Web Marketing Legal Issues by Eric Goldman

Web Marketing Legal Issues
Eric Goldman
Marquette University Law School

Legal Basics

  • Trademarks are words and symbols that identify and distinguish the source and origin of goods and services in the market
    • Infringement—likelihood of consumer confusion
      • Factors: mark similarity; product similarity; area and manner of mark’s use; consumer care; mark strength; actual confusion; and intent to palm-off
    • Initial interest confusion—“use of another’s trademark in a manner reasonably calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion” (Brookfield)
    • Dilution—lessening of a famous mark’s capacity to identify/distinguish goods/services (e.g., tarnishment and blurring)
  • Anticybersquatting Consumer Protection (ACPA)
    • registering a domain name with bad faith intent to profit and then registering, trafficking or using confusingly similar or, in case of famous TM, dilutive domain name
    • registering a domain name using a living person’s name with intent to profit by selling it
  • Dispute Resolution Procedures (UDRP, STOP, etc.)
    • domain name is confusingly similar to third party TM, registrant has no legitimate interests in the name, and name is being used in bad faith
  • False Advertising/Unfair Trade Practices
    • Also specific product laws (tobacco, jewelry, diet supplements)
  • Publicity Rights
    • commercial exploitation of personality

Basics Applied: Domain Names

  • Registering domain names of competitor
    • ACPA and UDRP; can also be infringement and dilution
  • Registering domain names using famous marks
    • ACPA, UDRP and dilution; can also be infringement
  • Registering “sucks” domain names
    • some courts find ACPA, UDRP, infringement & dilution
    • others find no violation or TM fair use
  • Typosquatting
    • ACPA and UDRP; can also be infringement and dilution

Basics Applied: Other Practices

  • Including third party TMs in metatags
    • some courts say per se initial interest confusion (Brookfield)
    • some courts reach opposite conclusion (Welles)
    • disclaimers may not help
    • how accurately do the metatags characterize your website?
  • Buying third party TMs as keywords
    • law unsettled; might be initial interest confusion
  • Link manipulation to improve page rank
    • might be illegal, and can get you thrown out or down-ranked
    • SearchKing lawsuit
  • Mousetrapping
    • can be unfair trade practices (Zuccarini)

Search Engine Liability

  • Selling third party keywords
    • dictionary words not TM infringement (Playboy v. Netscape)
    • law is far from settled (Estee Lauder, Body Solutions, Gator)
  • Paid inclusion/paid placement
    • FTC has threatened unfair trade practices claim
    • Is it ethical to use consumer expectations about editorial content to improve ad response?
  • Indexing and displaying content
    • in-line linking infringes but thumbnails are fair use (Kelly)
  • Linking to infringing content
    • online safe harbor (17 USC 512)
    • compare Napster and eBay cases