Q2 2015 Quick Links, Part 1 (IP, Marketing and More)

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Photo credit: 3D Quick Link Crossword // ShutterStock

Photo credit: 3D Quick Link Crossword // ShutterStock

Copyright

* 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.

Prior blog post.

* 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.

Patents/Trade Secrets

* Is it a profitable strategy to develop a reputation of refusing to settle patent claims? Maybe

* John Oliver on patent reform

* The PTO kills its secret program to do extra review of potentially embarrassing patents

* Due to Alice and Octane (among other factors), Ray Niro is scaling back on his plaintiff patent work

* AdWeek: Did Starbucks Buy (and Close) La Boulange Just to Get Its Recipes?

Trademarks/Domain Names

* WSJ: Eau de Fracking? Companies Try to Trademark Scents

* LA Times: Celebs play defense as they buy up new .porn Web addresses

* Thomas O’Toole on the efforts to officially shut down .kids.us

Marketing

* NAD tells SquareTrade to stop saying it’s “#1 Rated” with consumers, but it can say it’s highly rated.

* Molly Mercer and Ahmed E. Taha, Unintended Consequences: An Experimental Investigation of the (In)Effectiveness of Mandatory Disclosures, 55 Santa Clara Law Review __ (2015)

* 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

* Facebook: Breaking new ground in the fight against fake likes. The New Republic: The Bot Bubble

* 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

* Associated Press: Hollywood rolls out red carpet to ‘influencer’ fans

* Is there a link between multi-level marketing and Mormonism?

* Marketing Land: FAQ: The New Yahoo-Microsoft Deal, Explained

Content

* NY Times on how music streaming services like Spotify are diversifying consumers’ music tastes. More evidence that fears of a filter bubble are overblown.

* Ars Technica: How Google saved YouTube

* Is the battle against clickbait turning? Upworthy pivots to focus more on original content.

* NY Times: How Netflix Keeps Finding Itself on the Same Side as Regulators

June 30th 2015 Marketing

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

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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

Screenshot taken June 15, 2015

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.

Implications

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.

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

Related Posts on Keyword Advertising

* Google And Yahoo Defeat Last Remaining Lawsuit Over Competitive Keyword Advertising

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

* Another Competitive Keyword Advertising Lawsuit Fails–Infogroup v. DatabaseLLC

* Damages from Competitive Keyword Advertising Are “Vanishingly Small”

* More Defendants Win Keyword Advertising Lawsuits

* Another Keyword Advertising Lawsuit Fails Badly

* Duplicitous Competitive Keyword Advertising Lawsuits–Fareportal v. LBF (& Vice-Versa)

* Trademark Owners Just Can’t Win Keyword Advertising Cases–EarthCam v. OxBlue

* Want To Know Amazon’s Confidential Settlement Terms For A Keyword Advertising Lawsuit? Merry Christmas!

* Florida Allows Competitive Keyword Advertising By Lawyers

* Another Keyword Advertising Lawsuit Unceremoniously Dismissed–Infostream v. Avid

* Another Keyword Advertising Lawsuit Fails–Allied Interstate v. Kimmel & Silverman

* More Evidence That Competitive Keyword Advertising Benefits Trademark Owners

* Suing Over Keyword Advertising Is A Bad Business Decision For Trademark Owners

* Florida Proposes to Ban Competitive Keyword Advertising by Lawyers

* More Confirmation That Google Has Won the AdWords Trademark Battles Worldwide

* Google’s Search Suggestions Don’t Violate Wisconsin Publicity Rights Law

* Amazon’s Merchandising of Its Search Results Doesn’t Violate Trademark Law

* Buying Keyword Ads on People’s Names Doesn’t Violate Their Publicity Rights

* With Its Australian Court Victory, Google Moves Closer to Legitimizing Keyword Advertising Globally

* Yet Another Ruling That Competitive Keyword Ad Lawsuits Are Stupid–Louisiana Pacific v. James Hardie

* Another Google AdWords Advertiser Defeats Trademark Infringement Lawsuit

* With Rosetta Stone Settlement, Google Gets Closer to Legitimizing Billions of AdWords Revenue

* Google Defeats Trademark Challenge to Its AdWords Service

* Newly Released Consumer Survey Indicates that Legal Concerns About Competitive Keyword Advertising Are Overblown

June 18th 2015 Marketing

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

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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).

Implications

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.

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

___

Some Related Posts on Keyword Advertising

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

* Another Competitive Keyword Advertising Lawsuit Fails–Infogroup v. DatabaseLLC

* Damages from Competitive Keyword Advertising Are “Vanishingly Small”

* More Defendants Win Keyword Advertising Lawsuits

* Another Keyword Advertising Lawsuit Fails Badly

* Duplicitous Competitive Keyword Advertising Lawsuits–Fareportal v. LBF (& Vice-Versa)

* Trademark Owners Just Can’t Win Keyword Advertising Cases–EarthCam v. OxBlue

* Want To Know Amazon’s Confidential Settlement Terms For A Keyword Advertising Lawsuit? Merry Christmas!

* Florida Allows Competitive Keyword Advertising By Lawyers

* Another Keyword Advertising Lawsuit Unceremoniously Dismissed–Infostream v. Avid

* Another Keyword Advertising Lawsuit Fails–Allied Interstate v. Kimmel & Silverman

* More Evidence That Competitive Keyword Advertising Benefits Trademark Owners

* Suing Over Keyword Advertising Is A Bad Business Decision For Trademark Owners

* Florida Proposes to Ban Competitive Keyword Advertising by Lawyers

* More Confirmation That Google Has Won the AdWords Trademark Battles Worldwide

* Google’s Search Suggestions Don’t Violate Wisconsin Publicity Rights Law

* Amazon’s Merchandising of Its Search Results Doesn’t Violate Trademark Law

* Buying Keyword Ads on People’s Names Doesn’t Violate Their Publicity Rights

* With Its Australian Court Victory, Google Moves Closer to Legitimizing Keyword Advertising Globally

* Yet Another Ruling That Competitive Keyword Ad Lawsuits Are Stupid–Louisiana Pacific v. James Hardie

* Another Google AdWords Advertiser Defeats Trademark Infringement Lawsuit

* With Rosetta Stone Settlement, Google Gets Closer to Legitimizing Billions of AdWords Revenue

* Google Defeats Trademark Challenge to Its AdWords Service

* Newly Released Consumer Survey Indicates that Legal Concerns About Competitive Keyword Advertising Are Overblown

June 9th 2015 Marketing

Sixth Circuit Says Informational Fax Isn’t an “Ad”–Sandusky v. Medco

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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]

Related posts:

Junk Fax Claim Fails Due to “Established Business Relationship” Exception — Cardinal Partners v. Fernandez Discipline

Ghostwritten Attorney Newsletter is an “Ad” for TCPA Junk Fax Law Purposes–Holtzman v. Turza

Angie’s List’s Telephone and Fax Information Services May Be Immunized by Section 230–Courtney v. Vereb

Lawyer Hit With $4.2 Million Judgment in Junk Fax Class Action — Holtzman v. Turza

Junk Fax Doesn’t Create Conversion Claim–Edwards v. Emperor’s Garden

Latest Junk Fax Lawsuit–Adler v. Vision Lab Telecommunications

June 6th 2015 Marketing, spam

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

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“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:

* Deregulating Relevancy in Internet Trademark Law
* Brand Spillovers
* Online Word of Mouth and its Implications for Trademark Law
* A Coasean Analysis of Marketing

May 13th 2015 Marketing

6 Characteristics of Great Storymaking

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originally published in Ad Age – read the published version there and share away 

 

Six Characteristics of Great Storymaking

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.”

May 12th 2015 Marketing

More Section 230 Cases Than I Can Handle!

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Photo credit: enameled house number two hundred and thirty // ShutterStock

Photo credit: enameled house number two hundred and thirty // ShutterStock

My cup runneth over with Section 230 cases! This long blog post catches up on a few from the past couple months. Warning: there are some stinkers in this batch.

Google, Inc. v. Hood, 2015 WL 1546160 (S.D. Miss. March 27, 2015)

As you know, for some time Mississippi Attorney General Jim Hood has been haranguing Google about third party content on Google’s network, which culminated with a 79 page subpoena from Hood’s office to Google apparently predicated on legal theories that bear no resemblance to the actual law. Google challenged this subpoena in court, and the resulting opinion contributes to the canon of First Amendment and Section 230 cases protecting search engines. Ironically, although it’s not exactly how he envisioned it, Jim Hood is helping make legal principles that benefit his constituents and is garnering big headlines along the way.

The Section 230 discussion is murky. The court cites Google’s self-policing efforts and the 2013 letter to Congress sent by the state attorneys general complaining about how Section 230 restricts their authority (that was in the context of their anti-online prostitution advertising efforts). But the court doesn’t clearly explain why these facts support the TRO.

The court’s First Amendment discussion is much clearer:

Google’s publishing of lawful content and editorial judgment as to its search results is constitutionally protected. See Jian Zhang v. Baidu.com Inc., No. 11 CIV. 3388 JMF, 2014 WL 1282730 (S.D.N.Y. Mar. 28, 2014)(“there is a strong argument to be made that the First Amendment fully immunizes search-engine results from most, if not all, kinds of civil liability and government regulation”)(citations omitted). The Attorney General’s interference with Google’s judgment, particularly in the form of threats of legal action and an unduly burdensome subpoena, then, would likely produce a chilling effect on Google’s protected speech, thereby violating Google’s First Amendment rights.

To me, this reasoning applies equally to a wide swath of state attorneys general enforcement actions against Internet companies.

The court continues:

it is well-settled that the Attorney General may not retaliate against Google for exercising its right to freedom of speech by prosecuting, threatening prosecution, and conducting bad-faith investigations against Google

Ouch! “BAD FAITH”!

Google also gets great rulings on the Fourth Amendment…

Attorney General Hood’s subpoena must comport with the requirements of the Fourth Amendment and not wage an unduly burdensome fishing expedition into Google’s operations.

…and FDCA preemption…

Google points out that the subpoena demands information concerned with Google’s dealings with Canadian online pharmacies in violation of federal law. This court, then, finds it necessary to temporarily enjoin Attorney General Hood’s enforcement of the subpoena until the court resolves the extent, if any, to which the demands contained therein are preempted [by the Food, Drug and Cosmetics Act].

…and copyright preemption:

The subpoena contains various requests for information regarding copyright infringement. Many of these requests are found in a section titled “Stolen Intellectual Property”. It is well-established that state attorneys lack the authority to enforce the Copyright Act; such enforcement power lies with the federal government.

The court also cites Section 512’s applicability, but like the Section 230 discussion, the court’s thought process is incomplete.

I hope Mississippi voters will keep this ruling in mind during the next election cycle. I’m struggling to see how Hood’s stated objectives advance his constituents’ interests at all, and I doubt even more how those objectives became a high enough priority to trump the many other important functions that state AGs should be performing. (Well, actually, from the Project Goliath emails, we all know that Hood has disquieting ties to the MPAA, but that also seems like helpful information for Mississippi voters to know.)

Faegin v. LivingSocial Inc., 2015 WL 1198654 (S.D. Cal. March 16, 2015):

This is a troubling ruling. The principal players are “A.T. Your Service Cleaning” and its rival “At Your Service Housekeeping.” The pseudo-trademark problems should be obvious: both parties adopted virtually identical but highly descriptive, if not generic, business names. There is a good chance these so-called trademarks won’t survive this litigation.

The A.T. enterprise ran LivingSocial promotions for a few months; then its rival ran LivingSocial promotions. The A.T. enterprise claimed that its rival failed to do a good job for its customers and didn’t provide its contact information prominently enough, and the resulting consumer frustration and confusion led to unwarranted bad consumer reviews and hurt the A.T. enterprise’s business.

The A.T. enterprise also sued LivingSocial for running the bad ad promotion for the rival. LivingSocial sought to dismiss the claims on Section 230 and other grounds. LivingSocial points out that the A.T. enterprise’s real beef is with the rival’s business name, and the business names are third party content to LivingSocial. However, the complaint repeatedly alleged that LivingSocial “partnered” with the rival, so the court concludes that it can’t dismiss on Section 230 grounds:

The FAC alleges that Defendant LivingSocial advertises and sells the allegedly misleading vouchers. From this allegation, the Court is able to draw the “reasonable inference” that Defendant LivingSocial was “‘responsible, in whole or in part’ for creating or developing” the content made available on LivingSocial’s website.

It’s really hard to figure out what to make of this conclusion. One argument is that LivingSocial is basically an ad network, in which case it should easily qualify for Section 230 for third party ads. But we’ve also seen some troubling Section 230 rulings for ad networks, including the Swift v. Zynga and Chang v. Wozo rulings (both involving AdKnowledge) as well as the LeanSpa ruling discussed below. So one possibility is that courts are choking on Section 230 for ad networks, at least at early stages of the litigation.

Another way of reading the ruling is that LivingSocial was the retailer in this equation, so it faces first-party liability for the goods and services it sells even if those are ultimately fulfilled with third party vendors. That interpretation would comport with cases like the uncited FTC v. AccuSearch case, but it doesn’t resolve how this case differs from the many Section 230 wins by eBay and Amazon for their marketplaces.

The opinion goes on to talk about the 1114(2)(B) trademark safe harbor for innocent printers and publishers. We rarely see interpretations of that statute, but sadly, the 1114 discussion is as cryptic as the Section 230 discussion. The court says:

The allegations of the FAC do not demonstrate that Defendant LivingSocial is entitled to protection under the Lanham Act’s safe harbor provision as an innocent infringer[]” or “innocent violator[].” 15 U.S.C. § 1114(2)(B). The FAC alleges that Defendant LivingSocial was aware of A.T. Your Service Cleaning and Janitorial’s mark from their prior partnership and then advertised with At Your Service Housekeeping in the same market.

I continue to believe that Section 1114 safe harbor is an important component of online intermediary liability scheme, but this ruling doesn’t support that hypothesis.

FTC v. LeanSpa, 2015 WL 1004240 (D. Conn. March 5, 2015).

This case has been troubling me ever since I first blogged it 2 years ago. I wrote last time that the ruling sucked, and that’s how I feel about the latest opinion too.

The case relates to the numerous fake news websites created to promote the health benefits of acai berries. Some of those sites participated in an affiliate network run by LeadClick for the benefit of the advertiser, LeanSpa. Let’s assume for now that both LeanSpa and the creators of fake news sites violated FTC law. What about the liability of the advertising network in the middle, LeadClick?

On the surface, this sounds like an easy Section 230 win. Any problems with the content of either LeanSpa or the fake news website creators would necessarily hold LeadClick responsible for third party content. Yet, the court sides with the FTC in this case. How?

The court starts with the prima facie case of a Section 5 violation. LeadClick is held to the following legal standard:

Courts have held individual defendants liable for a corporation’s conduct where they “(1) participated in the acts or had authority to control the corporate defendant and (2) knew of the acts or practices.”

This is a contributory copyright-esque standard: knowledge + control/participation. LeadClick met this standard with respect to the fake news site operators.

Knowledge: “it is undisputed that LeadClick employees knew that fake news sites were being used to promote LeanSpa products on the eAdvertising Network.” Notice the narrow view of scienter in the test: it doesn’t require knowledge of any legal violation. And of course every ad network will generally know what types of content its network publishers are providing.

Control: the court says (cites omitted):

no reasonable jury could deny that LeadClick both participated in, and had the authority to control, the affiliate marketers conduct in so far as it related to the fake news sites. Specifically, LeadClick’s affiliate managers were tasked with scouting for new affiliates. Affiliate managers “routinely gathered information about affiliates,” and they would solicit affiliates to join eAdvertising. Thus, LeadClick solicited and hired affiliate marketers using fake news sites to advertise LeanSpa’s products. Notably, “[a]ffiliate marketers had to apply to join the eAdvertising Network, and LeadClick would decide which to accept.” Indeed, “the standard contract that governed LeadClick’s relationship with its affiliates” states:

All websites, newsletters, companies, or individuals need official approval from eAdvertising before they can become a member of the Publisher Program. Only websites and newsletter that have been reviewed and approved are permitted to use the programs. eAdvertising reserves the
right to withhold or refuse approval on any website, newsletter, company, or individual for any reason, whatsoever.

Although LeadClick asserts that, “in practice, affiliate marketers were not required to submit their ‘websites’ for approval unless [it] specifically requested to see the page,” it does not deny that it had the authority to review pages. Indeed, after the FTC began suing affiliate marketers in April 2011 for using fake news sites, LeadClick started to screen fake news pages by removing their ability to advertise certain products without approval from the merchant. This evidence establishes that, as a matter of law, LeadClick had the authority to control the affiliate marketers’ use of fake news pages…

LeadClick had the authority to not hire affiliates using fake news sites, to instruct them not to use such sites after hiring them, and to remove them if they continued to do so. Just as LeanSpa would be liable for approving requests to advertise with fake news sites, LeadClick, as LeanSpa’s agent, is liable for its own decision to effectuate that decision.

In other words, LeadClick ran an advertising network. Ad networks have to police their network; it’s not only required by their advertisers, but increasingly thhey are under legal compulsion to do so (see, e.g., copyright, CA’s law on advertising to minors). Thus, the court’s analysis should equally apply to any other ad network.

The court continues that LeadClick participated in the deception based on the following evidence (cites omitted):

LeadClick purchased advertising space on genuine news sites and sold it to affiliates advertising with fake news sites. In doing so, it provided a way for consumers to browse directly from a genuine news site to a fake one. Indeed, it is clear that LeadClick knew it was creating such a bridge between genuine and fake news sites because, on some occasions, LeadClick would identify fake news pages “as destination pages for the banner ads when negotiating with media sellers,” and sometimes it “identified the destination webpage for the banner ads by emailing the media seller a compressed version of the affiliate’s” fake news page.

LeadClick also discussed product pairings that appeared on the fake news sites. Specifically, the fake news pages contained a purported reporter’s test of a two-step product combination. LeadClick participated in the fake news sites’ deception by, for example, “implementing a rule that publishers pair . . . [LeanSpa] products with other [LeanSpa] products” and going “through all the publishers that [were] running [a LeanSpa] offer and then tell[ing] them that they needed to run the new step 2.”

I don’t fully understand these points. To me, it sounds like what ad networks do.

Having established LeadClick’s prima facie violation, the court then turns to the Section 230 defense (cites omitted):

No reasonable jury could deny that LeadClick was an “information content provider.” LeadClick solicited and hired the affiliate marketers to advertise LeanSpa’s products, knowing that affiliates used fake news pages. LeadClick continued paying Davidson and other affiliates running fake news pages for their referrals to LeanSpa’s website. LeadClick communicated with LeanSpa and with affiliates running fake news pages regarding which products should be advertised as the “Step 1” and “Step 2” products purportedly under independent investigation. LeadClick also screened advertisements according to merchants’ preferences.

LeadClick’s media buying also materially contributed to the unlawful nature of the fake news sites by providing affiliates running fake news sites with a way to direct consumers from genuine news sites to fake news sites. The alleged deception in this case is the representation that independent testing was being conducted by genuine news reporters; LeadClick’s media buying contributed to that deception by providing consumers with yet another reason to think that the news site was genuine.

I don’t even know what to say about this. The “analysis” apparently conflates the prima facie elements with the immunity defense. Plus, the court compounds the Section 230 problem by holding the ad network accountable for the content on the legit new sites in addition to the fake news sites.

Unquestionably, fake news sites are bad news. No judge is going to be sympathetic to them. Ad networks shouldn’t be doing business with fake news sites. But this ruling goes way too far in bending both the prima facie case and Section 230 to tag the intermediary. In light of the other bad ad network rulings, we seem to be moving towards a SOPA-esque world where every ad network is fully responsible for the content on network publishers’ sites, meaning they will dump any publisher than poses any legal risk to them.

A final stinger: the court holds CoreMetrics, LeadClick’s parent, accountable as a relief defendant for another $4M of damages.

Opperman v. Path, 2015 WL 1306494 (N.D. Cal. March 23, 2015)

Jones, the one new case cited by Apple, does not change the Court’s conclusion that Apple is an “information content provider.” The Jones court merely adopted the Ninth Circuit’s reasoning in Roommates.com, 521 F.3d 1157 at 1168, that, if the alleged content provider is not a creator of the challenged content, it must have done more than merely “encourage” the creation of the challenged conduct; the alleged provider must have required another to create that content. ECF No. 501 at 26-27 (quoting Jones, 755 F.3d at 414). The Court previously considered this portion of Roommates, and determined that Plaintiffs’ allegations were sufficient at this stage to survive a CDA challenge.

Here, Plaintiffs allege that Apple effectively was a creator, at least in part, of the App Defendants’ Apps that misappropriated Plaintiffs’ address book data. ECF No. 478, ¶ 46 (“all iDevice Apps were built, in part, by Apple.”). Plaintiffs have also provided factual detail regarding how Apple controlled the development of Apps provided by its App Store, and contributed to the creation of the offensive content, for example, by using its iOS Human Interface Guidelines to instruct App developers to access address book data without prior permission. This is all the information-content-provider exemption requires: “The term ‘information content provider’ means any person or entity that is responsible, in whole or in part, for the creation or development” of the offending content. Neither Jones nor the new allegations in the SCAC compel the Court to reverse its prior conclusion.

Apple, as an alleged “information content provider” under the CDA, is not entitled, as a matter of law and at this stage of the proceedings, to blanket CDA immunity for the conduct challenged here.

Kabbaj v. Google Inc., 2015 WL 534864 (3d Cir. Feb. 10, 2015)

Kabbaj filed a complaint in the District Court against Google, Inc., Amazon, Inc., Yahoo, Inc., and ten “John Doe” defendants, charging defamation, tortious interference with contract, and negligent and intentional infliction of emotional distress based on various online postings. The District Court, in a comprehensive opinion, properly held that Kabbaj’s claims against Google, Amazon, and Yahoo are barred by the Communications Decency Act, 47 U.S.C. § 230(c)(1), (e)(3). See Green v. America Online (AOL), 318 F.3d 465, 470–71 (3d Cir.2003) (Act provides immunity to interactive computer service providers “as a publisher or speaker of information originating from another information content provider”).

Prior blog post.

Westlake Legal Group v. Yelp, 14-1872 (4th Circuit March 18, 2015)

the facts alleged in the complaint and attached exhibits indicate, at most, that Yelp has an automated system that filters reviews. Such activities constitute traditional editorial functions that do not render Yelp an information content provider.

Tobinick v. Novella, 2015 WL 1191267 (S.D. Fla. March 16, 2015):

Upon a careful review of the briefing, the exhibits, and the record as a whole, the Court concludes that whether or not the Society is responsible for the content of the articles, neither article constitutes commercial speech, at least as regards the Society.

That disputed fact is material with respect to the Society’s argument that they are entitled to CDA immunity on Plaintiffs’ defamation claims. For CDA immunity to apply, the Society must be a “provider or user of an interactive computer service.” Whitney Info. Network, Inc. v. Xcentric Ventures, LLC, No. 204–CV–47–FTM–34SPC, 2008 WL 450095, at *7 (M.D.Fla. Feb. 15, 2008). Because the relationship between the Society and the SBM Blog remains in dispute, the Court cannot ascertain whether the Society is such a provider with respect to the SBM Blog.

Followup ruling from April denying the request for a preliminary injunction.

Nestle Purina PetCare Co. v. Blue Buffalo Co. Ltd., 2015 WL 1782661 (E.D. Mo. April 20, 2015):

PRCG/Haggerty briefly argues that it is immune from liability under the Communication Decency Act (“CDA”), 47 U.S.C. § 230 et seq., because Congress “made the legislative judgment to effectively immunize providers of interactive computer services from liability in tort with respect to material disseminated by them but created by others.” See Blumenthal v. Drudge, 992 F.Supp. 44, 49 (D.D.C.1998). PRCG/Haggerty argues that under the CDA, it cannot be liable for the content Purina or anyone else provided for the website. Blue Buffalo responds that PRCG/Haggerty’s argument fails because (1) CDA immunity is an affirmative defense that a plaintiff is not required to plead around, and (2) PRCG/Haggerty is an “information content provider” and accountable under the CDA for the content it created for the Honesty website.

Under the CDA, “the term ‘information content provider’ means any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service.” 47 U.S.C. § 230(f)(3). The CDA does not protect internet “content providers” from responsibility for the content they transmit through the web. See, e.g., Hy Cite Corp. v. Badbusinessbureau.com, 418 F.Supp.2d 1142, 1146, 1148–49 (D.Ariz.2005) (allegations that defendant produced original content and editorials and created titles to the defamatory reports posted by users of the website were sufficient to survive motion to dismiss). Blue Buffalo is correct that it is not required to plead around affirmative defenses, and PRCG/Haggerty’s defense of immunity is such an affirmative defense. See, e.g., Doe v. GTE Corp., 347 F.3d 655, 657 (7th Cir.2003). Furthermore, even if Blue Buffalo were required to plead around this defense, it has sufficiently alleged that PRCG/Haggerty “designed and built” the advertising campaign challenged in the SAC.

April 26th 2015 Marketing

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

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Photo Credit: In the Garbage Can // ShutterStock

Photo Credit: In the Garbage Can // ShutterStock

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:

While the allegations and attached exhibits indicate that Defendants use Plaintiff’s marks, there is simply nothing stated, that if deemed true, constitute commercial use that would likely cause confusion as to the origin or affiliation of Regal’s products or services. In fact, the allegations either state directly, or create a strong inference, that the purpose of Defendants’ use of the marks is to disparage Plaintiff and endorse Regal. Taken as true, such conduct would seemingly distinguish Regal’s products from Plaintiff’s, as opposed to causing customers confusion as to the origins of the two products.

For this reason, I’m counting this case as yet another win where defendants defeated a trademark claim over competitive keyword advertising–a streak of defense wins that I think goes back to 2011. The court sidesteps the advertiser-affiliate interplay, so unfortunately we don’t get any insights into that issue.

Despite this good news, the court says a number of other claims survive the motion to dismiss, including:

* false advertising and unfair competition
* RICO/civil conspiracy
* defamation

Given the court’s inscrutable opinion, however, it’s unclear which (if any) of these claims survive solely due to the competitive keyword advertising aspect of the plaintiff’s allegations. At minimum, the defamation claim appears fairly clearly to be based on ad copy. Still, I imagine trademark plaintiffs suing over competitive keyword advertising will think about whether these alternative claims (including normally junky claims like RICO and civil conspiracy) might be worth a stab.

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

Some Related Posts on Keyword Advertising

* Another Competitive Keyword Advertising Lawsuit Fails–Infogroup v. DatabaseLLC

* Damages from Competitive Keyword Advertising Are “Vanishingly Small”

* More Defendants Win Keyword Advertising Lawsuits

* Another Keyword Advertising Lawsuit Fails Badly

* Duplicitous Competitive Keyword Advertising Lawsuits–Fareportal v. LBF (& Vice-Versa)

* Trademark Owners Just Can’t Win Keyword Advertising Cases–EarthCam v. OxBlue

* Want To Know Amazon’s Confidential Settlement Terms For A Keyword Advertising Lawsuit? Merry Christmas!

* Florida Allows Competitive Keyword Advertising By Lawyers

* Another Keyword Advertising Lawsuit Unceremoniously Dismissed–Infostream v. Avid

* Another Keyword Advertising Lawsuit Fails–Allied Interstate v. Kimmel & Silverman

* More Evidence That Competitive Keyword Advertising Benefits Trademark Owners

* Suing Over Keyword Advertising Is A Bad Business Decision For Trademark Owners

* Florida Proposes to Ban Competitive Keyword Advertising by Lawyers

* More Confirmation That Google Has Won the AdWords Trademark Battles Worldwide

* Google’s Search Suggestions Don’t Violate Wisconsin Publicity Rights Law

* Amazon’s Merchandising of Its Search Results Doesn’t Violate Trademark Law

* Buying Keyword Ads on People’s Names Doesn’t Violate Their Publicity Rights

* With Its Australian Court Victory, Google Moves Closer to Legitimizing Keyword Advertising Globally

* Yet Another Ruling That Competitive Keyword Ad Lawsuits Are Stupid–Louisiana Pacific v. James Hardie

* Another Google AdWords Advertiser Defeats Trademark Infringement Lawsuit

* With Rosetta Stone Settlement, Google Gets Closer to Legitimizing Billions of AdWords Revenue

* Google Defeats Trademark Challenge to Its AdWords Service

* Newly Released Consumer Survey Indicates that Legal Concerns About Competitive Keyword Advertising Are Overblown

April 24th 2015 Marketing

Q4 2014 & Q1 2015 Quick Links Part 5 (Trademarks, Domain Names, Marketing)

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Photo credit: 3D Quick Link Crossword // ShutterStock

Photo credit: 3D Quick Link Crossword // ShutterStock

Trademarks and Domain Names

* TheDomains: .Sucks Releases Pricing With “Premiums” For Trademark Holders Up To $2,499 A Year. A pox on the .sucks operator and on ICANN for permitting this pricing scheme. ICANN wants federal regulators to declare the pricing scheme illegal so that it can take action against the operator, but if it doesn’t get bailed out by these government enforcers, it won’t do anything.

* The most significant keyword advertising loss in Europe, Interflora v Marks & Spencer, was overturned and ordered for a retrial.

* Treemo, Inc. v. Flipboard, Inc., 2014 WL 5306671 (W.D. Wash. Oct. 15, 2014):

Flipboard does not argue that the Google search results would cause initial interest confusion, i.e., a “bait and switch” for Flipboard’s potential customers. In fact, the Google search results suggest that potential Flowboard customers would instead be redirected by Google to Flipboard’s site. Nevertheless, the Google search results continue to link Flowboard with Flipboard, fostering consumer confusion about the difference between the two apps, and showing that the two apps operate within the same space.

Related article on how search engines create meaning in trademark law.

* Rebecca: Trademark overreach of the day: ICE says “Yankees Suck” infringes

* And now something ridiculous from North Carolina: David J. Turlington III of Boone was censured by the Grievance Committee. Turlington employed other attorneys’ names and names of law firms in a keyword advertising campaign through Google’s AdWords program. He continued this practice after publication of 2010 FEO 14, which states that an attorney’s purchase or use of another attorney’s name in an Internet search engine’s keyword advertising program is dishonest. The committee also found Turlington knowingly made a false statement of material fact by claiming the inclusion of inappropriate keywords was inadvertent. Prior blog post. More on this issue very soon. [UPDATE: here’s a preview.]

* NY Times: The Weird Science of Naming New Products

* From ICANN: ccTLDs aren’t subject to writs of attachment.

* Couture v. Playdom (Fed. Cir. March 2, 2015): offering a service, without the actual provision of a service, is not sufficient to constitute use in commerce under the Lanham Act. In that case, an “under construction” web page didn’t count.

* First Premier Bank v. Papadimitriou (D. S.D. Jan. 7, 2015). Credit card company can’t use trademark law to shut down a credit card comparison site from displaying an “apply now” button.

* World Trademark Review: EweTube? YewTube? Study uncovers extent of sound-based cybersquatting

* Marketing Land: Verisign: .Com Domains Have More Click Appeal In Search Results

* Lexology: use of a competitor’s trade marks in metatags held not to amount to copyright or trade mark infringement in Canada

* I totally missed this, and maybe you did too: NTIA suspended kids.us in July 2012 because “the kids.us domain is not serving its intended purpose.” No shit!

* Chronicle of Higher Education, Here Are 88 Weird College-Owned Trademarks, Arranged as a Poem

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* The State Bar of California Standing Committee on Professional Responsibility and Conduct, Formal Opinion Interim No. 12-0006: “ISSUES: Under what circumstances is “blogging” by an attorney subject to the requirements and restrictions of the Rules of Professional Conduct and related provisions of the State Bar Act regulating attorney advertising?”

* WaPo: How two ‘free’ games made enough money to buy Super Bowl ads

* Marketing Land: What 30 Seconds Of Super Bowl Ad Money Would Have Bought Online: 2,542,573,344 Impressions

* Newsweek: Manipulating Wikipedia to Promote a Bogus Business School. Related article.

* NY Times: Radio Broadcasters Seek Changes in Disclosure Rules for Paid Programming. Related article.

* NY Times: Unilever, Suing Over Rival’s Use of ‘Mayo,’ Changes Own Website. The NY Times followup: Hellman’s Maker Unilever Drops Suit Over Eggless Mayo

* Business Insider: British regulators are targeting freebies to vloggers. And AdWeek: Inside Instagram’s Secret Barter Economy. NY Times. My blog post on Instagram freebies.

* The Americanization of Cuba continues: the government is officially creating classified ads. Related blog post.

* Reuters: Online ad revenue at risk in war on ‘click fraud’

* Fox Test Prep v. Facebook, Inc., 2014 WL 7336402 (9th Cir. Dec. 26, 2014):

Plaintiffs’ central theory of liability is that Facebook improperly charged them for “invalid” clicks. As a result, it was crucial for them to establish a workable, classwide method to distinguish among “valid,” “invalid,” and “fraudulent” clicks. Plaintiffs’ expert stated that he could develop and implement rule-based algorithms to determine whether Facebook failed to employ algorithms in conformity with prevailing industry standards in determining whether a click is legitimate. He further noted that the IAB (Interactive Advertising Bureau) Click Measurement Guidelines make clear that it is generally understood in the industry that a click is defined as a request by a human with an intent to view the content. Nowhere in his report or deposition, however, did he provide the actual method for distinguishing between valid and invalid clicks. Further, in his deposition he acknowledged that he knows of no sources, including the IAB guidelines, that provide specific parameters for determining what constitutes a valid click.

Because Plaintiffs failed to meet their burden of demonstrating a workable class-wide methodology to determine what constitutes a “valid click,” the district court did not abuse its discretion in denying class certification because “common issues do not predominate,” In re Facebook, 282 F.R.D. at 459, as required by Rule 23(b)(3).

* Globe and Mail: The hidden cost of annoying ads is fewer page views

* AP: As tastes change, big food makers try hipster guises

* FTC Business Center Blog: Top 10 Blog Posts of 2014

* Santa Monica City Attorney’s office busts MyLife.com for false advertising related to automatic account renewals and more. A good reminder that Internet enforcement activity can take place even at the city level.

* TINA.org, Belting Out Brand Names

April 15th 2015 Marketing

The Myth and Magic of WD-40, the Cold War Lube That Changed America

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According to the most recent census, there are 115,227,000 households in America, and they don't have a lot in common. Only 33 percent have kids, 18 percent are millionaires, and 14 percent have trouble paying the grocery bill. But one characteristic ties much of America together in a way one would hardly expect: Some 80 percent of U.S. households have a can of WD-40 on the shelf.

In fact, there's probably no other brand in the hardware category that has so utterly transcended its origins. Not only does WD-40 generate $383 million in annual sales in the 176 countries in which it is sold, but it also boasts 2,000 documented applications and a fan club with more than 100,000 members.

Photo: Nick Ferarri

 

WD-40's place in the consumer culture owes to the fact that the stuff works, and works for all kinds of stuff. "We've heard many times, 'If WD-40 can't fix it, nothing will,'" said CEO Garry Ridge, adding that WD-40 is "an honest product. It makes heroes out of those who use it."

That is fitting, considering that WD-40 originated in the defense industry. In the early '50s, a three-person San Diego company called Rocket Chemical started work on a solvent for the burgeoning aerospace industry. Rocket was after a compound that would remove water (hence preventing rust) while also acting as a lubricant and degreasing agent. After trying out dozens of different formulas, Rocket settled on its 40th water-displacement mixture, and looked no further for a name: WD-40. Soon afterward, engineers for General Dynamics began using the solvent to protect various parts of its Atlas missiles—America's first nuclear ICBMs.

Fortunately, a nuclear war wasn't needed to bring WD-40 to the wider world. Rocket employees began to take the stuff home where they discovered that WD-40 came in handy for all sorts of chores, from lubricating locks to removing squashed bugs from windshields. Rocket Chemical began retailing WD-40 in aerosol form in 1958 and changed the company name to WD-40 in 1969. By 1993, sales had reached $100 million.

There's another twist. To avoid having to reveal WD-40's secret formula, the company never patented it, a move that opened the door for competitors like 3M to market similar formulas. But nothing has unseated WD-40 as the No. 1 miracle mixture. Surely, that geek-chic name's got much to do with it. But according to Eric Miltsch, founder of Command Z Automotive Consulting, it is also about familiarity. "The product connects to a childhood memory," he said. "There was always a can in the garage. People have an inherent need to fix things. This is one of those end-all, be-all things that do it." 

 

 






April 14th 2015 Marketing, Technology