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Search Engines and Legal Issues

thurow-shari
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A special report from the Search Engine Strategies 2002 Conference, August 12-14, San Jose CA.

What do Playboy and pagejacking, tarot readings and taxes all have in common? They were the subjects of ground-breaking court cases that set legal precedents for acceptable practices on the web.

Not long after search engines emerged, so did legal disputes involving them. Cases have been fought over trademarked terms being linked to ads or inserted into meta tags. Actions have been taken against "pagejackers" who use other people's contents to generate search engine traffic.

Participants on the "Search Engines and Legal Issues" panel discussed four prominent cases involving search engines, commenting on the outcomes and the ramifications of each case.

TOPIC: Meta tags or Meta Trouble?
CASE: Terry Welles vs. Playboy
ISSUE: Using other people's trademarks as meta tags

Playboy was highly litigious in the late 90s, suing organizations and individuals that used their trademark in a way that they did not agree with. A trademark involves protecting a name, a word, or a symbol describing goods or services.

Terry Welles was Playmate of the Year for Playboy in 1981. She operated a Web site in the 90s called terrywelles.com. In her site's meta tags were some trademarked terms that belonged to Playboy: "Playboy, playmate, playmate of the year." In 1997-1998, Playboy sent her a cease-and-desist letter, and when she refused to remove those terms, Playboy sued.

SearchEngineWatch.com's Danny Sullivan served as an expert witness in this case. "Playboy went through the trouble of a lawsuit because they had two victories beforehand," stated Sullivan. "But those victories had nothing to do with Playboy. People were trying to be deceptive with sites that had nothing to do with Playboy."

Playboy had a profound ignorance of how search engines operated, said Sullivan. "They used Yahoo as an example of how well her pages were ranking, and Yahoo doesn't not crawl pages or use meta tags in their criteria. Terry couldn't tell Yahoo to change it. That was an issue for Playboy to deal with -- Yahoo's editors. The evidence was shaky, at best," he said.

Sullivan stated that the issue wasn't whether she used meta tags or not, but whether the information on Welles's site was relevant. "Using those words on the page itself is more important than meta tags," he said. "Meta-tag content isn't even as important as text actually used on the page. The real question was, was it appropriate for Terry to use those meta tags to describe herself? If so, then she could use it anywhere on the page, too. It was appropriate to use on the site itself."

To be safe, Deborah A. Wilcox, Partner at Baker & Hostetler LLP, emphasized to first determine if you have permission to use another company's trademark, and use the trademark in a fair way.

Beverly J. Thomas, Senior Attorney for the FTC (who was there on her own behalf, not as a representative of the FTC), mentioned that while not a trademark issue, the FTC will hold companies responsible for claims made in their meta tags, even if those claims are not actually on the visible content of the page. For example, a company making the claim that it has found the "cure for cancer" in its meta tags will be held liable for that claim even though the "cure for cancer" does not appear in the actual page content.

The judgment was in favor of Terry Welles. The judge felt Welles had a legitimate reason to use the trademarked terms in order to describe herself and the content on her site. The judge also felt that Welles was not using the terms in an attempt to mislead people into believing they were on the Playboy.com site.

For more information on this case and related issues, visit:

Meta Tag Lawsuits
http://www.searchenginewatch.com/resources/metasuits.html

Legal Rulings On Image Search & Meta Tags
http://www.searchenginewatch.com/sereport/02/02-legal.html

Playboy vs. Terri Welles Appeals Court Opinion
http://caselaw.lp.findlaw.com/data2/circs/9th/0055009p.pdf

TOPIC: Bidding for Trademarks
CASE: Mark Nutritionals vs. Overture
ISSUE: Trademarks

Mark Nutritionals filed suit against Overture (then "GoTo") and other pay-per-click (PPC) search engines for selling their trademark, "Body Solutions," to their competitors. Body Solutions is also the name of a weight-loss program made by Mark Nutritionals.

Body Solutions' resellers were not showing up at the top of the results for the PPC search engines, with their competitors ranking higher. Only under non-paid listings were they showing up, which were lower in both PPC and regular editorial search areas. Mark Nutritionals ' claim was that this amounted to trademark infringement, as well as a variety of unfair competition claims.

Deborah Wilcox stated, "There's a spectrum of distinctiveness among trademarks." She outlined them as follows:

Trademark types (from least to most protection):

1. Generic
A trademark for a generic name, such as "apple," is not protected. It can never be trademarked for the actual item that it is defining. For example, Apple is trademarked for computers, but not for apples, the fruit. Companies are free to use "apple" in its generic sense.

2. Descriptive
A descriptive mark gives people an idea of what the mark is used for. For example, "American Apple Farm" is more distinctive than "apple farm." This type of mark receives less protection under federal and state laws.

3. Suggestive
This type of mark requires some kind of cleverness, thought, and imagination to come up with a description of a product, such as Tidy Bowl, the toilet cleanser.

4. Coined marks
This mark is afforded strongest protection. Coined marks are fanciful, made-up, or arbitrary words. such as Yahoo and AltaVista. are ambiguous trademarks.

"Whenever you use somebody's strong trademark it will raise eyebrows, especially from a strong brand name with a large vested interest in their brand," she said. "There's a lot of money behind strong marks, and it could be really deceptive to use it in an improper way."

Even the term "body solutions" can have a lot of (other) generic meanings, especially when searching the Web. "There's a real fear of how are the search engines to do an inventory based on trademarks, she said. "Every word can be a trademark. How are they supposed to realistically do that?"

Jeffrey Rohrs, Digital Marketing Strategist, Optiem LLC, stated,"This issue is one to watch and see how it turns out. The courts need a lot of help on this issue because they are not up to date on the latest and greatest information on the search engines. Make sure your use has some propriety to it. If you are a licensee or a comparative advertiser then you might have very good reason to be bidding on that. Overture and other PPCs are cutting down on irrelevant usage, but you could still get in on the pay-through."

Do not assume that current practices make things legal, advised Rohrs. "The FTC is catching up and taking a more prominent role. Make sure that you have a good rationale on your side," he said.

Danny Sullivan noted that search engines might need to come up with technological solutions that address some of the issues that are currently being raised in the court. "But this could be onerous when dealing with trademark issues," he said. "No one knows a searcher's intent. And people search for words, not trademarks."

Speakers further advised that if you are using trademarked words on your site, be sure your use is genuine and appropriate, and that you have a good rationale for using the words.

The ruling for this case is still pending. For more information on this case and related issues, visit:

Lawsuit Over Paid Placements To Define Search Engines
http://www.searchenginewatch.com/sereport/02/02-bodysolutions.html

Weight Loss Company Sues Search Engines
http://www.internetnews.com/IAR/article/0,,12_966901,00.html

How the Law Protects Trademarks
http://biz.findlaw.com/ip/nolo/faq/CEDEFCC8-4998-4C6C-8C1A189769480100.html

Continued:

Search Engines and Legal Issues, Part 2
Is copying a web page 'fair use'? How many of your competitors' keywords or trademarks can you legally use on a web page? Recent court cases provided answers.

Shari Thurow is the Marketing Director and Webmaster for Grantastic Designs, Inc. She has been designing and promoting web sites since 1995 for businesses in a wide range of fields. Grant Crowell is the CEO of Grantastic Designs, Inc, founded in 1993 in Honolulu. He has 15 combined years of experience in the fields print and online design, newspaper journalism, public relations, and publications.

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