Sunday, June 12, 2011

State privacy law doesn't prohibit competitor from purchasing name of "renowned" lawyer as key word search term

We reported back in February on a California district court that held a law firm was liable under the Lanham Act for purchasing a competitor's trademarked name for use as a search term under Google's AdWords program in order to drive traffic to its site (it's a common practice among retailers although courts have split regarding whether buying trademarked names in connection with internet search engines constitutes "use in commerce" as required by the Lanham Act).

What happens, though, when a competitor purchases the non-trademarked (and perhaps non-trademarkable) name of a well-known lawyer as a search term in order to drive traffic to its website? According to this story from the Milwaukee Journal Sentinel, the plaintiff in the case, whose name was purchased by the defendant-competitor, can't stop the defendant under Wisconsin privacy law. To establish a prima facie case, a plaintiff must not only show that his privacy rights have been violated, but that such a violation is "unreasonable."  The plaintiff in this case could show the former, but not the latter:

In a long-awaited decision over Internet lawyer searches, a Milwaukee County judge on Wednesday in essence told veteran plaintiff lawyer Robert Habush, "Welcome to the 21st century."

Circuit Judge Charles F. Kahn Jr. agreed with Habush that a competing law firm had invaded Habush's privacy by purchasing his name to drive Internet searches to their own website.

But Kahn also found that, in the context of modern, healthy business competition, it was akin to lawyers buying display ads that appear next to line listings of other lawyer in the Yellow Pages. That's not an unreasonable use of the name for commerce, Kahn found, and dismissed Habush's lawsuit.

Habush, renowned as a personal injury lawyer, came up with a novel legal theory when he thought he had become a victim. In a 2009 lawsuit that gained national attention within the profession, he sued competing firm Cannon & Dunphy, contending that their purchase of his name and that of his partner, Daniel Rottier, as keywords on Internet search engines violated their right to privacy under Wisconsin law

. . . .

Habush sued after discovering the Cannon firm had purchased the words habush and rottier as Google, Yahoo and Bing search terms that return sponsored links to the Cannon law firm website, in addition to the "organic" search results for Habush, Habush & Rottier.
. . . .

To prevail under the privacy law, Habush had to show not only that Cannon & Dunphy had used his name without his consent for commercial purposes, but also that it was unreasonable.

For that analysis, Kahn characterized buying Internet search words as the digital equivalent of proximity advertising that business competitors have done for years, like one auto dealer locating next to another, restaurants putting up billboards near each other or lawyers in the yellow pages.

Hat tip to the ABA Journal.


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