Friday, January 28, 2005

Prof. Mark Lemley speaks

Professor Mark Lemley of Stanford Law School kicks off our group's opening session.

Mark discussed the current controversies surrounding use of trademarks in the mechanisms behind targeted advertising systems -- where a set of keywords are used to trigger advertising responses. He laid out the diverging court views on whether or not this is even a trademark 'use' in the first place -- where it's not even a 'use' in the first place, one need not even step into the trademark infringement analysis. For sake of argument, if one presumes that this process steps into the 'use' realm, Mark suggested that there is not necessarily a single answer, but that a traditional set of trademark principles should apply to the analysis. "Just as I can set my bottle of generic Ibuprofen next to the bottle of Advil on the retailer's shelf..." He made clear that just as there are legitimate uses of other's trademarks (e.g., in the world of comparative advertising), there are just as well non-legitimate uses of other's marks (e.g., ads designed to intentionally confuse consumers).

This led to a discussion of the principles of initial interest confusion. Mark asked us to remember the differences between a situation where a consumer driven across town to retailer A where they really wanted to find retailer B versus the internet. In one case, the consumer may have invested enough in the initial visit to prompt her to just buy at the first store and miss the second store. In the other, the consumer merely needs to hit the back button. The People Eating Tasty Animals case which allowed the PETA organization to stop the use of the domain name under a concept of initial interest confusion. Mark suggested that the analysis failed to look for any essence of consumer "confusion," and stopped at the point of finding 'initial interest.'

Mark also asked us to ponder the points of liability -- contrast the advertisers versus the publishers (or, the search engines in this instance). The risks that the search engines have in this area have led the primary engine companies to set up rather bold policies of taking down once a complaint comes in. He suggested that this has something of a chilling effect on the advertising community, particularly because the status of a protected trademark is hardly a black-and-white question (worsened once we have to start looking at trademark legal systems outside of the USA, since different jurisdictions will provide different answers).

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