in attendance had a Web Analytics system installed on their site. Every hand in the room went up. Then I said, “Keep your hands up if you check your results at least once a day.” Every hand went down. Why is this so? Having an analytics system and not using it regularly is like having an extra car in your garage that you don’t drive. What is stopping us from using these numbers that we generate every minute of every day?
I don’t know for sure, but I think there are a few reasons. Some marketers think they can skate through to retirement without really adapting to the Internet. Others might feel like they just don’t know how to do it and it’s too scary to learn. But every year, I think those groups become more and more of a minority.
I think the real problem is that marketing analytics are still too hard for the average person. Think of all the steps required:
Choose an analytics system
Get an account or install the software
Choose your conversions
Instrument your site to report the conversions
Learn how to analyze the reporting
And after doing all this work, you haven’t even learned anything about your customers yet.
No wonder there are books and consultants galore to help you. The average marketer is swimming in details without getting anything back for quite a while. This takes a commitment.
And even after you have done all of these things, you still need to grapple with what you are looking for. Just take one seemingly simple metric: conversion rate. Conversion rate is the number of conversions divided by either the number of visits or the number of visitors. So, marketers need to make a decision before they even can use this metric!
I typically take clients through a very basic set of concepts to get them started:
Visit: A single session at a Web site. Every time a person comes to your Web site, it counts as a visit. Visits are not people. They are the online equivalent of a trip to the store. Some people make several trips to the same store before buying something while others make just one, but if you count visits, you are adding up all the trips to the store across all people.
Visitors: People who come to your Web site–sometimes called Unique Visitors. If someone comes to your Web site, the person is a visitor and they have made one visit. If that same person returns to your Web site later, you still tally one visitor, because it was the same person, but you count two visits.
Some industries should calculate their conversion rates using visits, while others should use visitors. Because the same person could visit Amazon five times in fives days and conceivably buy something each time, Amazon should divide conversions by visits to calculate its conversion rate.
On the other hand, if a person comes to Honda’s Web site five times in five days, it doesn’t make sense that they might buy five cars. Instead it makes more sense to figure that they are getting more information in each visit for a single purchase, so Honda should calculate its conversion rate by dividing conversions by visitors.
Now, notwithstanding all of that, for some businesses it might not be that easy to know whether visits or visitors is the right number to divide by. HP sells printer cartridges and laptops–so they don’t have a clear-cut argument for using either visits or visitors across their whole site. But you should know that as long as HP makes a decision and sticks with it, they’ll always be comparing their metrics consistently, which is the most important thing.
After walking through this entire blog post, I have immense sympathy for all those marketers that put their hands down. Instead of us thinking these poor saps are too dumb to be Internet marketers, maybe this should be a wake-up call to the entire Web analytics industry. If we don’t start making it easier, marketers aren’t going to do it.
Years from now, tech billionaires may want to thank the credit collapse that led to the Asian financial crisis. Many people here in Asia believe that the economic disaster that befell them actually pushed the current wave of entrepreneurs on to this track of newfound wealth. Read More
[Note: I wrote this post over the weekend, before the atrocious MTM v. Amazon case. I think virtually all of this post remains current despite that ruling. I’ll blog the MTM case separately.]
I’ve been chronicling the futility of competitive keyword advertising lawsuits for a while. I still believe trademark owners haven’t won such a case in court since 2011. Indeed, most of the recent opinions have been brief and breezy defense wins. That makes the latest ruling refreshing–it’s a thorough and comprehensive opinion analyzing the legitimacy of competitive keyword advertising. Yet, the result is the same as all of the others: the court rejects the trademark owner’s request.
The case involves rival non-profit organizations in the Alzheimer’s community, Alzheimer’s Foundation of America, Inc. (AFA) and Alzheimer’s Disease and Related Disorders Association, Inc. (the Association). The Association is the more venerable organization, while AFA is the new entrant, and the Association’s budget dwarfs the AFA’s by 20x or more. AFA and the Association have been stepping on each others’ toes for a while, and AFA kicked off the litigation because checks made out the “Alzheimer’s Foundation” were being sent to (and cashed by) the Association.
The Association has a registered trademark in “Alzheimer’s Association” and other terms. As early as 2010, AFA bought keyword ads triggered by trademarks registered to the Association, such as “Alzheimer’s Association” and “Memory Walk,” and in some cases the first line of ad copy said “An Association of Care and Support.” The Association objected in 2014.
Use in Commerce
AFA defended on the grounds that buying keyword ads isn’t a trademark use in commerce. We rarely see such defenses any more after the emphatic rejection of this defense in the Second Circuit’s 2009 Rescuecom case. Bound by the Second Circuit precedent, this court quickly shuts down the argument (citing the recent FarePortal case).
Turning to the heart of the trademark infringement analysis, the court starts with a declaratory statement about the presumptive legitimacy of competitive keyword advertising:
Companies can and do regularly purchase other companies’ marks as searchkeywords and use those companies’ trademarks in the text of their search advertising in order to draw a contrast with the searched-for product and offer their own as an alternative. For instance, a Yahoo! search for the term “Honda Civic” brings up ads linking to websites from Hyundai, Volkswagen, and Toyota, comparing the Civic to their cars and suggesting that the consumer purchase an Elantra, Jetta, or Corolla instead. Although such advertisements use trademarked terms in commerce and are geared toward increasing the ad buyer’s business at the trademark holder’s expense, they do not implicate the Lanham Act because they draw a clear distinction between the products and do not imply the trademark holder’s sponsorship or approval.
Can you imagine a court writing anything like this in 2009? My, how much has changed in the past half-decade. Still, this should give you a sense where this opinion is going….
The court then runs through the traditional Polaroid likelihood of consumer confusion multi-factor test. I am not a fan of using the multi-factor test for keyword advertising, although doing the complete multi-factor analysis is way better than the expedited hacks like the Ninth Circuit’s now-dead Internet troika approach. The court says:
* Mark strength. The Association has strong marks, so this factor weighs in favor of the trademark owner.
* Mark similarity. The court says “AFA’s ad has a strongly similar aesthetic to that of the Association’s organic search engine listing.” (Whatever that means…). I infer this factor weighs in favor of the trademark owner.
* Competitive proximity. The organizations are directly competitive rivals, so this factor weighs in favor of the trademark owner.
* Bridging the gap. Not relevant in this case.
* Good faith. The court says this factor tips towards the trademark owner because AFA marketed the more ambiguous term “Alzheimer’s Foundation” instead of the more distinguishable “Alzheimer’s Foundation of America.”
* Quality. This factor tips towards the advertiser because there’s no contest they do a good job.
* Consumer sophistication. This factor tips towards the trademark owner because most donors are average folks, and some may be suffering from Alzheimer’s.
Wow, it’s looking bleak for the advertiser. Five of the six relevant factors weigh against it, some decisively. Indeed, the court summarizes that “the Association’s case is persuasive, and there is a real possibility that it will prevail on its claims.” Yet, the court denies the preliminary injunction. What gives?
The remaining Polaroid factor is actual confusion, and the court analyzes this factor carefully. There’s some evidence of actual confusion among consumers due to the apparently misdirected checks. However, the court wisely expects the trademark owner to connect the dots between the purported consumer confusion and the defendant’s advertising practices being litigated (here, the keyword ad buys). The trademark owner in this case failed to do so. As the court explains, “the Association has failed to causally link AFA’s purchase of Association trademark terms and use of a two-word designation with actual consumer confusion.”
The Association cited a few anecdotes, such as a phone call from an estates lawyer trying to direct a bequest to the right organization who said the search results created some ambiguity. The court says that anecdote actually works in favor of the defense because the search results sufficiently educated the lawyer about the possible ambiguity, and the court says the few anecdotes aren’t really that persuasive in light of the $100M the Association raises annually.
The court then turns to the initial interest confusion doctrine–a doctrine still hanging around in court even though it’s been functionally dead for years. (The court cites the 2011 CJ Products v. Snuggly Plushez case, one of the last plaintiff-favorable initial interest confusion rulings). The court interprets Second Circuit law to require “intentional deception” as a prerequisite for initial interest confusion, and the Association can’t show AFA engaged in “intentional deception.”
The court concludes:
[the Association] failed to establish any actual confusion stemming from the AFA’s internet search engine advertising practices, or to show the intentional deception needed to prevail under the initial interest doctrine.
Thus, effectively due solely to the weakness of the Association’s actual confusion showing, the court says the trademark owner didn’t show a substantial likelihood of success. I interpret this result as a sign the judge simply doesn’t believe consumers were harmed by the competitive keyword advertising because there was no real actual confusion. As I explained in this recent paper, this fundamental lack of actual consumer confusion caused by competitive keyword advertising is driving defendants’ success in keyword advertising cases.
Other Preliminary Injunction Factors
The Association’s delay in pursuing the competitive keyword advertising issue undercut its irreparable harm argument (cites omitted):
the Association has known of the AFA’s use of the two-word designation “Alzheimer’s Foundation” since at least 2010. It also, due to discovery in this case, has apparently known since at least 2012 that AFA was purchasing Association trademark keywords from search engines. Although what appears to have sparked the Association to action was a new AFA advertising campaign which displayed ads, triggered by searches for the Association’s Marks, which included the language “An Association of Care and Support,” the AFA has discontinued that language, and the remaining behavior complained of has been known to the Association for years.
Two factors point towards an injunction. Calculating the losses from the competitive keyword advertising would be uncertain, and an injunction would not be a big hardship because:
Since the purchase of targeted keywords is invisible to the consumer and the AFA could achieve somewhat similar search results without purchasing the Association’s marks as keywords, it is difficult to say that the AFA would suffer significant hardship if it were forced to discontinue purchasing those specific keywords.
This latter point is almost certainly demonstrably false. Each keyword provides access to a different slice of consumers, so giving up specified keywords might effectively foreclose access to that consumer slice.
The court even implies that issuing an injunction might advance the public interest because it might accelerate the parties settling this case.
Nevertheless, the court declines to issue the injunction (cites omitted):
The Association has failed to clearly establish the three most important factors in the preliminary injunction analysis: a likelihood of success on the merits, the prospect of irreparable harm, and the balance of the hardships tipping in its favor. Though the Association makes strong points on several of the Polaroid factors, its case for confusion falls short of the “clear or substantial likelihood of success” required for a preliminary injunction that would alter the status quo. The Association also fails to adequately establish irreparable harm, and its argument on that point is fatally undermined by its delay in seeking relief. The balance of hardships also tips slightly in favor of the AFA. The motion for a preliminary injunction is therefore declined.
The judge also cleans up a variety of evidentiary disputes between the parties, including a few of special interest:
* The Association requested information about AFA’s keyword ad purchases. AFA refused, saying keywords themselves could never cause consumer confusion (analogizing to product proximity in grocery stores) and that keyword advertising was a “legitimate business practice.” These arguments go nowhere.
* AFA requested information about the Association’s keyword ad purchases. The Association took the position that such information would only relate to an unclean hands defense, which the Association said AFA couldn’t satisfy. The court says AFA’s request is appropriate:
Evidence of the keywords purchased by the Association and the amounts spent on them would help to demonstrate where the Association’s own advertisements appeared. It is at least arguable that a consumer is less likely to be confused when the Association and the AFA both have ads at the top of his or her search results, as compared to a situation where the AFA’s advertisement stands alone.
I don’t know what happened here, but we’ve repeatedly seen trademark owners suing over competitive keyword advertising have engaged in identical practices, and it’s always an embarrassingly duplicitous revelation.
* AFA requested documents about “any people the Association claims were confused by the AFA’s search engine advertisements, and any instances of confusion between the Association’s marks and those of the AFA.” The Association responded that it disclosed everything about the 3 incidents it knew about, but it couldn’t do anything more because “it has no way of knowing the identity of every single person on the internet who has been confused by the AFA’s ads.” Patiently, the judge says the Association simply has to provide documents in its control. I assume this means AFA has successfully boxed the Association into saying that it has actual knowledge only about 3 incidents of confusion.
To me, the underlying culprit is the ability to trademark the term “Alzheimer’s Association.” I understand this is a descriptive term, not a generic one, but when we weaponize such highly descriptive terms like this, it creates the potential for lots of mischief.
This case reminds me of the General Steel v. Chumley ruling, where the trademark owner had good bases for being in court but nevertheless lost its arguments about competitive keyword advertising. Here, the Association got so close that surely it could taste victory, yet the court ultimately ruled against it. If the Association can’t win this case, what will it take for a trademark owner to win a future case? I don’t think competitive keyword advertising cases have become categorically unwinnable, but at this point, trademark owners who want to sue over competitive keyword advertising have to feel like they are trying to scale a sand cliff. If you’re a trademark owner who wants to sue over competitive keyword advertising, I think the burden is on you to find competent and convincing evidence that consumers are actually being confused by the practice. At this point in the consumer adoption process, I’m reasonably confident that trademark owners cannot marshal such evidence, and without it, I believe their cases are now doomed. For more confirmation, see Concordia Partners, LLC v. Pick, 2015 WL 4065243 (D. Maine July 2, 2015), also expressing skepticism about consumers’ actual confusion attributable to competitive keyword advertising.
I also have repeatedly questioned the financial prudence of suing over competitive keyword advertising, and the judge excoriates both sides on that issue:
This case presents a unique set of circumstances where the public interest is harmed not by the conduct of one party or another, but by continuation of the litigation itself. The parties in this case are two legitimate and respected charities working to combat a cruel disease that robs its victims of their cognitive ability and sense of self.
Their work is both admirable and desperately needed, yet in this litigation they are spending immense financial resources in order to gain an entirely speculative edge in fundraising. This serves neither their constituencies’ interests nor that of the public at large.
But for the parties’ intransigence and inability to find common ground, resources expended on discovery, summary judgment motions, trial, and appeals would be directed toward providing care and support to people suffering from Alzheimer’s Disease, or toward research that might make progress on finding a cure.
* The dominant media storyline about the Mayweather-Pacquiao boxing match was the fight’s widespread illicit availability on the livestreaming apps Periscope and Meerkat. But this should have been the dominant storyline instead:
An estimated 4.4 million viewers paid a record price of $89.95 to $99.95 to watch the fight, generating more than $400 million in domestic revenue, Showtime, HBO and the fighters’ promoters said Tuesday. The pace of purchases was so great on fight night that the bout was delayed by about a half-hour to process the flurry of late orders.
* Katz v. Chevaldina, 2015 WL 2337107 (S.D. Fla. May 6, 2015).
it is crystal clear that Plaintiff’s motivations pursuing this lawsuit were improper. Instead of using the law for its intended purposes of fostering ideas and expression, Plaintiff obtained the photograph’s copyright solely for the purpose of suppressing Defendant’s free speech. Unsurprisingly, Plaintiff argues that protecting his rights under the Copyright Act was his sole motivation for filing this suit. That assertion is rather dubious. Plaintiff has characterized this action as “just one battle” in a “malicious war.” While Plaintiff might view it necessary to remove his unflattering picture to “stop this atrocity”, he may not resort to abusive methods to do so.
Plaintiff purchased the photograph taken of himself only after Defendant’s use, then registered the copyright in an effort to prohibit Defendant from using the photograph in her critical blog of Plaintiff. Plaintiff filed this action only to prevent Defendant from using the photograph, and had no intention of marketing the photograph. Essentially, as Judge McAliley found, Plaintiff had no purpose for purchasing or copyrighting the photograph other than this litigation.
In this manner, Plaintiff attempted to use the Copyright Act for purposes wholly unrelated to the law’s purpose of fostering the marketplace of ideas.
* In re Subpoena issued to Birch Communications, Inc., 2015 WL 2091735 (N.D. Ga. May 5, 2015):
The plain language of Section 512(h) requires, as a prerequisite to issuances of a subpoena, that a copyright owner must file a notice that complies with Section 512(c)(3)(A), including that identifies the allegedly infringing material to be removed or access to which must be disabled. CBeyond does not store or host on its servers the allegedly infringing material, and thus there is no allegedly infringing material to be removed or access to which must be disabled. Because Rightscorp therefore cannot satisfy the notice requirements of Section 512(c)(3)(A), a subpoena cannot be issued under Section 512(h).
* BWP Media USA, Inc. v. T & S Software Associates, Inc., 2015 WL 3406536 (N.D. Tex. May 27, 2015):
Plaintiffs do not dispute Defendant’s contention that the images at issue were posted by the users of Defendant’s website. Therefore, Plaintiffs failed to demonstrate that it is entitled to summary judgment on its direct copyright infringement claim because the evidence pointed to by Plaintiffs demonstrating that copyrighted material were posted on Defendant’s public forum does not show that Defendant directly infringed on Plaintiffs’ copyrights, especially given Plaintiffs’ concession that the photographs were likely posted by third parties, namely, the users of Defendant’s website.
* In the Beastie Boys v. Monster Energy copyright suit, the judge haircuts the Beastie Boys’ fee request but still awards nearly $700k. Prior blog post.
* Is it a profitable strategy to develop a reputation of refusing to settle patent claims? Maybe
* New York State Bar Association Committee on Professional Ethics Opinion 1052 (3/25/15):
A lawyer may give clients a $50 credit on their legal bills if they rate the lawyer on an Internet website such as Avvo that allows clients to evaluate their lawyers, provided the credit against the lawyer’s bill is not contingent on the content of the rating, the client is not coerced or compelled to rate the lawyer, and the ratings and reviews are done by the clients and not by the lawyer.
But the client better disclose the discount or the FTC will be on the lawyer’s ass…
* Reuters: Yelp defeats stockholder derivative suit over fake reviews
* Wired: America Needs a Real Definition of What a ‘Natural’ Food Is
* Truth In Advertising: “A class-action lawsuit against Tinder alleges that the online dating app falsely advertises its matching service as “free” when, in reality, users have to pay a monthly fee if they want the freedom to swipe right on their smartphones whenever they see the favorable profile of another user.”
* Network Solutions advertised a 30 day money back guarantee that didn’t actually refund all the money. The FTC was not amused.
* NY Times: Too Risqué for New York City’s Subways? Some Ads Test Limits
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.
Screenshot taken June 15, 2015
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 CardPaymentOptions.com. 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:
Not Readily Identifiable Otherwise. The court says the defendant made a “referential use” to the trademarks to review and criticize the trademark owner (I talk more about referential uses here). The court further says there was no substitute for using the trademark as a keyword trigger. I agree, but I’d have loved to see more discussion beyond a cryptic citation to Playboy v. Netscape.
Not Taking More Than Necessary. The trademark owner pointed out that its trademark appeared on the page more than 50 times. The court says that volume of references is to be expected when a defendant makes referential uses.
The competitive keyword advertising meant that the defendant’s ads may have appeared above the trademark owner’s search results on search results pages. I’ve long criticized the relevance of evaluating relative search result positioning in trademark analyses (see, e.g., my 2011 rant), but the court feels bound by the 2004 Playboy v. Netscape case suggesting that relative SERP placement might matter. Still, the court sidesteps the issue by saying it might be relevant only if the defendant “regularly” appears higher than the trademark owner, and the trademark owner in this case didn’t introduce persuasive evidence of this.
The court doesn’t discuss the necessity of including the trademark owner’s logo on the review page, which has sometimes tripped up other courts (the BidZirk case comes to mind) even though it shouldn’t matter.
No Implied Sponsorship/Endorsement. Because the review of the trademark owner was critical, the lack of sponsorship/endorsement was clear to consumers. Including the trademark in the post-domain name path wasn’t material because the trademark owner failed to show any evidence that this signaled sponsorship/endorsement to consumers. The court doesn’t separately address the possible sponsorship/endorsement of the competitive keyword advertising.
Overall, the court finds the nominative use defense succeeds. On this basis, it dismisses all of the trademark claims as well as some related claims dependent on a trademark injury. The court declines supplemental jurisdiction over the standard trifecta of California consumer protection claims, but refiling those in state court might be a fast track to an anti-SLAPP motion.
I’ve regularly expressed skepticism about the efficacy of the nominative use defense in the online trademark context, and we’ve seen many rulings over the years where nominative use should have helped but didn’t (see, e.g., 1, 2, 3, 4, 5, 6). In contrast, in this procedural posture (summary judgment by a review website), the defense worked perfectly. I only wish nominative use would resolve lawsuits more often. See generally my article on Deregulating Relevancy in Internet Trademark Law and this outtake from an amicus brief I helped file in the Rescuecom case.
Still, I’m surprised the court was able to resolve the second and third factors of the nominative use defense so confidently. Did the review website absolutely NEED to make every reference it made to ElitePay Global (such as including the trademark in the URL path), did it NEED to include the logo, and did it NEED to bid on the trademark for its keyword advertising? It could successfully function as a review website without doing any of the above. Similarly, does competitive keyword advertising create an implied sponsorship with the trademark owner? I think the answer is clearly no, but the court didn’t cite to any of the precedent or literature on point.
Perhaps the court expedited its analysis because it’s ludicrous to hold a review website liable for trademark infringement for reviewing the trademark owner–especially when it’s a critical review, which increases our suspicion that the trademark owner is really seeking to suppress negative commentary, not redress a trademark injury. See the uncited Ascentive v. Opinion Corp. decision.
Whatever analytical corner cutting might be in this opinion, I’m chalking this case up as yet another win for keyword advertising defendants–extending the streak of successful defenses that’s been going for several years.
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
The court’s ruling was not surprising. The plaintiff, Carla Ison, is a California psychologist. She claimed that Google and Yahoo displayed “unauthorized search results,” including paid ads like Adwords, on searches for her name. Ison proceeded with only minimal help from a lawyer, so she faced long odds challenging Yahoo’s and Google’s multi-billion dollar revenue lines. Leaving nothing to chance, Yahoo retained an expensive trademark survey expert (Hal Poret) to destroy Ison’s trademark. Poret opined that (in the court’s words) “the net level of awareness of Ison was less than zero percent, as the rate of awareness of her name did not exceed the false positive rate.” Ison’s efforts to provide more favorable evidence were unavailing.
Citing Poret’s evidence of minimal consumer recognition of her name, the court easily concludes that Ison doesn’t have any trademark rights at all in her name, so there’s no trademark to enforce. For this reason, the court doesn’t reach more interesting questions about the legitimacy of competitive keyword advertising. Ison could still appeal the case to the California Supreme Court, but the odds of them taking the case is virtually zero, so I think the case is over.
As far as I know, Ison was the last plaintiff still challenging search engine sales of trademarked keywords. The other fairly recent challenge, brought by Parts.com, ended in 2014 (Google won a dismissal in June 2014, and Yahoo settled in November 2014).
The ruling that Ison lacked trademark rights isn’t unprecedented in search engine competitive keyword advertising cases. Several other plaintiffs have ended their lawsuits with a court declaration that they don’t have trademark rights. See, e.g., the lawsuits by American Blinds and Home Decor Center.
Although no trademark owner is currently challenging Google or any other search engine over selling competitive keyword advertising, no US court ever clearly endorsed the practice, either. Search engines won on other grounds (such as, in this case, deficiencies with the plaintiff’s trademark), or the trademark owner simply gave up; or in a limited number of cases, the search engine settled (like Yahoo settling the Parts.com case). Thus, there’s nothing preventing a trademark owner from bringing a similar lawsuit in the future. However, I think such future suits are unlikely because it’s impossible to ignore the search engines’ practical successes in court. Further, as more time passes, I think courts will be even less inclined to disrupt such a venerable and helpful practice. So despite the lack of definitive precedent, I think the legal questions over selling competitive keyword advertising are de facto resolved in the search engines’ favor.
The legality of buying (as opposed to selling) competitive keyword ads is also not definitively resolved in court, and trademark owners are still bringing cases against keyword advertisers. However, even these lawsuits are proving hard to win in court, so I anticipate we’ll see a gradual tailing-off of the trademark owner-vs.-advertiser lawsuits too.
Medco is a “pharmacy benefit manager” (an intermediary between employers/health plan sponsors and drug companies). It sent two faxes to Sandusky Wellness Center, a health care provider, advising that many Sandusky patients had adopted Medco’s formulary, and encouraging Sandusky to prescribe “plan-preferred drugs”. Sandusky sued under the TCPA, which prohibits the transmission of unsolicited advertisements to fax machines.
The key question was whether the faxes in question were “ads”. The court says no. The definition in the statute says that an ad is any material advertising “the commercial availability or quality of any property, goods, or services.” Advertising is “the action of drawing the public’s attention to something to promote its sale.” (Black’s) While it’s obvious the everyday McDonald’s commercial is an ad, the faxes in question can’t quite fit into this category. Medco wasn’t offering its services or any drugs that Medco offered for sale. Nor did it have any interest in soliciting business from Sandusky:
[t]he faxes list the drugs in a purely informational, non-pecuniary sense: to inform Sandusky what drugs its patients might prefer, based on Medco’s formulary—a paid service already rendered not to Sandusky but to Medco’s clients.
The court cites to other on-point cases, including those that involve faxes about reclassifications of drugs (without reference to where the drugs were available for purchase) and one that found a fax from a PPO to a non-participating provider was not a fax where it did not promote the benefit of becoming a member.
The FCC has issued guidance on “incidental” ads and the court says that its conclusion here, because it is based on the unambiguous language of the statute, allows it to sidestep the issue of whether to defer to the agency’s determination on this issue. In any event, the court says that its conclusion is in line with the agency guidance, which says among other things that purely informational faxes which contain “only information, such as industry news articles, legislative updates, or employee benefit information” are not ads.
Whether something is an “advertisement” is an interesting question that is addressed less often than one would think. Here, the fax undoubtedly has some benefit to Medco, but the court says that it is not a fax because it doesn’t list any products or services that Medco offers for sale.
Two other notable cases in this arena both involve attorney advertising. In Holtzman v. Turza, the court said that a ghostwritten “newsletter” was an ad, perhaps due to the fact that the attorney-putative author’s contact information occupied a large part of the fax. Stern v. Bluestone [pdf] held that “malpractice reports” sent out by an attorney were not ads notwithstanding that they may have incidentally advertised the lawyer’s services or promoted his expertise. I think what made this case somewhat easier was the fact that Medco could not have a direct client relationship with the recipient nor did it offer products that the recipient could buy directly from Medco.
Eric’s Comment: In what decade is ***fax*** the best way for Medco to communicate this information to Sandusky? Hint: not the 2010s. #SMH
Case Citation: Sandusky Wellness Center v. Medco Health Solutions, No. 14-4201 (6th Cir. June 3, 2015) [pdf]
“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.
Indeed, many lawyers believe that competitive keyword advertising by lawyers is improper despite the fact that courts routinely green-light the practice. In 2012, North Carolina adopted an ethics rule saying that lawyers using competitive keyword advertising are violating their professional responsibility duties, and last year it publicly disciplined a lawyer for such advertising.
I’ve co-authored a short article, Regulation of Lawyers’ Use of Competitive Keyword Advertising, that examines competitive keyword advertising by lawyers. It shows how the law has become more tolerant of competitive keyword advertising, including trademark law, publicity rights law and the rules governing attorney advertising. The article concludes with a call-to-action to repeal the North Carolina legal ethics rule against competitive keyword advertising, the last remaining legal impediment to competitive keyword advertising by lawyers.
The article is forthcoming in the University of Illinois Law Review, but you can check it out now at SSRN. We can still make minor changes, so we’d welcome your feedback. The abstract:
Lawyers have enthusiastically embraced search engine advertisements triggered by consumers’ keywords, but the legal community remains sharply divided about the propriety of buying keyword ads triggered by the names of rival lawyers or law firms (“competitive keyword advertising”). This Essay surveys the regulation of competitive keyword advertising by lawyers and concludes that such practices are both beneficial for consumers and legitimate under existing U.S. law—except in North Carolina, which adopted an anachronistic and regressive ethics opinion that should be reconsidered.
Some of my other articles related to competitive keyword advertising:
It’s easy to call storytelling a cliché, but how exactly can one move beyond it when storytelling is entrenched as the epitome of what defines great marketing?
In previous Ad Age columns and during the Ad Age Digital Conference this April, storymaking has kept coming up as a way to describe the shift away from the broadcast-era mentality of storytelling to a new approach where marketers build on stories that people share with each other. Yet storymaking needs to be dissected so that anyone can identify it, learn from it, and engage in it themselves.
At the Ad Age conference, I moderated a panel with some stellar storymakers in their own right: Visa’s chief brand and innovation marketing officer Chris Curtin; Burger King’s CMO Eric Hirschhorn; Fullscreen’s head of content Ashley Kaplan; and Adobe’s CMO Ann Lewnes. Some examples and insights they shared further illustrate the art. Here are six characteristics of great storymaking.
1. Participatory: One clear sign of a story that’s told versus one that’s created with its audience is that the audience must be able to add to the story in some way. Beautiful stories can be told in 30-second spots, but it’s impossible for a 30-second spot alone to be considered storymaking. Storymaking requires some effort from its audience.
2. Fan-inspired: Sometimes, marketers create new experiences that trigger storymaking, and there’s a place for that, especially when launching a new product. Yet marketers are often getting into storymaking precisely because they’re seeing what their fans are already talking about and sharing. Like any kind of socially-driven marketing, it’s advantageous to have an existing base of fans to draw from. Adobe’s Lewnes said, “Brand love leads to storymaking. Fans must be engaged and very attached to you; otherwise it is difficult to make stories.”
3. Decentralized: If all the stories are designed to live in a central hub that the brand or publisher owns, then it takes away from what people can do on their own channels. True storymaking taps into any channel people want to use, online and offline. Sometimes this involves working with content creators and influencers to reach consumers. Fullscreen did this by promoting the movie “Ouija” with a stunt where it made teenage internet celebrity Kian Lawley disappear. His multi-platform efforts to tap his fans to bring him back led to more than 7 million Twitter mentions about the movie. Fullscreen’s Kaplan said, “The creator is core to everything we do since they are the ones with the relationship with their audience.”
4. Unpredictable: Because storymaking shifts the focus from the brand’s story to people’s stories about the brand, it opens the door for others to take the idea in new directions. When Visa Checkout sponsored Odell Beckham Jr.’s successful attempt at setting the Guinness World Record for one-handed catches, it inspired others to try to break the record. Iowa Hawkeyes wide receiver Tevaun Smith seemed to do so (though it wasn’t certified by Guinness), generating a new wave of coverage for the stunt.
5. Reciprocal: If you want people to run with a brand’s stories, there has to be something in it for them. For Visa Checkout and Fullscreen’s “Ouija” campaign, the brands entertained and surprised people. Burger King listened to customers’ pleas and brought back chicken fries to its menu, and fans in turn spread their love of the product through chicken fry emojis that the brand created. In Adobe’s case, the marketer showcases its customers’ work in its marketing for Photoshop [see the video above], Creative Cloud, and other products, as almost all artists love getting more exposure for their work. The value exchange is usually clear in every great example of storymaking.
6. Authentic: The clearest sign of storymaking gone awry is that all the stories created are positive. If marketers embrace their lack of control over where stories go, it means some stories won’t be ones that any brand would tell. Yet as Hirschhorn noted, that’s less risky than covering one’s ears. He said, “I don’t think negative sentiment towards a brand is a terrible thing. Operating in a world where people have a positive opinion or negative opinion is a much richer territory than telling people to feel one way.”