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The Courts Government News Your Rights Online

Web Ad Trademark Law To Be Retested 331

Posted by michael from the hefner's-heifers dept.
scubacuda writes "News.com et al report that The Ninth Circuit U.S. Court of Appeals on Wednesday found Playboy Enterprises can pursue charges that Excite and Netscape Communications violated its trademark by selling banner advertisements triggered by the terms 'playboy' and 'playmate.' The decision reverses a district court ruling that dismissed the suit without a trial in 2000. Playboy 'clearly holds the marks in question, and defendants used the marks in commerce without (its) permission,' a split three-judge panel wrote in its majority decision." This is a shame, because the first judge to look at this case seems to have pretty much gotten it right: "Although the trademark terms and the English language words are undisputedly identical, which, presumably, leads plaintiff to believe that the use of the English words is akin to use of the trademarks, the holder of a trademark may not remove a word from the English language merely by acquiring trademark rights in it."
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Web Ad Trademark Law To Be Retested More

Web Ad Trademark Law To Be Retested

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  • IMHO, but I must admit IAAL (Score:5, Insightful)

    by GnrlFajita ( 732246 ) <brad AT thewillards DOT us> on Friday January 16, 2004 @02:02PM (#7999897) Homepage
    I would have to disagree that the previous court "got it right," implying that this one got it wrong. Playboy & playmate are famous trademarks, even though they have independent English-language meanings. If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement? If the ad is for, say, children's clothes or toys, I can see it; but anything else is blatantly taking advantage of the consumer's use of Playboy's trademark and that is what happened here.

    Trademark law is based on likelihood of confusion. I don't agree, and the courts won't either, that Playboy can stop all uses of these terms. But I think it's justified here, where someone is using a company's trademark to sell related but non-affiliated goods. This isn't a case of the search results including related goods; here the website brings up a paid-for banner advertisement: "Some consumers, initially seeking Playboy's sites, may initially believe that unlabeled banner advertisements are links to Playboy's sites...Once they follow the instructions to 'click here,' and they access the site, they may well realize that they are not at a Playboy-sponsored site."

    I agree that most intellectual property law is subject to abuse (see, e.g., RIAA), but that does not automatically equal the proposition that it is all bad or immoral.
    • If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?

      If the non-Playboy site has a clearly differnet name, and there's no reasonable possibility of confusion?

      For a different take--if a business named themsleves P-something, and took out a large ad in the "adult entertainment" directory that just happened to be on the same page as Playboy's--how would this be trademark infringement?

      • if a business named themsleves P-something, and took out a large ad in the "adult entertainment" directory that just happened to be on the same page as Playboy's

        In all fairness to your example, if someone is looking in the "adult entertainment" directory and they see a business named P-something, they will most certainly think it refers to something entirely separate from Playboy and they damn well doesn't have a monopoly on that!

    • Re:IMHO, but I must admit IAAL (Score:4, Interesting)

      by Seehund ( 86897 ) on Friday January 16, 2004 @02:13PM (#8000033) Homepage Journal
      As long as the advertisement doesn't claim to be from Playboy or advertising Playboy or providing a service/product named Playboy, what's the infringement?

      What's next? Will this affect indexing?
      Can a porn site no longer use the phrase "Playboy(TM)" (including the "TM") anywhere on their site, because it might get indexed and lead clueless/illiterate googlers there, when they were actually looking for the site of "Playboy(TM) Magazine"?

      • Re:IMHO, but I must admit IAAL (Score:4, Insightful)

        by TopShelf ( 92521 ) on Friday January 16, 2004 @02:38PM (#8000307) Homepage Journal
        This case isn't about the indexing of websites, but the use of specific keywords that were sold to the advertisers in question. They were using the value of those trademarks to drive traffic to their own sites, which could very well be found to be infringement.

        It reminds me roadside markets I've seen set up with lots of knock-off athletic shoes, and a guy standing out front with a hand-written sign that reads in huge letters "NIKE", with small text underneath that says "-style shoes". Since they're set up and taken down in a couple days, nothing happens, but I'm sure Nike could win an infringement case against such tactics.
    • But I think it's justified here, where someone is using a company's trademark to sell related but non-affiliated goods.

      This is interesting. What will they say if porn site X, which has the text "better looking than playmates" in their title, which will appear in the search results summary, also comes up for the playmate search? It is also effectively an advertisment for their commercial service. Does Yahoo (or any other search engine) have to filter or modify what's presented for their search results?
    • If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?

      Is trademark infringement using similar verbage for similar concepts or for identical usage?

      If someone uses the word "playmate" in the context of porn, but without the Playboy style, is it still infringment? After all, someone could easily pull fetish or word play connotations from the word "playmate" that are not present in Playboy's usage of the word. Is that infringm

    • Re:IMHO, but I must admit IAAL (Score:4, Interesting)

      by FreshFunk510 ( 526493 ) on Friday January 16, 2004 @02:16PM (#8000063)
      I agree with you accept I think you're a bit confused. The PREVIOUS (initial) court denied any case of trademark infringement while the LATTER court said there was trademark infringement.

      Additionally, I disagree with the comments by the main poster. Even though the initial decision is being overturned, I don't think the 9th circuit is disagreeing with the statement: "English words is akin to use of the trademarks, the holder of a trademark may not remove a word from the English language merely by acquiring trademark rights in it."

      I think what the 9th circuit is saying is that if you use english words that are obviously trademarks in order to mislead and confuse a consumer (especially into purchasing a different product) then that goes beyond the rights granted of just using English words. (i.e. You can yell "fire" at home, in your backyard, whatever. Freedom of speech. But if you yell "fire" in a movietheater then you're liable if anyone gets injured. It's circumstantial.)

      I think the article sums up the point here: "In Playboy's case, it charged Excite with trademark infringement when it sold banner ads to adult-related sites keyed to the terms "playboy" and "playmate," arguing that it created consumer confusion and diluted its trademarked names."
    • And another thing to remember is that there hasn't been any conclusion here - the ruling is just that the lawsuit can proceed.

      So how much do you bet that Playboy will try to stack the jury with young males, and bring in Ms. December to act as assistant counsel?
    • As I understand it, trademarks are done on a category-by-category basis. "Apple", for instance, is a defensible trademark in the computer category, but not for food - I cannot trademark the name "apple" for apples.

      In the Lindows.com case, Microsoft has somehow trademarked the word "windows" in a category in which the term has a generic meaning, and Lindows.com may be able to win. Even Microsoft is not attempting to claim that the trademark "windows" is defensible outside of the computer category - a searc

    • I believe that the difference is in how it's presented. If Google replaced search results with paid-for ads items (ie. didn't give a link to Playboy's page, but to a competing advertiser), that would be trademark infringement. But that's not the case. Google's search results page make it plainly obvious which are the search results, and which are ads.
    • Playboy & playmate are famous trademarks, even though they have independent English-language meanings. If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?

      Well, one has to question the strength of these trademarks. The English-language words "playboy" and "playmate" have changed very significantly over the past 50 years -- moving to parallel the trademarks -- so it could be argued that the situation is similar to "Hoov
      • moving to parallel the trademarks -- so it could be argued that the situation is similar to "Hoover [vacuum cleaners]", or "Kleenex [tissues]".

        Well, that sucks... or blows... depending on how you look at it.
      • Personally, I'd say that if people search for "playmate" without intending to find Playboy's web site, the trademark has lost its value.

        What if they're searching for former Playboy Playmates, like Teri Weigel? [lukeford.com]

        BTW, have a look at the link. Playboy has a history of defending their trademarks, no matter who it is that they believe is infringing upon them.

        LK
    • We should all comply with their wishes. Do not search, use the word, talk about, or buy anything that has that trademark. Also Google and other search engines should remove any references to their trademark and supress any search results, news and links containing their trademark.

      Then see if they really want to keep suing over this.
    • . If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?

      The ads are based on the type of search performed and the most frequently followed results. A search for "playmate" is most likely used for looking up adult material.

      The topic associated most with terms like "playmate" or "playboy" is most often adult material. Any search terms related to adult material should result in ads for adult material regardless if they are trad

    • Re:IMHO, but I must admit IAAL (Score:5, Insightful)

      by Sloppy ( 14984 ) * on Friday January 16, 2004 @02:30PM (#8000215) Homepage Journal
      If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?
      Because the search engine is not obligated to show you a clear picture of reality, nor are they obligated to provide a service where the words you enter bring up what you're really looking for.

      When you are looking at magazine covers and you see something titled "Playboy" that isn't the real thing, then the magazine itself has lied to you, misrepresenting itself. That's trademark infringement.

      If you ask someone to get you a Playboy and he comes back with "Doctor Dobbs Swimsuit Issue" then your resulting anger is a matter between you and your him. DDJ didn't infringe a trademark, and more importantly, the guy who brought it to you, didn't infringe either. He just disappointed you (unless you like reading articles about how to use Java to see through women's clothing).

      If you hired someone to bring you a Playboy and he brought you something else, then that might be fraud. But it still wouldn't be trademark infringement.

      I think that using a search engine (especially a free one) is more like a stranger bringing you the wrong thing. The search engine owes its users nothing, so it's not fraud. And they're not saying, "Here's Playboy"; they're saying, "Here's something you might be interested in." That's a subjective judgement call.

      I really hope Playboy loses this one. I don't want to open the door to search engines suddenly being under a bunch of restrictions and the obligation to always provide exactly the right thing. That will kill them. And just to put it in another light: when you search on "Scientology" do you want search engines to only be able to provide links to sites owned by that *cough* church? Aha, got you there.

      • You're missing the point, which is that these are paid banners, not search results. This has absolutely nothing to do with what results a search engine can provide (like your Scientology example); it has to do with what advertizements they can sell based on certain words.

        They aren't just saying, "here's something you might be interested in", but "here's something we've been paid to show you in association with a trademarked keyword".

        • Ok. Suppose you ask me to go to the store and get you a Playboy. What you don't know, is that Doctor Dobb's Journal has bribed me with cold hard cash (well, one dollar bills, actually) that I will spend at a strip club later that night, on a lovely young lady named Cheri.

          I bring a DDJ containing the articles "Which programming language is the most erotic?" and "How to clean mysterious goo off your keyboard." And I didn't bring a Playboy. Have I infringed Playboy's trademark?

          What if I bring you back

    • You ask:

      a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?

      Playboy's tradmark involves a goofey rabbit and typeface. Tell me how my search engine is supposed to know the difference between that and the common word.

      If I own a titty bar, am I violating tradmark if I order my barker to say, "Playboys come this way"? What's the difference between that and adwords? Isn't that the association that drove Heffner to chose the word for his magazine in the first

    • Oddly enough, to me the word "playmate" conjurs the image of something matching this:

      From Webster's Revised Unabridged Dictionary (1913) :

      Playmate \Play"mate`\, n.
      A companion in diversions; a playfellow.

      Obviously, the only effective solution to this problem is to simply outlaw use of the word "playmate" in the context of people who are not wearing clothes.

      This is, after all, what Playboy wants, with the stipulation that Playboy Enterprises is the only entity authorized by the US government to u

    • Re:IMHO, but I must admit IAAL (Score:4, Informative)

      by Boing ( 111813 ) on Friday January 16, 2004 @02:39PM (#8000315)
      Agreed. This reminds me of the FreeCraft cease-and-desist letter from Blizzard scandal [slashdot.org]. A lot of people were saying "Oh, Blizzard's trademark can't apply to everything meeting the pattern 'n-craft'!"

      But what they failed to notice is that Freecraft was using that word pattern, established through the marketing dollars of Blizzard, in the promotion of its own product which was a direct competitor to Blizzard's products.

      The parent post is right, the spirit of trademark law is to prevent piggybacking on established product names by competitors. "Freecraft" was against that spirit. So is hijacking "Playboy" and "Playmate" to benefit Playboy's competitors. Whether these things are against the letter of the law is up to the courts to decide, but we shouldn't hide unethical behavior behind the letter of the law when we lambast Microsoft, RIAA, etc for doing the same thing.

      • "Freecraft" was against that spirit. So is hijacking "Playboy" and "Playmate" to benefit Playboy's competitors.
        "Hijacking" is a word for manipulating emotions, but not very descriptive or accurate.

        If publish a porn magazine called "Plaeboy" or "Playboi" then your comparison with the Warcraft/Freecraft situation is a good one.

        But programming a computer to spit out "wrong" results in response to a user's query, is a totally different situation.

      • The purpose of trademarks is not to protect individuals or companies, but to allow consumers to properly identify the people with whom they do business. It is to facilitate an informed consumer base so that we can make choices about who we do business with. If I have found that Playboy produces a good product, it is reasonable to assume that thier next product will be of similar quality, and if they produce a bad product, I can refuse to do business with them in the future. Trademark is not designed to k
    • how is that not trademark infringement?

      The better question is where did they use playboy's trademark? Someone types "playboy" into a search engine. Yes, I realize that this is playboy's trademark. However, the information (ads, whatever) that I return does NOT have playboy's trademark, or use it in any way.

      Effectively what playboy wants is a stiflimg of speech, in the sense that whenever a visitor to my site inputs "playboy," I can't return...anything related to adult material at all. Effectively, I c

    • No, it's not trademark infringement. It's simply the same competitive advertisement crap that we've been seeing for years. If they USED the word "Playmate" or "Playboy" in a similar market, then that absolutely fits the definition of trademark infringement.

      Playboy is merely fighting to keep the competition down.

      Ultimately I'd hate to see the Playboy trademark striken down on the basis that it is a word in the English language and I'm pretty sure that the word "playboy" predates the trademark "Playboy."
    • So, what should show up when you search for Windows? How about Ford or Apple, Stanley, Nissan, Fuji, Campbells, and the many many more then are trademarked but also have multiple meanings. The fact that a trademark is "famous" by your interpetation should have NO bearing on the law. I view this as a company taking what they think you are searching for and giving you alternatives. What if you walked into Staples and an employee asked what you were searching for. You reply with a Compaq computer.
    • Are all you layers so daft?

      Sure, fine, trademark and all that.

      First off, wheter Hugh likes it or not (I bet he does) the words Playboy and Playmate have become common words to mean the norm in what they represent. Brand names like Asperine and Coke have become just so. Do you see them suing search engines?

      Whatya think search engines will do anyway, when they loose this battle? Maybe they will scrap the word from the dictonary ALLTOGETHER eh? How smart! Pyrric vitory a-la lettre, je pense.

      Hampster! All o
    • Um, is it possible to prove trademark infringement when the trademark is *never displayed* by the allegded infringer? Because I'm not aware that the defendants ever put up any text or image with the word "playboy" or "playmate" in them.

      If someone went to a newsstand and asked for _Playboy_, and the clerk silently handed him _Hustler_ instead, it may be poor customer service and lousy supply-chain relations, but is it trademark infringement?

      If a telephone book publisher puts competing businesses on the sa

  • Wait a minute... (Score:4, Insightful)

    by Stingr ( 701739 ) on Friday January 16, 2004 @02:03PM (#7999908)
    Microsoft can't sue people because windows is too general a term but Playboy can???

    That seems a little hypocritical to me.
    • How often do you open or close a 'window' on your computer? For how long, and how generally, is that term used in conjuction with GUIs?

      In comparison, how often do you use the term 'playboy' or 'playmate' in the context of adult material (pr0n), and NOT mean it in the capitalized (Playboy), trade-marked sense?

      That's the difference between this case and the gripes people have about Windows as a trademark: the usage of the terms in context.
      • If you're a "swinger", you probably use the term playmate in a sexual context quite frequently, but never mean Playmate as in the trademark.

        Google would need to allow "playmate" in adWords not related to porn (or insulated food containers), but within porn related ads, could allow it for people searching for sexual playmates, but not to advertize a general "men's entertainment" site.

        Now... things get more complicated if you want to use "igloo playmate" to search the internet. Playboy might offer you naked

    • Re:Wait a minute... (Score:4, Insightful)

      by CountBrass ( 590228 ) on Friday January 16, 2004 @02:08PM (#7999987)

      You need to check a dictionary. The word you are looking for is "inconsistent".

      Anyway I (and the courts) think the two cases are different. Windows is (and was) a general term within GUI applications long before Bill registered Windows(tm). In contrast, Playboy (and Playmate) were not associated with Porn' before Hugh Hefner did his job.

      The first court patently got it wrong, the second one got it right. The system's working.

  • Playboy (Score:5, Funny)

    by So Called Expert ( 670571 ) on Friday January 16, 2004 @02:04PM (#7999924)
    The word "playboy" (lower case "p") is an english word. [google.com]

    I guess I'd better start watching which words I use for fear of lawsuits. Come on up to my... ahem... apartment-or-suite-on-the-top-floor and we can discuss it.

  • It's pretty shocking what some firms will do. (Score:5, Interesting)

    by Anonymous Coward on Friday January 16, 2004 @02:06PM (#7999947)
    For example, I looked up "Jenners" in Google -- Jenners is a famous Edinburgh, UK department store -- I got a paid advert for Debenhams, a UK-wide department store who attract the same middle-class customers as Jenners.

    Why the hell did Google let Debenhams brazenly advertise under their competitor's name?
    • Because they are paid to.

      Google ads are exactly that...ads. And they are distinctly marked as that. Paid ads do NOT show up in the search results. So when you search for Jenners, you get Jenners department store. On the side, you get their competition because they paid to have themselves displayed as competition. But you don't have them in the search results. Compared to some other search engines, I'd say this is a commendable thing. Google has to make money somehow, and they are doing it in a way
    • Why the hell did Google let Debenhams brazenly advertise under their competitor's name?

      Well, that's what this whole thing is about, isn't it? And what is Google's responsibility here? They shouldn't have to concern themselves with what names might or might not belong to competitors unless the law instructs them to.

      Besides, what guidelines would they follow? If a company's proposed search term was trademarked? Like an earlier post mentioned, would a toy company not be allowed to use the search term "

    • I may have to do something with location (USA instead of UK), but when I ran this search all I got was search results -- no paid advertisments.

  • Google AdWords (Score:5, Informative)

    by Anonymous Crowhead ( 577505 ) on Friday January 16, 2004 @02:07PM (#7999951)
    Google has sent our company a number of emails saying they have disabled keywords we use in our Adwords campaign because they are trademarked. At first, the company with the trademark had to complain, but now it seems like the are actively searching for trademarked keywords and disabling them.
    • Which is a shame, because it should only matter if a) the trademark is the same AND b) you are selling similar products to the trademark holder. Possibly c) you aren't making it obvious you aren't the trademark holder.

      If someone searches for "Diebold", for example, you shouldn't be able to advertise "Click here for voting machines" and not be Diebold yourself. But you should be able to advertise "Diebold and a history of voting fraud" since you aren't selling anything that could be confused for a voting m

      • Which is a shame, because it should only matter if a) the trademark is the same AND b) you are selling similar products to the trademark holder. Possibly c) you aren't making it obvious you aren't the trademark holder.

        Keep in mind that Google, not interested in fighting legal battles, will generally comply with complaints.

        Even if the complaint has no legal merit, they'll do the removal.
    • You can thank $cientology for that. Google won't let ads for search terms for $cientology point to sites like xenu.net [xenu.net], or whyaretheydead.net [whyaretheydead.net], or even the apologeticsindex [apologeticsindex.org] site for it.

  • 9th Circuit famous for bad decisions (Score:5, Informative)

    by elhondo ( 545224 ) on Friday January 16, 2004 @02:07PM (#7999956)
    Check out this article over at Slate: slate.msn.com/id/2089879
  • Wasn't Microsoft developing something called SmartTags to place links in other parties web pages. I would think that if this ruling stands then there is no way MS could hijack the trademarks and copywritten material in a web page to 'use in commerce' without the authors permission.
    • There was a case by Playboy on one of the prior Playmates using the Playmate trademark as a meta tag on her web site. The court ruled that her use of the term was proper because she was a playmate.

      Trademark cannot be used to quiete discussion and commentary (see Mattel v. MCA records). But, this case is possibly on the line and it is good that an appeals court will write a decision that will become usable for other courts.

  • With all due respect to /. bias (Score:5, Insightful)

    by fw3 ( 523647 ) on Friday January 16, 2004 @02:09PM (#7999991) Homepage Journal
    This is (imo) clearly not a cut and dried case of 'removing a word from the English language'. From what I can read Excite and Nestscape were using trademarked keywords to sell banner advertizing directly competitive to Playboy Inc. business interests and doing so using their TMs.

    "Linux" is TM to Linus Torvalds. The poster who thinks these judges decision is a "shame". I wonder if "Linux" were being used to drive search engine clients to Microsoft, Open/Free/NetBSD or whomever, would the politically correct (/.) views be different?

    And who's to say that the Judge who "got it right" the first time had a decent understanding of the issues, or didn't have an axe to grind vs the pornography industry. Possibly she can't see the TM on the pages the way it would appear if it were used in a print-advertisement, and ruled accordingly, while anyone understanding that 'content' now exists in code that's not visible.

    So it's pretty clear to me that yes PEI has a pretty good case here, that Excite, Netscape and their clients were profiting on PEI's TM's and that the use was commercial (i.e. it's much less of a free-speech issue - *yes* the rules for commercial speech are different). The article wasn't all that clear but it seems that all of this came about because Google was pro-actively seeking a judgement on it's own approach to TM's in search/advertising. Again no surprise here that Google would follow the letter of the law while Excite & Netscape would use a sleaze approach to gain revenues.

    • I don't disagree with you but I don't think "Linux" is a good example. "Linux" is trademarked and only used when referring to the Linux Kernel/Operating System (ok, there is some confusion here as well...) - hence it is not a word that is part of the English language. "Playboy", however, also has other meanings besides the trademarked one: "A man who lives a life devoted chiefly to the pursuit of pleasure." [m-w.com]

    • no respect (Score:2, Flamebait)

      by twitter ( 104583 )
      Linux" is TM to Linus Torvalds. The poster who thinks these judges decision is a "shame". I wonder if "Linux" were being used to drive search engine clients to Microsoft, Open/Free/NetBSD or whomever, would the politically correct (/.) views be different?

      No, dumbfuck and I'll go even further. I don't think Linus would have a problem if Microsoft used the keyword "Linux" in thier web pages about TCO. That's all "adwords" are. Words that actually existed before the company are even more repulsive targets

    • ...would be to ask what if Linus sued RedHat, Suse, and IBM for purchasing adwords related to Linux. The purpose of adwords is still to direct people to sites related to what they are searching for. If I search for Linux, the chance that I'm looking for Microsoft is slim. If I search for Playboy, I might actually want to find adult material. As I said in another post, I think a fair remedy might be to require Excite/Netscape to post Playboy(TM) as one of the top few links for free, and still be able to

  • This is just the tip of the iceberg ... (Score:3, Insightful)

    by jc42 ( 318812 ) on Friday January 16, 2004 @02:10PM (#8000003) Homepage Journal
    We might also note that the term "playmate" is being blatantly infringed by makers of toys, playground equipment, and publishers of elementary-education books and materials.

    It's only a matter of time before Playboy goes after them, too. So they should start introducing a new term now. Of course, it might be difficult to find a word (even a made-up word) that isn't already registered as a trademark.

    Of course, we should have known that the world had gone utterly insane when a court accepted Fox's suit against Al Franken over the phrase "fair and balanced". You might argue that Al won this one. But consider the implications of the fact that it even got into the courtroom, and the judge didn't just laugh and fine Fox for a frivolous filing.

    Bankrupting via court costs has indeed become a business plan.

    • Someone's confused. Trademark law includes a concept referred to as "likelihood of confusion", which determines if the use of a given trademark is, in fact, infringing. For example, if I produced a soda and called it Coca-Cola, there is a great chance that someone might confuse my product for a product produced by the Coca-Cola company. However, if I product, say, a stapler with the name Coca-Cola, this may not, in fact, be an infringing use, since there is a low "likelihood of confusion".

      Hence, your ex
      • Incidentally, here's a quote from cyber.law.harvard.edu on the topic:

        "To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of

  • Come on now... (Score:5, Insightful)

    by tbase ( 666607 ) on Friday January 16, 2004 @02:12PM (#8000017)
    Does anyone believe for a second that the people placing ad buys on the terms playboy and playmate are not specifically trying to target people looking for Playboy Playmates? When a trademark is the same as a common word, shouldn't the determination be made based on intent? Maybe some users searching for "playboy" might mean the english term, but that's not who the advertisers are targeting. They are making money off a trademarked name, and as far as I'm concerned, that's wrong.

    • Nope... you got it wrong. These people are not selling a magazine called "Our Playboy" or anything that directly infringes. They are using the term to target people interested in that term.... Remember, these words are not being displayed to humans per se, but to MACHINES that index.

      It's more like when a marketer targets BMW owners in order to sell expensive car products. Perfectly legal !@!!!
      • That's a good point, but the quote from the judge makes it sound like their selling ads for Windex triggered by searches for "Windows". That would be one thing, because clearly there could be more than one intent of that search term. But I maintain that there is very little likelyhood that someone searching for playboy isn't looking for boobies. And I'm not talking about the bird. :-)

        It's the selling of banner ads - profiting from the trademark - that I take issue with. I certainly don't think they shoul

        • I'm sure that confusion is what makes it sooo much fun for the companies and soooo profitable for the lawyers. Yuck.

          By the way...
          666 - The Number of the Beast
          664 - The bloke next door.
    • Maybe - perhaps Playboy should have picked a better, more defensible name instead of a generic English word. Just as with the Lindows/Microsoft case, throwing a lot of money at a bad trademark does not make it a good trademark.
    • When a trademark is the same as a common word, shouldn't the determination be made based on intent?

      Problem with that is when you run into trademarked words that are generic in meaning within a particular industry. Playboy for instance. Webster says the definition of "playboy" is:

      a man who lives a life devoted chiefly to the pursuit of pleasure

      Obviously sex and naked chicks falls right in line with that definition. So the intent of an advertiser becomes much fuzzier. Where do you draw the line

    • Does anyone believe for a second that the people placing ad buys on the terms playboy and playmate are not specifically trying to target people looking for Playboy Playmates?

      I concede that. They are targeting people who are looking for Playboy.

      But they are not misrepresenting their products as being Playboy. They're saying, "If you like Playboy, you'll like our product too."

      And user darn well knows that a search engine's output is not perfect. The user does not have a reasonable expectation that wh

    • I don't see the problem. Makers of generic shampoo can say "Compare to Pert Plus(TM)" without violating trademark. Isn't that making money off of a trademarked name? As long as they're clearly marked as ads, and not mistakable for the real trademark, I just don't see anything wrong here.
      • I do believe they can only get away with that if they have a disclaimer saying "Pert Plus is a registered trademark owned by... "

        Also, it's not about confusion, it's about using a trademark to make money and promote the competition. If there was brand confusion on top of that, they'd have a case for diminishing the value of their brand, which is a breast of a different cup size.
    • The search engine is a tool for me to find related goods. If I do a search for BMW, and Lexus and Infinity have bought adwords for BMW, I might like to also find information about Lexus and Infinity. There is extremely little risk that if I bring back those links, that I will confuse them with BMW and think I am being directed to a BMW web site. It would be different if Excite diliberately excluded BMW from this search, but adwords are simply a way for people to get eyeballs for searches which are relate
  • The initial judge wrote a well thought and poinient opinion, with which I agree. However, I also think that this should go to trial and have all the merits argued in court and a final decision rendered.

    With this floating around without an official judgement, there's nothing stopping any compnay from suing anyone who uses the company's plain-word trademark.

  • /agree (Score:2, Interesting)

    by rogabean ( 741411 )
    I think I'm gonna have to side with Excite and Netscape on this one. These are common English words, even if they are associated with Playboy.

    And as a company they have a right to "pop-up" whatever they want on their site. Do I think its deceptive? Well yes, because it is. But should it be illegal? Sorry I don't think so.

    So yes I think the original judge in this case made a very valid point. The two companies did not use the words with specific references that would lead one to believe they would get Play
  • As a playboy,pimp, and all around playa. The ruling infringes on the rights under the Professionals in Management of Prostitution or PIMP act of 1972.

    Once again the man is trying to keep a brotha down.

  • I think it's obvious (Score:3, Interesting)

    by The I Shing ( 700142 ) * on Friday January 16, 2004 @02:22PM (#8000126) Journal
    When I first read about this case way back when, I thought, "Oh, geez, Playboy's being ridiculous," but then I thought about it some more and I have to agree that the websites in question were violating Playboy's trademark, in my non-lawyer, non-judge, never-went-to-law-school layman's opinion.

    I mean, the words ford and mustang are in the dictionary, too, but wouldn't it violate Ford Motor Company's trademark if those words in a search triggered a banner ad for the Pontiac Grand Am? What about the words chevy and corvette, which are also in the dictionary? How many people think of the words ford, mustang, chevy,and corvette in relation to cars? I bet it's about as many people as would think of the word playboy in relation to a men's magazine.

    I disagree with the post, and I think that the first judge in the case got it wrong, not right. I don't think he or she really understood just how the words were being used. The words playboy and playmate were being used to promote a competing product, which, AFAIK, is a violation of trademark law. But maybe another appeals court will feel differently.
    • I dunno. Say I search for "dell buy", because Dell is the only major OEM I know of and I have friends that use Dell. Surely it would be legitimate for Micron to allow an ad to come up that says "We sell computers at lower-than-Dell prices!"

      More to the point, I think that trademark law shouldn't cover this. The point of a trademark is to ensure that there is no consumer confusion between two brands.

      Finally, the ruling was only "we won't throw your decision out out of hand -- you can try it in court". T

  • This ruling may actually have its merits ... (Score:3, Interesting)

    by dmehus ( 630907 ) on Friday January 16, 2004 @02:22PM (#8000128) Homepage
    This ruling may actually have its merits. It is the first appellate court decision of its kind to rule on the legitimacy of squatters, or less than stellar companies, piggy-backing on trademarked terms as search keywords in sponsored results. It will set precedent, by whatever happens at trial in the district court.

    Further, it's also good because it is yet-another-blow to "seedy" companies like Claria and WhenU, which install so-called "adware" on users' computers and then produce pop-up ads when the user visits a Web site of the competitor of the very sleezy advertiser.

    I'm all for reduced patents and trademark giveaways, but something like this, is a good ruling.

    The district court got it wrong.

    However, Playboy may have to refile its suit since, at the time, Excite was still owned by the now defunct/dissolved Excite@Home. It was since purchased by Focus Interactive and InfoSpace. And since then, Focus Interactive bought out InfoSpace's remaining stake and now wholly owns Excite.

    So their suit may have to target Focus Interactive now. :)

    Cheers,
    Doug

  • Its all about context (Score:2, Informative)

    by nurb432 ( 527695 )
    THe entire concept of trademarks is about the use of the 'word' in a context that takes advantage of the 'image' said company has built. ( or bought )

    Its not about 'taking words out of the language'.

    That just shows the judge isnt comptent to see this case.

  • It's the machines that make the difference here (Score:4, Insightful)

    by Dave21212 ( 256924 ) <dav@spamcop.net> on Friday January 16, 2004 @02:29PM (#8000210) Homepage Journal

    The judges got it wrong. These people are not selling a magazine called "Our Playboy" or anything that directly infringes. They are using the term to target people interested in that term.... Remember, these words are not being displayed to humans per se, but to MACHINES that index web pages.

    It's more like when a marketer uses a computer-generated list to target BMW owners in order to sell them expensive car products.

    Perfectly legal !@!!!
  • If I search for playboy (on google FSOA) and get playboy.com at the top and a whole bunch of other stuff beneath, what is the problem?

    If someone wants 'whatever.com', type it in - otherwise be prepared to get results not directly related. It's how searching works.

    This ruling is assuming that people lack *any* abillity to tell what the real site is. Granted, eBay password grabbers are fake and look real, but where is any site trying to pass itself off as playboy.com or obviously infringing?

    Isn't this wh

  • Where in trademark law is the following exchange prohibited?

    You: Tell me what you know about Playboy.
    Me: You can look Hustler* over there.

    I am not passing myself off as Playboy. Nor is Hustler. So I don't think trademark law is being violated. I also don't think trademark law should force anyone setting themselves up as a provider of information to give owners of trademarks preference. It would suck if I got ford.com as the first link every time I searched for Ford Prefect.

    * Chosen at random. I haven't

  • Bond...James Bond... (Score:2, Interesting)

    by j33px0r ( 722130 )
    Let's see, does this give them the rights to sue the estate of Ian Flemming for infringment upon their image?

  • Some unbelievable cases: why the system fails (Score:4, Insightful)

    by dexterpexter ( 733748 ) on Friday January 16, 2004 @02:51PM (#8000461) Journal
    I believe that our entire patent, copyright, and trademark system has reached the point of ridiculous.

    Consider these examples from Overlawyered.com [overlawyered.com]:

    Can you own common words? "In one of the broadest crackdowns ever issued against a domain name holder, a federal judge has ordered eReferee.com to stop using the word 'referee' in all of its domain names. ... In issuing the court ruling, Wisconsin federal [j]udge C.N. Clevert sided with Referee magazine, a periodical holding the trademark to the word 'referee' for the purposes of publication." David Post, an associate professor of law at Temple, called the ruling "unbelievable", saying that regardless of whether eReferee.com had violated trademark law, as was alleged, by using a logo confusingly similar to its rival's, "You just don't want to let someone own the word 'referee'". (Lisa M. Bowman, "Judge approves domain name penalty on eReferee", CNet, Feb. 16; Gretchen Schuldt, "Referee Enterprises Seeks to Halt Competitor from Using 'Referee' in Web Name", Milwaukee Journal Sentinel/Corporate Intelligence.com, Feb. 23).

    Using his own name a legal risk. The Atlanta Journal-Constitution's Bill Wyman shares his name with a somewhat well-known musician who played bass with the Rolling Stones. He was nonetheless unprepared when he received a letter from the musician's lawyer suggesting that he might be violating the other guy's rights by ... well, by going on using his own name (Bill Wyman, "Will the real Bill Wyman please tune up?", Atlanta Journal-Constitution

    "'Let's Roll' Trademark Battle Is On". Why'd she have to hire that lawyer? No sooner does the widow of Flight 93 hero Todd Beamer set up a foundation to honor his memory than its lawyer announces that he's having it apply for a trademark on the now-famous phrase "Let's Roll", so that anyone who wants to use the words on hats or t-shirts will have to fork over a royalty. Since September 11 numerous other individuals have also sought to copyright the phrase, although it was in common use before that date. (AP/Las Vegas Sun, Feb. 1)

    Someone might get confused. "Just when you think the battle over domain names and trademarks can get no more ridiculous, Pillsbury goes and ups the ante. Universities and companies as large as Sun Microsystems received cease-and-desist letters this week ordering engineers to stop holding what the [giant flour maker] considers illegal 'bake-offs.' But it's not as if the engineers are huddling together around the oven trading stolen recipes -- in techie lingo, a 'bake-off' is a get-together in which software programmers test their creations against network protocols to see if they will work correctly. ... No matter: The geeks are infringing on Pillsbury's 'bake-off trademark,' the letters argued." (Damien Cave, "Pillsbury Doughboy mauls techies", Salon, Jan. 20)(Slashdot thread)


    It is becoming ever more apparent that the entire system needs to be evaluated and rewritten. But, as easy as this is to blame on an outdated system, this case (the parent post) shows that even when a policy is in place, it will be abused and ignored. Perhaps before Trademarking anything, they should read their own Trademark policy [uspto.gov] or, in the case that they don't recognize playmate as an English word, perhaps they should spend a little time reviewing the dictionary [dictionary.com].

    What next, Microsoft finally succeeding in Trademarking "Windows"??? Playboy goes after the children's toy industry because they unashamedly use the term "playmate" in many of its toys?

    It makes no matter that these advertisers were using the popularity of these words to boost their services. Capitalizing on things is not a crime. Especially when the terms they are capitalizing on are not trademarkable. If anyone

  • The problem I see with this is that trademarks give a company the exclusive right to use a name, within a particular industry. When it comes to pr0n, the word "Playboy" belongs to these guys, but in an unrelated domain, they wouldn't. You could start up the Playboy linoleum manufacturing corporation and have no problems as long as you didn't try to use the bunny logo or otherwise create confusion that you were otherwise related to the other company with that name.

    For search engines, this requires a subje

  • Companies do have a limited right to refer to their competitors, especially when it's clear that they're talking about the competitor rather than claiming to be the competitor.

    So, even if this case is lost, I think the worst damage that's going to occur is such ambush keyword buyers are just going to have to ad a fine-print statement saying X is a trademark of X Inc., and Y is a product of Y Inc., which has no relationship to X Inc.

  • Who wants to lay money on it that Hef cut a deal with the judges: "Rule in my favor, and you ALL can party at the mansion!"

  • Can we just impeach these clowns or what. THe 9th circuit is so outrageous and wacko that they need to all be replaced. We need to start with some clean (or how about SANE) judges. While I may frequently disagree with several justices in the supreme court (the only other court with which I am familiar with the individual members), they at least are friggen sane.

    These are the same people who said that VOLUNTARY recitation in schools of the pledge of allegiance violates the 1st amendment for using the word
  • "Some consumers, initially seeking Playboy's sites, may initially believe that unlabeled banner advertisements are links to Playboy's sites...Once they follow the instructions to 'click here,' and they access the site, they may well realize that they are not at a Playboy-sponsored site."

    "Some consumers" - What percentage of people doing search for "playboy" [reference.com] or "playmate" [reference.com] are really looking for www.playboy.com ? [playboy.com]

    When I do searches, sometimes I use some word as a "seed." The intention is not to see sites with that keyword precisely, but to see under what category of Google they fall under, or to see what are the other related sites to my keyword. This then allows me to do a more thorough search of the various possibilities.

    For example, if I had to do research on inexpensive or free email I would do a search for "Yahoo email" because I know Yahoo provides free emails. The Google category that it falls under is Computers/Internet/E-mail/Free/Web-Based/Y/Yahoo/ [google.com] Once I get the directory path, I can trim it to get Computers/Internet/E-mail/Free/ [google.com]

    Now the list that I see Computers/Internet/E-mail/Free/ [google.com] is what I was looking for. I can now select "free email" providers that might provide more space than Yahoo, or better pop3 or imap facilities, or more features like throw-away emails.

    My point is that even though I started off with "Yahoo" in my search, I was not looking for Yahoo per se.

    So, when I type in "playboy" or "playmate" or "Playboy" or "Playmate" in the search box, I think it is presumptuous of Playboy.com and the Hefners to think I was looking for their site.

    And this is why I think they have made a very weak assertion. Look at the wording of their assertion - It is littered with initially ...

    "Some consumers,initially seeking Playboy's sites, may initially believe that ....
    because the attorney's understand how weak their assertion really is.

    I think Playboy.com should be nailed on why they think everyone typing in playboy or playmate is looking for their site. And then, they must be made to prove that they are loosing revenue that might have come to them. Otherwise they are no different from RIAA which makes the assumption that every song that is freely downloaded would have been purchased by the downloader, and hence RIAA adds up the dollar values of the downloaded songs to come up with their "piracy related losses." BS. If I couldn't have downloaded the song for free, I wouldn't have even looked for it - let alone pay for the damn thing. To me, the situation for "playboy" and "playmate" searches is very similar.

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