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• Case Summary: A Wisconsin state court grants summary judgment in favor of a defendant law firm that purchased the names of competing litigators as keywords to trigger online advertising.
• Key Takeaway: The unauthorized use of a person's name for commercial uses might be reasonable given the changing nature of technology, culture, and society and the realities of competition on the internet.
A law firm's use of the names of two competing trial attorneys as keywords in Google, Yahoo, and Bing search engines constituted an invasion of privacy, but the use was not unreasonable, and therefore the plaintiffs were not entitled to injunctive relief under Wisconsin's right of publicity statute, the Circuit Court for Milwaukee County held June 8 (Habush v. Cannon, Wis. Cir. Ct. (Milwaukee Co.), No. 09-18149, 6/8/11).
Granting summary judgment in the defendants' favor, the court reviewed the history of commercial practices and addressed a series of factors relevant to a finding of reasonableness.
The plaintiffs, Robert L. Habush and Daniel A. Rottier, and the individual defendants, William M. Cannon and Patrick O. Dunphy, are all well-respected trial attorneys in Wisconsin. The Cannon & Dunphy firm contracted with Google and other search engines to have their law firm appear as the first sponsored link whenever a user searched either the word “Habush” or the word “Rottier.”
Habush Habush & Rottier filed a lawsuit, alleging that the defendants’ use of their names violated their right of publicity and should be enjoined under Wisconsin law.
Wis. Stat. §995.50(2)(b) provides that it is an invasion of privacy, and thus a violation of an individual's right of publicity, to:
use, for advertising purposes or for the purpose of trade, … the name … of any living person without having first obtained the written consent of the person … .
At Section 995.50(1) the statute entitles an individual to equitable relief to prevent an invasion of privacy if such privacy is “unreasonably invaded.”
Judge Charles F. Kahn Jr. found that the defendants had used the names of the plaintiffs for the purpose of trade without first gaining written consent. Accordingly, the court determined that the plaintiffs had established that their privacy had been invaded in violation of Section 995.50(2)(b). However, the court then considered whether the invasion of privacy was unreasonable.
Having determined that the defendants had indeed used the plaintiffs' names “for advertising and trade purposes without the plaintiffs' consent,” the court said that there was an invasion of privacy under the state statute. However, if there could be a showing that the invasion of privacy was not reasonable, then there would be no liability.
In addressing the question of reasonability, the court engaged in a review of the history of methods of competition between commercial entities.
The court noted that in the United States, businesses have frequently opened shops in close proximity to their competitors. The defendants argued that their use of the plaintiffs’ names as keywords was simply a “present day approach to such location competition.” The defendants claimed that their use of the plaintiffs’ names merely allowed internet searches to function in a similar way to how phone books work. In essence, they argued that by purchasing the plaintiffs’ names as keywords, and as a result by prominently appearing in the search results for all search queries concerning the plaintiffs’ services, they were merely allowing potential clients the opportunity to compare the qualifications of competing firms. The court agreed.
“Defendants are correct that this tends to put businesses in the relative positions on the Internet that they were once in when clients used telephone directories,” the court said.
The court then noted that the defendants could contact television stations in order to purchase advertisements that ran within a certain time period after any Habush Habush & Rottier advertisements. Presumably this would be done without the plaintiffs’ permission, but the court said that “such use is consistent with the principles of energetic business competition in our state and is not unreasonable.”
The whole is greater than the sum of its parts, the court concluded after examining the issue of the individual identities of Habush and Rottier as compared to the identity of the firm Habush Habush & Rottier.
“Through advertising and promotion, the plaintiffs have told the world, in effect, that the firm is better than either plaintiff himself,” the court said. “They have used their good names and reputations to endorse a particular company. … They have allowed the company to use their names and images. This includes the use of their names in the company name.”
This phenomenon was not unique to the practice of law, the court said, noting that businesses in other fields commonly use the names of individuals as their primary identifiers, but that consumers do not necessarily expect to deal directly with the named individual. Additionally, in such cases, there is no way to identify the business entity other than to use the individuals' names.
The court labeled this circumstance “person/firm integration.” This is relevant, the court said, because the Wisconsin right of publicity statute does not give the same level of protection to the names of commercial entities that it does to an individual's name. In this case, by making their personal names the unavoidable identifier for the commercial entity, the balance was tilted in favor of finding the defendants' use reasonable.
The court acknowledged that the use of the plaintiffs' names could conceivably result in consumer confusion. However, looking at the reality of internet users and the practice of using search engines, the court said that consumers “have learned to be skeptical about the first impression they may receive from a web page or commercial advertisement.”
The court expressed confidence in the ability of internet users to analyze a search result and adequately process the information offered. Indeed, users are accustomed to checking links in order to determine whether they lead to the websites that they are looking for.
“The plaintiffs have presented no evidence to show that any particular person ever became confused by the Cannon & Dunphy … sponsored link,” the court noted. “If a user earnestly looking for Robert L. Habush or Daniel A. Rottier ends up clicking on the link to the Cannon & Dunphy … website, that person will recognize the anomaly and return to view the remaining search results …. The confusion, if any, is brief.”
The court noted that search engines frequently adjust their algorithms in order to keep pace with technological advances. As a result, the court said that it would be difficult to grant the plaintiffs the equitable relief that they sought—specifically, an injunction prohibiting the use of their names as keywords that return the defendants’ sponsored links.
The court said that such an injunction could not easily be drafted without interfering with myriad other issues that the plaintiffs are not seeking relief from. The court asked:
If a sponsored link is enjoined, what about a box ad on the right column of the page? Or one on the left column? Or one in the middle of the search results? If the ad is set-off obviously as advertising, regardless of placement, is it allowable. … What if the defendants would change the sponsored link text simply to say: “An Alternative to Habush”… .
The court said that these issues weighed in favor of concluding that the defendants’ use of the keywords was reasonable.
The court compiled the above analysis into a list of factors to aid in determining whether the commercial use of competitors' names was reasonable in this case. These factors included whether the names of the individuals were used in the name of the competing entity, whether the appearance of the sponsored link makes it indistinguishable from generic search results, whether text of the sponsored ads or the embedded links actually used the names of the plaintiffs, and whether there was any suggestion that the plaintiffs had sponsored the ad or endorsed the defendants' services.
The key to finding “reasonability,” the court said, was whether the decision to use the names was “irrational, lacking a rational basis, not guided by reason, or capricious.”
The court refused to entertain the plaintiffs' assertion that Cannon & Dunphy had violated professional ethics in engaging in keyword purchasing, given that there was no legal or professional authority that had promulgated any such standard.
“The time may come when a legislature, regulatory board, or supreme court determines that the conduct at issue in this case is deceptive and misleading and therefore improper,” the court said. “But no such body has yet drawn this conclusion. … [T]he trend may be toward increased freedom and reduced regulation or restriction.”
The court concluded that although there had been a commercial use of the plaintiffs' names, that such use was not unreasonable and thus granted summary judgment in the defendants' favor.
By Tamlin H. Bason
Opinion at http://pub.bna.com/ptcj/0918149Jun8.pdf
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