Don’t Even Think About It: Negative Ad Words and Trademark Injunctions

Deven Desai

Deven Desai is an associate professor of law and ethics at the Scheller College of Business, Georgia Institute of Technology. He was also the first, and to date, only Academic Research Counsel at Google, Inc., and a Visiting Fellow at Princeton University’s Center for Information Technology Policy. He is a graduate of U.C. Berkeley and the Yale Law School. Professor Desai’s scholarship examines how business interests, new technology, and economic theories shape privacy and intellectual property law and where those arguments explain productivity or where they fail to capture society’s interest in the free flow of information and development. His work has appeared in leading law reviews and journals including the Georgetown Law Journal, Minnesota Law Review, Notre Dame Law Review, Wisconsin Law Review, and U.C. Davis Law Review.

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4 Responses

  1. A.J. Sutter says:

    “But the negative adword limitation essentially stops someone from competing online” — isn’t this true only when the potential customer uses “Orion” as part of his or her search string? If I’m searching for “community bank” or “bank”, wouldn’t the defendant’s name be able to appear?

    “Wouldn’t a competitor want to be able to appear when someone searched for the premiere bank of the region? Shouldn’t that be allowed?” — (1) isn’t this a bit of a non sequitur? Why should what a competitor wants determine what is allowed? (2) Even if we accept that in general a competitor’s name should be allowed to appear when someone searches for the premiere bank in the region, when the competitor goes out of its way to be confusing, shouldn’t it be penalized? I think your “big picture” question loses the focus on the facts of this case.

  2. Deven says:

    A.J.

    Technically yes, it stops use of Orion. But the question is why should this solution be the case?

    No it is not a non sequitor. The competitor wants to compete. And yes I suppose the phrase may be better put as we want to let them compete (fairly). In a search engine world, the way to find customers is to be found on the web.

    The facts of the case, as I said, do not really support the defendant’s behavior. That does not mean the general notion of negative ads is coherent.

    If you want to engage with what I am talking about, as a general matter saying one must be sure that one’s ads do not appear when someone searches for a competitor is overbroad. The court is not saying one must shut down the business. So if one wants to compete with in the sector, one needs to reach the customer. Yes there is some goodwill at play. But if you wanted to appear when someone searched for say Coke, how is that a problem? The position asserted in the comment takes more of a dilution view which is why I suggest Tushnet’s article.

  3. A.J. Sutter says:

    Sorry, I must be denser than usual today, but you lost me.

    In general, I don’t have a problem if your cola comes up when someone is searching for mine, as long as your mark isn’t confusing. But I feel quite differently if it’s confusing, and especially if it’s so confusing as to be infringing.

    If the mark is infringing, or awfully confusing anyway (as I think it was), I don’t see why the judge’s solution is so bad. Nor do I see what dilution has to do with it if there is actual infringement or even confusion; dilution relates only to nonconfusing uses (see Tushnet at 509).

    If the accused mark is infringing, I don’t see why the defendant should be allowed to compete *using that mark*. In the present case, the defendant wasn’t prevented from appearing in search engines when *any* competitor was sought, but only when the string ‘ORION’ is input. The defendant has plenty of opportunities to come up in other searches.

    Now, where I do think you have a point is here: under paragraphs a) through c) of the order, Defendant is forbidden to use ‘Orion’ in connection with its services. So let’s suppose it changes its name to ‘Taurus’. In that case, why shouldn’t the name ‘Taurus’ be able to come up if someone searches for ‘Orion’? As I understand paragraph d) of the order, this would also be forbidden. As to that feature, I do think the order may be overly broad.

    If I am missing something, please help me out here.

  4. If competitors are allowed to purchase each other’s trademark keyword(s), it is a disadvantage to advertise and promote your brand as your competitors can merely purchase your keywords to redirect consumers to their website. Why spend money advertising in print, radio, or TV when your competitors can pick off your costumers when they search? Suppose the phone company gave out the name and number of your competitors as well when consumers searched for your business via 411 or directory assistance?

    It would appear that search engines can reap the fruits of of these trademarks rather than the trademark owners. Businesses must redirect dollars to buy their own trademarked keywords to compete with competitors who are also bidding on the company’s keywords. Hence, the search engines profit from this at the expense of the trademark owners as well as conventional advertising mediums as more advertising dollars flow from conventional advertising to search engines.

    The courts need to give this a closer look so we can achieve more clarity with this issue.

    David Gorman