By attorney Anthony Castelli – Recently I noticed that a lawyer was using my name as a keyword in his Google adwords campaign. In other words when someone would search on my name his ad would show on the same page. A recent Court decision found an arguably analogous situation as this to be a trademark violation, among other things, in my opinion under somewhat similar circumstances and a huge damage award was made.
Here is a screen shot of my search in Google for Anthony Castelli. I apologize for its blurriness
Here is what Google says when you click on the icon about why they showed his add:
Apparently this is a tactic used by Seo folks that think since google permits it then it’s “white hat.” But just because Google permits it does not mean its right. When I sent an inquiry about this through my social channels no one reponded until now.
A contact through Linkedin sent me a link that cited the case. The federal district in California in the case of Binder et al v Disability Group Inc et al rendered the decision in a trial to the Court. This decision is of limited authority and is not controlling though it can be termed persuasive. For more detailed study of keyword law click here and see citations below.
In Binder the defendant Disability group used Binder’s trademark for about 6 months in an advertising campaign through Google Adwords. Defendants used “Binder and Binder” as adwords linked to their web site. Google adwords allows advertisers to pay to place targeted “sponsored Links” on the results page of a Google search. In order to have their ads appear on the search results page of a google search, google advertisers select and bid on adwords 9purchased keywords) so that their ad might be displayed on the search results.
Claim For Infringement of Registered Trademark
Binder claimed that the defendant : 1. used a mark 2. without the registrant’s consent 3. in commerce, 4. in connection with advertising for services, 5 . where such is likely to cause confusion, or to cause a mistake or to deceive. In evaluating the likelihood of confusion these items were considered.
- the similarity of the mark
- the strenght of the mark
- the proximity or relatedness of services
- the defendant’s intnent in selecting the mark
- evidence of actual confusion
- the marketing channels used
- the likelihood of expansion into other markets
- the degree of care likely to be exercised by purchasers of the service
In the context of the internet the Court noted the most important factors are :similarity of marks, relatedness of services, and simultaneous use of the marketing channel. The court found that there was a strong likelihood of confusion.
False Advertising Claim and State Law Unfair Competition
The Court also found Binder prevailed under its false advertising claim and its claim under California law for unfair competition
The defendants got 188 submission forms by individuals who searched for Binder and Binder. Binder retained 18.78% of the cases submitted. The average fee per social security disability cases was $3576.93. Ultimately for lost profits the court awarded $146,117.60.
The Court found that the conduct was willfull and doubled the damages under the Lanham act . The court also awarded attorneys fees. It is important to note that under the Lanham act the trademark must be registered and the defendant must be on notice of the registration.
However the other two causes of action did not rely on the fact of regsistration of the trademark. By the way do not expect any help from google on this . ( See Eric Goldmann’s article below)
Sources and Citations:
15 U.S.C. Sec 1125 a
Buying Another’s Trademark deemed Infringement from BVR’s International property Blog
About The Author
Posts by Anthony
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