Trademark Protection, Copyright and Search Engines

What do you do when someone is playing fast and loose with your intellectual property online? A panel of legal experts offer suggestions for a range of potential scenarios.

A special report from the Search Engine Strategies conference, March 27-April 2, 2006, New York, NY.

By now, most are familiar with the infamous Geico case, France's penchant for protecting brand names and the pending clickfraud case. Therefore, it was a pleasure, to hear views on meatier topics covered at the 2006 SES New York panel "Trademark Protection and Copyright." Led by Jeffrey Rohrs, President of Optiem, LLC (and a J.D. himself), the panel included David M. Adler, Esq of D.M.A. Esq. and Associates, Peter D. Raymond, Partner with Reed Smith and Deborah Wilcox, Partner with Barker and Hostetler.

The session began with agreement that technology and what humans are capable of doing with technology runs much faster than the law. It could be said that we are currently retrofitting offline copyright law to online media, and only when a case reaches critical mass will there be an opportunity to evolve the law.

Dealing with Trademark Infringement

The first practical application focused on the use of trademarks in pay-per-click ads, as evidenced by Mazda's keyword purchase of "Pontiac" shortly after Pontiac launched a television commercial urging viewers to Google "Pontiac." So while Yahoo has recently ceased selling competitive trademarks, Raymond stated that comparative advertising is legal as long as it is truthful. Mazda's copy and landing page, for example, in no way misled consumers.

When it comes to copying online content, each use needs to be examined on a case-by-case basis. One must prove that harmful intent or that the second party is profiting off of said content. On this note, the panel acknowledged that many sites that scrape content from other sites are running Google Adsense, and that the owner is indeed profiting off of said content. The panel agreed that in most cases, people are reasonable and will remove content if the originator simply asks.

When prompted about altered or excerpted content, copyright laws exclude facts, so it is legal to post facts taken from another written account. Raymond brought up the fact that if a publisher did not want his content available in a search engine's index, he should simply use a robot.txt file to instruct search engine crawlers to avoid the content.

Another unique legal point was that publishers cannot be held liable for damages. Both Wilcox and Adler stressed that to take legal action against an infringer, it is critical to have federal copyright registration, and that a serialized copyright certification is only about $30.

Modifying Press Releases: Going Too Far?

Most folks are aware that optimized press releases provide additional shelf life and reach. However, what are the legalities of modifying press releases? Having stated that it is legal to republish facts, and asserting that it is the press' responsibility to turn releases into stories, where does one draw the line?

The case in point was the modification of a hyperlink in a press release being modified to the competitor's site, effectively altering the meaning and intent behind the release. Wilcox and Raymond disagreed on whether such alteration would be actionable in court, but ultimately agreed that actual damages would be hard to estimate. A few audience members, on the other hand, vehemently disagreed.

The final, unanswered question is whether links will be considered copyrightable in the future. On a more depressing note, it was suggested that our current judges and law clerks are not sophisticated enough to understand the granularity of such a case.

Along the lines of copying content was the topic of outright pirating of an entire site. Rohrs suggested that website owners monitor new content on the web by setting a Google or Yahoo alert for particular copy. To gather evidence, Adler advised firms to print off copies of the offending site, but reminded that hosts cannot be held liable. Once again, most people are reasonable and will take down pirated content if prompted by a cease and desist.

Helpful Resources

Mr. Rohrs was kind enough to conclude with a list of helpful resources:

Sara Holoubek is a free agent consultant for the interactive advertising sector and its investors. She can be reached at saraholoubek@gmail.com.

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