By Elizabeth Dilts
(Reuters) - Personal injury lawyers typically aren't known
for their subtle tactics. But a pair of Wisconsin attorneys who
have filed lawsuits over everything from food contamination to
dog bites may have taken nervy to a new extreme.
Back in 2009, William Cannon and Patrick Dunphy bid on the
Internet ad-search rights to the names of their former partners
to generate the sponsored links that appear at the top of the
search pages for the three largest search engines, Google,
Yahoo! and Bing.
That meant every time a consumer typed in the last names of
Cannon and Dunphy's former partners, a sponsored link featuring
the law firm Cannon & Dunphy would pop up in the highlighed spot
at the top of the search page. If a consumer clicked on the
sponsored link, Cannon & Dunphy would pay an agreed-upon fee.
Cannon & Dunphy's sponsored-link deal has since expired. But
the resentment of the former partners who lost the use of their
own names has dragged on in a lawsuit filed in November 2009.
In the case, Robert Habush and Daniel Rottier claimed that
their rights under Wisconsin's privacy law were violated when
Cannon & Dunphy bid on the search words "habush" and "rottier"
without obtaining written permission. Though Habush and Rottier
did not seek damages, they argued that Cannon & Dunphy had to
give up the rights to the words "habush" and "rottier" and pay
attorneys' fees in the litigation.
Now a Wisconsin state appeals court has sided with Cannon &
Dunphy, finding that the law firm only used "habush" and
"rottier" in computer code, where consumers couldn't see the
names, so the sponsorhip deal did not violate Habush and
"In every case brought to our attention by the parties and
discovered in the course of our own research, the 'use' of the
name or image at issue was a visible part of some sort of
promotion or product," wrote Justice P.J. Lundsten in a 17-page
ruling issued in late February.
Similar ad-search-term battles have already entangled
high-profile companies. Last October language-learning company
Rosetta Stone settled a lawsuit against Google and jewelry
distributor Hearts on Fire settled its case against the online
jewelry seller Blue Nile.
Unlike Habush and Rottier, who sued on privacy grounds to
protect the use of their names, Rosetta Stone and Hearts on Fire
both alleged trademark infringement.
DIFFERENT TACK IN COURT
In the Rosetta Stone case, the company alleged that Google
had infringed its trademarks by selling "Rosetta Stone" as a
key-word search term to third-party advertisers so that
consumers who searched "Rosetta Stone" on Google were redirected
to counterfeiters and competitors. The details of the settlement
were not disclosed, but sponsored links at the top of Google's
search results for Rosetta Stone are now all authorized sellers
of Rosetta Stone products.
In 2009, jewelry distributor Hearts on Fire sued the online
jewelry seller Blue Nile for trademark infringement, alleging
that Blue Nile had paid a search engine, webcrawler.com, to
display a sponsored link to its website every time users
searched for the phrase "hearts on fire." The details of the
settlement were confidential, according to Josh Holland, a
spokesman for Blue Nile.
Individual names like "habush" or "rottier," however, cannot
be trademarked, so Habush and Rottier took a different tack to
protect their names.
They maintained that the 27-year-old Cannon & Dunphy, with
just one office and nine lawyers, was improperly capitalizing on
the reputation of the 75-year-old Habush Habush & Rottier, with
40 lawyers in 13 offices.
"A good name, and the value that resides in it, is one of
the most cherished assets an attorney or any other service
professional has," wrote James Clark of Foley & Lardner, an
attorney for Habush Habush & Rottier, in the plaintiff's brief.
Cannon and Dunphy were "taking advantage of and utilizing
for themselves the hard-earned name-recognition and reputations
belonging to Habush or Rottier," Clark argued.
Judge Lundsten, however, was not convinced. Instead, he
compared Cannon & Dunphy's ad-search-term buy to
bricks-and-mortar businesses that locate near established
companies in order to capitalize on the flow of customers.
"The state (privacy) law was never intended to, for
example, prevent a new business opening next to an established
business to try to take advantage of the flow of potential
customers to the more senior competitor," Lundsten wrote in an
opinion that further establishes search terms as buyable objects
that can't be claimed by their namesakes.
J. Ric Gass, a lawyer for Cannon & Dunphy, characterized
the decision as a victory for consumers. "This does nothing
except follow all of the ways the Internet is providing more
information to the server to get them to the right product, the
right service and the right lawyer for them," said Gass.
Clark, the attorney for Habush Habush & Rottier, said his
clients are considering whether to appeal to the Wisconsin
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