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Search and the Law: Attorney Clarke Douglas Walton

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As part of a series looking at Internet and intellectual property law, we spoke with Clarke Douglas Walton, an attorney and former VP of an SEM firm. Walton discusses trademark usage in PPC advertising, the Digital Millennium Copyright Act, and future legal issues on the horizon for search marketers.

Clarke Douglas WaltonWalton is a lawyer focused on Internet and intellectual property law, including copyright and trademark issues. Before founding Walton Law Firm, he was a managing executive of the SEO company Submit Express. Today, Walton operates several successful Web sites of his own including My Trademark Registration, an online service dedicated to helping business owners with the federal trademark registration process.

Walton earned his law degree, with honors, from the William S. Boyd School of Law at University of Nevada-Las Vegas. He earned his B.S. degree from Pepperdine University. He is a member of the Nevada Bar, International Trademark Association, and American Intellectual Property Law Association.

A special report on search legal issues from Search Engine Strategies in San Jose, CA August 20 – 23.

I caught up with him after the conference to discuss copyright, trademark, and other intellectual property (IP) issues that affect search marketers today, along with predictions on future legal issues.

Before you were an attorney, you used to work for a search marketing firm. What brought you over to the legal profession?

I actually worked at Submit Express before I was a lawyer, in the late 1990s and 2000. I was their VP of marketing. Back then it was a really small company with less than 10 employees, before it had really grown. I was already planning to go to law school back then. Being that I was a huge Internet nerd, in law school I tailored my studies towards the Internet – lots of IP property matters – copyrights, trademarks, domain name law, etc.

What do you feel have been the biggest areas of growth for the search industry related to IP issues? On the other side, where do you feel it's been stagnant?

The big issue in the late '90s with search was meta tags – whether using another's trademark in your meta tags constituted trademark infringement. We had a bunch of cases of opposing positions, and determining what the facts were. I think we've made a lot of strides in that area, as we really don't see many meta tag cases these days. That's less because of certainty in the law (which is still all over the map on the issue), and more because meta tags have less influence with organic search engine rankings.

We've seen major strides made from the major search engines on establishing internal policies for handling IP issues. Not just on PPC click fraud, but also on copyright infringement. All of the major search engines now have their own internal PPC trademark policy. Those policies vary from engine to engine, but at least today they exist. I remember back in 2000 when I had clients who had trademark issues with the search engines on PPC listings such as GoTo (later Overture and now Yahoo), filing a trademark claim was problematic. Back then, either search engines didn't have a policy, or it was very vague.

What do you think is the biggest legal issue right now that search marketers should pay attention to?

There's really one over-arching item – trademark usage in PPC advertising. It revolves around 2 issues: 1) Whether the use of a keyword to trigger a PPC advertisement may be trademark infringement in certain circumstances; and 2) whether that particular company's trademark is used in the advertising text – when is it infringement and when is it fair use? We don't have definitive answers to those questions yet, but those are questions definitely at the forefront of many search marketers thinking about legal issues online.

There were several statements by the representatives from MSN and Ask.com on the panel you were on (at SES San Jose), stating their position to be that they don't sell keywords, they sell ad space. What is your take on that?

In the trademark PPC context, dealing solely with the issue of keyword bidding, I tend to side with the search engines. I don't believe that bidding on a trademark as a keyword constitutes a real use in commerce, and thus wouldn't qualify as trademark infringement. The way that trademark law in the U.S. has been drafted and changed over time, I don't believe that selling one of these keywords to trigger advertising rises to the level of a "use in commerce."

It seems the rules with the search engines on both of these issues gets a bit more complex when you factor in geographic boundaries. Such as, between what's acceptable for PPC advertising in North America versus other regions.

Yes, in the U.S. and Canada, they allow companies to bid on trademarks as keywords to trigger advertisements. But, they don't allow the trademarks to be incorporated in the advertising text. Outside of North America, some of the search engines, such as Google, are more restrictive; they don't even allow for keyword bidding of trademarks.

It seems that there's an advantage that IP enforcement by the search engines has over legal jurisdiction: You can file a takedown request anywhere, and not have to go through the laws of a particular region.

That's particularly useful when dealing with overseas infringers. Let's say you have a copyright infringement issue, where the Web site or other infringing material is being hosted overseas. My favorite place to send a [Digital Millennium Copyright Act” takedown notice is to the major search engines. Usually the problem is seriously diminished simply by cutting off traffic to the infringing Web site. You can "starve the beast" so to speak.

The increase of user-generated content online has resulted in a heavy rise of copyright and trademark infringement, most notably with the video search engine YouTube, owned by Google. Google had eschewed taking any preventative measures (before the content is published on their site) until they were sued by a very large company, Viacom. Does it take big companies with deep pockets to change the policy of the search engines, for better or worse?

I think it does take a company the size of a Viacom, for the search engines to change their policy and activity. Only large companies the size of a Viacom have the resources to really pick a good fight with Google.

As for how it's going to play out... I've read the complaints in this case and others like it, and I believe both sides make strong arguments. Google is hanging its hat on the defense under the Digital Millennium Copyright Act, that it is protected under the Safe Harbor Provisions Law. On the other hand, Viacom argues that Google is knowingly building its business (with YouTube) on the back of copyright owners, using their copyrighted content unlawfully. I think that the case will probably settle, and that this litigation provides some negotiating leverage.

What are your predictions for legal issues that will be facing the search industry and search marketers?

I think in a couple years from now, you're going to have an issue with the ownership of a searcher's personal profile; their search data. More of this information is being accumulated by the search engines, and is really going to be valuable to marketers of various products and services looking to access and purchase this data. For particular users, their search profile data provides an almost endless amount of information about that user's intents and desires.

Search is the perfect platform to exploit this type of data mining. The question arises, are search engines going to be able to sell this search data to marketers themselves? Or, should individuals be able to own and sell their own search profiles? I think that's a new issue we will see.

Grant Crowell is the CEO and creative director for Grantastic Designs, and a contributor to Search Engine Watch's Vertical Search column, focusing on video search topics. Grant also serves as a video production and optimization consultant, and produces documentary video content for Walking Eagle Productions.

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