ABA Committee’s Anti-Consumer Take on Keyword Advertising

By Dave Wieneke | in Best of / fresh takes, Search engines, Trademark law | 25 Feb 2008 | No Comments

Corynne McSherry and Eric Goldman have posted a joint warning about proposals being considered by the the Trademark Litigation subcommittee of the American Bar Association’s IP Section.  Several expert sources (quoted below) have already written about this, and I add some thoughts to theirs after that.

Paul Alan Levy from Public Citizen writes:

For several years, the Special Committee on Online Trademark Issues of the ABA’s Intellectual Property Section has been studying this issue (last year’s report is here), but apparently that Committee’s non-partisan approach does not appeal to trademark owner interests who are desperate to revive this issue. So, the Trademark Litigation Committee formed its own subcommittee on the subject this year and is considering four resolutions that would express disapproval of the various grounds that have persuaded courts to dismiss keyword advertising claims. 

Trademark maven Ron Coleman explains the matter:

Owners of “high equity” intellectual property including trademarks want nothing more or less than ownership of trademarks as rights in gross, European-style, meaning in part that nominative fair use or any fair use at all would be written out of American trademark law — along with some pretty important parts of the First Amendment. And that, of course, is the explanation.

Most days I write about companies such as American Airlines, Tiffany, Target and Yahoo who are involved in legal actions. However, I can’t use the companies’ names in keyword ads to let you know about them. News sources, bloggers, and non-profits currently are prohibited in practice from using registered names in keyword advertising.

This prohibition is caused not by a law, but rather by its absence; no law exists to establish enforceable fair use of trademarks in the public domain. Therefore, search engines allow trademark holders to disallow others from using their marks to trigger advertising. 

There is a point at which the exclusive use of trademarks in speech ceases to promote communication, and starts to censor it. 

Rather than supporting rights in gross to corporate trademark holders, the ABA should focus on the broader issue of safeguarding efficient and unfettered access to information for consumers and markets.  

The First Amendment confers affirmative rights to speakers, and trademark law provides rights to mark holders. But there is a broad public good in allowing market participants unfettered access to information, and to use trademarks fairly in their discussions.

The ABA would best serve the public and the profession by promoting a justice which recognizes unfettered access to information as a prerequisite for both a healthy marketplace and a healthy democracy.