The name game: Local firms’ fight could reshape online advertising

Listen to this article

The battle between a pair of legendary local personal injury law firms is escalating, and the outcome could have a broad impact on Internet marketing.

While many firms utilize some type of online advertising, Habush Habush & Rottier SC and Cannon & Dunphy SC are fighting over a specific issue: How keyword searches can be used to find their respective firms.

Last November, Habush filed suit against Cannon, alleging that when the Brookfield-based firm paid for the keywords “Habush” and “Rottier,” it in effect hijacked the names and reputation of Habush attorneys.

One of the issues in the case is whether purchasing a competitor’s keyword search terms is a permissible marketing strategy and if so, what are the limitations?

Milwaukee patent and trademark attorney Joseph D. Kuborn said that the courts have generally allowed companies like Google and Yahoo to sell search terms to the highest bidder, so long as the words do not pop up in paid advertisements at the top of the Web page.

“If a word or term appears in the ad, then you have some trademark issues,” he said.

But companies can buy a trademarked name or words and imbed it in the metadata so that the purchaser’s business will appear at the top of the search list, noted Kuborn, of Andrus, Sceales, Starke & Sawall LLP.

According to Marquette University Law School Professor Bruce E. Boyden, plaintiffs have not yet been successful in arguing that there is a “likelihood of confusion” when advertising text does not include a trademarked term.

“As used behind the scenes as a triggering code, there hasn’t been proof of a likelihood of confusion,” he said.

Habush’s suit seeks injunctive relief and attorney fees.

In December, Cannon filed a motion to dismiss, claiming that Habush engaged in similar marketing practices. This month, Milwaukee County Circuit Court Judge Charles F. Kahn denied the motion, and ruled that Robert Habush and Daniel Rottier as individuals could proceed with the case. They must prove that use of their last names by Cannon in paid online ads constitutes an unfair advertising practice.

Ethical strategy?

Veteran intellectual property attorney Theodore J. Long suggested there is growing concern about the ethical boundaries of online marketing.

“There are people making an industry of strategizing with respect to making a name visible in searches, or ‘cyber-squatting’ and locking names up and then trying to sell them,” he said.

Boyden noted that the Habush case is unusual because the plaintiff is claiming a violation of Wisconsin’s privacy statute, and not trademark law, as is generally the case for these kinds of claims.

In the suit, Habush claims that Cannon violated Wis. Stat. 995.50 (2)(b), which states that someone’s name or likeness cannot be used for advertising purposes without written consent from the individual.

The suit alleges that Cannon’s use of “Habush” and “Rottier” is “an intentional and illegal effort to trade upon the hard earned names, personal reputations and good will” established by Habush.

“I think if the plaintiff shows that people were actually confused by the sponsored links, they might be able to show value in the name that is being taken here,” Boyden said. “[But] if I was the court, I would not hold that the mere purchase of the keyword by itself is enough.”

If the court did accept Habush’s argument, Boyden said it could potentially broaden the ability of any business with a person’s name in it to stop competitive keyword advertising.

Kuborn agreed, and said the impact for businesses, especially law firms, could be significant.

“It would prevent one company from utilizing their competitors’ names, product names or model numbers to be used as meta-search terms or to direct consumers to the purchasing party’s website instead of the trade name owner’s Web site,” he said.

Whatever the outcome of this case, some consultants say the Cannon firm’s strategy is a bad idea.

Legal marketing consultant Elizabeth Ferris said she would not advise a client to pursue this approach, adding that firms should not have to hide words or engage in covert marketing to get an edge.

“It’s never a good marketing strategy to try and do something that isn’t upfront and open,” she said. “I would recommend staying clear of public controversy.”

Portions of this story came from the Associated Press