Web Marketing Legal
Issues
Eric
Goldman
Marquette
University Law School
Legal Basics
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Trademarks
are words and symbols that identify and distinguish the source and origin of
goods and services in the market
n
Infringement—likelihood of consumer confusion
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Factors: mark similarity; product similarity; area and
manner of mark’s use; consumer care; mark strength; actual confusion; and
intent to palm-off
n
Initial interest confusion—“use of another’s
trademark in a manner reasonably calculated to capture initial consumer
attention, even though no actual sale is finally completed as a result of the
confusion” (Brookfield)
n
Dilution—lessening of a famous mark’s capacity
to identify/distinguish goods/services (e.g., tarnishment and blurring)
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Anticybersquatting Consumer Protection (ACPA)
n
registering a domain name with bad faith intent
to profit and then registering, trafficking or using confusingly similar or, in
case of famous TM, dilutive domain name
n
registering a domain name using a living
person’s name with intent to profit by selling it
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Dispute Resolution Procedures (UDRP, STOP, etc.)
n
domain name is confusingly similar to third
party TM, registrant has no legitimate interests in the name, and name is being
used in bad faith
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False Advertising/Unfair Trade Practices
n
Also specific product laws (tobacco, jewelry,
diet supplements)
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Publicity Rights
n
commercial exploitation of personality
Basics Applied: Domain Names
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Registering domain names of competitor
n
ACPA and UDRP; can also be infringement and
dilution
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Registering domain names using famous marks
n
ACPA, UDRP and dilution; can also be
infringement
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Registering “sucks” domain names
n
some courts find ACPA, UDRP, infringement &
dilution
n
others find no violation or TM fair use
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Typosquatting
n
ACPA and UDRP; can also be infringement and
dilution
Basics Applied: Other Practices
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Including third party TMs in metatags
n
some courts say per se initial interest
confusion (Brookfield)
n
some courts reach opposite conclusion (Welles)
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disclaimers may not help
n
how accurately do the metatags characterize your
website?
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Buying third party TMs as keywords
n
law unsettled; might be initial interest
confusion
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Link manipulation to improve page rank
n
might be illegal, and can get you thrown out or
down-ranked
n
SearchKing lawsuit
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Mousetrapping
n
can be unfair trade practices (Zuccarini)
Search Engine Liability
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Selling third party keywords
n
dictionary words not TM infringement (Playboy v.
Netscape)
n
law is far from settled (Estee Lauder, Body
Solutions, Gator)
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Paid inclusion/paid placement
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FTC has threatened unfair trade practices claim
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Is it ethical to use consumer expectations about
editorial content to improve ad response?
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Indexing and displaying content
n
in-line linking infringes but thumbnails are
fair use (Kelly)
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Linking to infringing content
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online safe harbor (17 USC 512)
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compare Napster and eBay cases