John Welch of the TTAB Blog gives us the Top Ten for 2007 in two installments.  The First is here, and the Second is here.

The lists are starting to roll in.  Check out Pogo's Chronicles of Dissent: Top Ten Privacy Breaches of 2007, and Threat Level's look at the year 2007  from a privacy/security perspective.  The Metropolitan Counsel provides us with the Advertising, Marketing And Promotions Law Year In Review,   and the USPTO Announces it's year end results, touting "historic improvement in the quality of patent and trademark reviews and subsequently the quality of issued patents and registered trademarks."  Euclid Managers offers its Predictions for 2008 Security Threats, PatentlyO offers Ten Ways to Spend your Holiday Bonus (I got the Nuvi), the TTAB Blog reports that the Leo Stoller Blog Has Returned, and Chevy Chase reports that Generalissimo Francisco Franco is Still Dead. 

Happy Holidays, and Best Wishes for a prosperous 2008 from the TechKnowledgy Blog!

You know the Video Professor - he's the guy on those infomercials that urges you to buy his computer education programs by trying them for free.  The company even encourages consumers to search for reviews online before buying.  Problem is, lots of consumers are complaining online that they were mislead as to the "free" part, or are otherwise unhappy with the product.  Perhaps in an effort to draw more attention to the negative reviews, the Video Professor has taken to suing the bastards who are saying these bad things. 

Do you suppose the Prof. is aware of the Streisand Effect?  Or the likelihood of succeeding in stifling anonymous criticism in light of the First Amendment rights involved and other available defenses?  In any event, right or wrong, the online world does not like bullies, and the backlash has begun (see below).

On a practical note, these links provide a good tutorial and resources (including forms) for those involved, or considering getting involved, in litigation to identify anonymous internet posters.

Video Professor sues anonymous griping posters, demands their identities

Video Professor Sues Anonymous Critics

Politicians, infomercial kings try to stifle anonymous Internet speech

Letter from Public Citizen Litigation Group

The Video Professor Sues His Unnamed Critics

-Photo courtesy of Llyod Doppler under Creative Commons

Imagine the scene: In house counsel from Google, Microsoft, AOL and Yahoo rise to explain to the restless crowd of several hundred owners and protectors of famous trademarks, just why it is that they allow competitors to bid on those famous trademarks to trigger ads for the competitor's products. The phrase "smoothing ruffled feathers" was used more than once in the ninety minute presentation. The brave presenters were Peter Becker of Microsoft, Laura Covington of Yahoo, Lauren Fisher of AOL, and Rose Hagan of Google.

Kudos to INTA for pulling that one off, but perhaps it's not so surprising that these lawyers would face a seemingly hostile crowd. The search engines have a sizable PR and education job to do when it comes to the emotionally charged issue of keyword advertising, and what better venue than an audience of trademark holders to make their case.

In fairness, the search engines are attempting to operate within the law and balance the rights of consumers, advertisers, and trademark holders, and the law is currently evolving on the topic. And, they have some very good basic points. One common theme is that they should be able to operate under the same that apply in the brick and mortar world. Some good analogies were made (ones I've made in the past) such as the right to purchase shelf space in the supermarket next to a competitor, or the practice of printing coupons for competing products on the back of receipts at the super market (i.e., you buy some Pampers, and get a coupon for for Huggies). These things are tolerated in the "real" world, but in the intangible world of online commerce, keyword advertising draws a much more visceral response.

The most striking thing gleaned from the presentations from my perspective is just how differently the search engines treat the issue of keyword advertising as a matter of policy.  Google is clearly the most aggressive of the crew, and they allow the purchase of trademarks to trigger the ads of competitors, with the caveat that the text of the sponsored ad must not use the trademarked trigger term. The theory is, I believe, that Google thinks it has a winner on the argument that the use of trademarks to trigger ads is not "trademark use."  Because you need such trademark use, together with a likelihood of confusion to make a trademark infringement case, you can never get there with Google's approach.  If the trademark is never used in the triggered ad, and the use of the trademark as a trigger does not count for trademark purposes, no infringement issues.  It also has the benefit of being very clean, and very easy to implement.  No judgement is involved, and it can all be automated.  Very scalable.

Yahoo, AOL and Microsoft on the other hand, all take a more measured (and less scalable) approach, and allow for the purchase of trademarks to trigger ads only if the triggered ad clearly involves a fair use of the trademarked term. Yahoo (I believe) goes even further and actually requires that the trademarked term be used in the text of the sponsored ad.  The theory here is that if the ad is truly fair use (such as comparative advertising), that is most clearly demonstrated by the appropriate use of the trademark in the sponsored ad (for example "Thinking about a Dodge Durango? Compare the safety rating of the Toyota Tundra before you buy." )

In the end, it was clear that the search engines are attempting to operate within the law, or as near to the fringe as they can tolerate, and to perhaps push the line a bit. It was little solace to many in the audience, as a number of the follow up "questions" demonstrated the continuing frustration of trademark holders. They can't stand the idea that competitors can get in front of their customers by purchasing THEIR TRADEMARKS!  (even though across the hall the marketing department is probably doing the same thing to their competitors.)  If you can't beat em' . . ..

Just in case you didn't know, the International Trademark Association (INTA) is right in the middle of its Annual Meeting, which this year is being hosted in Chicago. There are oodles of good programs dealing with various aspects of trademarks, branding, and the issues that arise with them in the online marketing context.  One session focused entirely on online resources that are useful when investigating domain names and domain name holders, whether to clear domains for your own use, or track down the bad guys who are wreaking havoc with you by using domains similar or identical to your trademarks and tradenames.  Here are some of the sites mentioned by the speakers (you will want to bookmark these, or at least a link to this post!):

Alexa.com provides current and historic traffic volume data on internet sites, and allows you to compare the traffic between competing sites, which is useful in a number of contexts.

Archive.org is where you can find the "Way Back Machine", which allows you to look and see how long a site has been around, and track changes that have been made to the site over time.

BetterWhoIs.com is a comprehensive, easy to use clearinghouse for domain name WHOIS information, and is a favorite with the presenters.

Domain Tools was said to provides lots of advanced features for finding information about domains, and domain name holders, some of which is free, and some of which comes with a small fee.  For example, for a fee of about $150 per year, you can evidently access Domain Tools archive of WHOIS information, which provides a chain of title of sorts for domain names.   It also has a reverse IP search available, and typo generator, that assists in identifying domain typos on your domain.

Geektools.com provides a set of technical resources for network engineers and system administrators, which  includes whois and traceroute.

Nation Arbitration Forum provides an easy to search database of their UDRP decisions which makes it very simple to see if there have been any arbitrations involving a particular domain or party.

WIPO also provides a searchable database of its UDRP decisions, but it is not quite as user friendly.

SnapNames was identified as a favorite resource for back ordering domain names.  It is free to back-order a domain, and if it is "caught" by SnapNames, a fee of about $65 is due at that time.  Small price to pay for the benefit of eliminating potential problems with domains of interest.

SamSpade.org  is a freeware integrated network query tool for tracking down spam.

There was also an interesting discussion of the problems posed by the anonymous domain hosting services that are popping up everywhere.  Domains by Proxy was mentioned specifically as one of the more popular services. A good practice pointer - when sending out cease and desist letters to these domains, the letters should go to Domains by Proxy (or the other anonymizing registrant), because THEY ARE THE REGISTRANT and owner of the domain.  That is the way they set up their business model. They will likely respond by saying they are not the real owner of the domain, etc., but the word from the presenters was that if you persist, you can expect Domains by Proxy to respond fairly quickly by posting the actual registration information in the WHOIS record for that domain.

In a rare and perhaps temporary  setback for Google, a federal district court judge has refused to dismiss a lawsuit challenging Google's AdWords program.   U.S. District Court Judge Jeremy Fogel ruled earlier this week that the lawsuit filed by American Blind & Wallpaper Factory may proceed, noting that public has an interest in whether AdWords, the company's popular pay-per-click advertising system, violates U.S. trademark law.  Google has already prevailed in similar cases brought by GEICO and Rescue.com.    CNet article here.  Goldman's summary here.

Senator Dan Eastman of Utah has defended Utah's new Keyword Ban on this blog.  Could it be Senator Eastman that posted the anonymous comment to our post below?   In any event, Eric Goldman (we could make a career pointing you to his excellent posts) persuasively takes him to task in this blog entry.  Goldman's point - there is no justification for characterising key word advertising as the equivalent of identity theft or carjacking, and the unfair use of those inflammatory descriptors does not make Utah's case.  Goldman explains that with keyword advertising, there is no coercion, and there is no confusion. 

The piling on against Utah and Senator Eastman is continuing:

The Lobbyist, the Congressmen and the Utah Search Ad Law 

Utah, Land of Dumb Internet Laws?

Utah's Misguided Trademark Protection Act

Is Utah's Internet Law Legal?

Google Opposes Utah Law Limiting Keyword Advertising

Utah Trademark Law Restricts Competition

The following, in no particular order, are our top ten favorite TechKnowledgy stories of 2006:

1.  Posner Appears Live as Avatar on Second Life.  If the words in that headline are gobbledygook to you, you better get with it!  Second Life is a popular online virtual world where users interact with each other through "avatars", which are basically animated cartoons of themselves.  Judge Richard Posner appeared live on Second Life on December 7th, and was interviewed on a variety of topics for two hours.   The illustrated transcript can be found here.  The idea that one of the most influential legal minds of our time is willing to embrace this emerging technology is just, well, cool. . ..

2.  Supreme Court Alit in Patent Cases.  While the world focused on the drama of the appointment of Justice Alito, IP lawyers had some drama of their own, with a fully loaded patent docket.  Decisions included

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You may recall the 2003 Supreme Court decision in Moseley v. Victoria’s Secret.  That case began with Victoria’s Secret suing the proprietor of a sex toy shop called “Victor’s Little Secret.” (Actually, the name had been “Victor’s Secret” - it was changed in reaction to the initial demands from the Victoria’s Secret lawyers.)

The focus of the case was trademark dilution.  The issue was not that customers would be confused or mislead into thinking that Victoria’s Secret was now in the business of pushing sex toys and adult videos.  Instead, Victoria’s Secret claimed that due to the unsavory nature of  Victor’s shop, Victoria’s Secret’s otherwise pristine image might be tarnished simply because consumers would go through a thought process something like this: “Oh, look at that – Victor’s Little Secret, a shop for adult novelties – that is a play on Victoria’s Secret, the lingerie store – funny!” And from that point on, every time those consumers saw or thought of Victoria’s Secret, there would be this little voice in the back of their heads that said “remember that sex toy shop called Victor’s Little Secret – funny!”

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As predicted here in our earlier post, Google has gone on the offensive seeking to prevent Genericide by firing off letters to media organizations warning them against using the name Google as a verb. Check out this article in The Independent, or just google “google and generic” (oops, I wonder if I will get a letter).

Could Google go the way of  Aspirin, Cellophane, Yo-Yo and Escalator?  It just might unless it is willing to put the kind of effort forth that Xerox or Rollerblades have done to prevent their names from becoming generic.  You see, “google” has officially shown up in the latest edition of Merriam-Webster's Collegiate Dictionary.  The meaning of the verb? “to use the Google search engine to obtain information about (as a person) on the World Wide Web”.  It may be that the fact the definition uses a reference to “the Google search engine” saves Google for the moment, but I will not be surprised to see significant efforts from Google directed toward preventing total genericide.  Do you remember this ad? “When you use ‘xerox’ the way you use ‘aspirin’, we get a headache.”

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