Another Keyword Advertising Lawsuit Fails–Allied Interstate v. Kimmel & Silverman

By Eric Goldman

Allied Interstate LLC v. Kimmel & Silverman P.C., 2013 WL 4245987 (SDNY August 12, 2013)

This opinion isn’t earth-shattering but it provides a useful illustration of what I’m seeing. The plaintiff is a debt collection service. The defendant is a law firm that brings claims against debt collectors for alleged violations of the Fair Debt Collection Practices Act. The plaintiff alleges that the law firm uses its trademarks In the website’s copy, in metatags and in hidden text; plus the plaintiff alleges that the law firm bought keyword as a trigger for Google AdWords advertising using the following ad copy:

a link titled “Stop Collection Calls—Is Allied Interstate Calling You?” Below the link are two lines of text, the first listing Defendants’ URL, www.creditlaw.com, and the second bearing the slogan “Stop the calls for free!”

Like the General Steel case, the advertiser referenced the trademark in the ad copy in addition to using it as the trigger. Trademark owners usually assume they can win the case when the advertiser references the trademark in the ad copy. Not so.

The court makes short work of the lawsuit, granting the defendant a judgment on the pleadings (with leave to amend). The plaintiff’s dilution claims are tossed because the defendant makes a referential use of the trademark, i.e., the defendant is using the trademark to reference the plaintiff, not to identify its own goods. Curiously, the court doesn’t use the phrase “nominative use,” but it does reference the federal dilution statute’s exclusion for “fair use.” I have long believed that a referential use principle can help resolve keyword advertising cases cases, because usually the advertiser is just trying to reference the trademark owner, not pretend to be the trademark owner.

The trademark infringement claim fails because the ad copy so clearly indicates that the advertiser is an adverse party to the plaintiff:

the Google search result labels the sponsored advertising as “Ads related to allied interstate”—a description that in no way suggests that it is advertising for or by Plaintiff. The content of Defendants’ advertising—exhortations to “Stop Collection Calls—is Allied Interstate Calling You?”, “Stop Debt Collectors—Allied Interstate”, and the like—facially disassociates Defendants from Plaintiff’s business. Indeed, Defendants are plainly soliciting complaints about Plaintiff’s services and inviting searchers and visitors to Defendants’ website to consider suing the Plaintiff. Nothing alleged in or attached to the Complaint provides any plausible factual support for the confusion element of Plaintiff’s unfair competition and false designation of origin claims.

shutterstock_36895327.jpgAs I previously mentioned, I’m not aware of a plaintiff win a final ruling in a keyword advertising case since 2011, so the defense win here is hardly unsurprising. Perhaps slightly more surprising is that plaintiffs keep bringing these unsuccessful cases,

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My recent Tertium Quid blog posts on keyword advertising lawsuits:

* More Evidence That Competitive Keyword Advertising Benefits Trademark Owners

* Suing Over Keyword Advertising Is A Bad Business Decision For Trademark Owners

* Florida Proposes to Ban Competitive Keyword Advertising by Lawyers

* More Confirmation That Google Has Won the AdWords Trademark Battles Worldwide

* Google’s Search Suggestions Don’t Violate Wisconsin Publicity Rights Law

* Amazon’s Merchandising of Its Search Results Doesn’t Violate Trademark Law

* Buying Keyword Ads on People’s Names Doesn’t Violate Their Publicity Rights

* With Its Australian Court Victory, Google Moves Closer to Legitimizing Keyword Advertising Globally

* Yet Another Ruling That Competitive Keyword Ad Lawsuits Are Stupid–Louisiana Pacific v. James Hardie

* Another Google AdWords Advertiser Defeats Trademark Infringement Lawsuit

* With Rosetta Stone Settlement, Google Gets Closer to Legitimizing Billions of AdWords Revenue

* Google Defeats Trademark Challenge to Its AdWords Service

* Newly Released Consumer Survey Indicates that Legal Concerns About Competitive Keyword Advertising Are Overblown

[Photo credit: A person holding a final notice paper // ShutterStock]

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