Posted February 28, 2007 3:38 pm by with 4 comments

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The first round in the legal battles over using trademarked terms in AdWords ads went to Google. The decision in Rescuecom v. Google was, bottom line, that Google could accept bids on trademarked terms.

Naturally, Rescuecom, the plaintiff, is appealing the decision. The case is waiting its turn in the US 2nd Circuit Court of Appeals. Now the Electronic Freedom Foundation has filed an amicus brief. In the brief, they claim that the use of trademarks in ads is in the public interest, citing the First Amendment.

EFF Staff Attorney Jason Schultz is quoted in the press release:

On the Internet, trademarks aren’t just identifiers. They are essential navigation tools and vehicles of expression. Quashing this speech goes against both the law and the public interest.

What are the odds on the appeal? The 2nd Circuit has heard cases like this before. In 1989, they ruled that “the rights of the trademark owner must be balanced against the interests of free speech whether the unauthorized use is for expressive purposes” which includes criticism (250 Middleton, The Law of Public Communication, 5th ed).

Let us not forget, however, that the advertising (which is, at its heart, what AdWords is, no matter what the message you’re advertising conveys), is a “second class citizen” when it come to First Amendment protections. Political speech is most protected of all types of speech.

On the other hand, criticizing a trademarked product does seem almost political in nature. Opinion, if I’m remembering correctly, is at least slightly more ‘protected’ than pure advertising.

Is criticizing a product and advertising that criticism more political/opinion or advertising speech?

(No, I’m not a lawyer, but I do watch a lot of Law & Order.)

  • I have run into this with a client’s Adwords account. We have repeatedly tried to bid on a trademarked term for a product we sell, but keep getting turned down. It makes it difficult to advertise and sell the product online, so it would make sense for both us and the trademark holder to allow us to bid on that name. I wouldn’t even have a problem with Google allowing the trademark owners ad to show up in the top ad position for the search (even if Google gave them clicks for free), just to be able to bid on the terms.

  • I agree with John to an extend. However, I do believe there should be a Google-managed verification tool (much like the site verification tool used whilst setting up a keyword campaign in Adwords) that either denounces an advertiser using a trademarked term if it has no relevance to the landing page, or approves the keyword bid because it does.

    This would prevent Pepsi for bidding on “Always Coca-Cola” if their landing page was only about Pepsi products.

    However, it would enable and solidify our ability as opinion writers to criticize a product or service…and advertising this based on that product’s trademark.

  • I understand why John wants to advertise for this product as well. However, I have seen how greedy the companies with the trademarked term can be. If they can sell the product at the same price as any one else, have a higher margin, and also not have to deal with that vendor, why WOULD they want you to bid on their trademarked term? It essentially gives them a small monopoloy for that product on the Internet.

    This can negatively affect branding though. If consumers see more people selling the product and promoting it in different ways, this can help to increase the brand awareness and encourage more people to buy. The other side of this though is that companies can lose control of their brand because others may be marketing the product in a different way.

    I do believe though, that advertising will not be granted the same protections under the First Ammendment. I believe that this case may not open up the bidding on these trademarks and will likely cause a nice stir in online advertising.

    I will wait intently to see how this one turns out.

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