What You Can’t See Can Hurt You — Wisconsin Court Oks Competitive Use of Name in Keyword Ad
Use of Competitor’s Name in Keyword Advertising Ruled Not a Violation of Publicity Rights – Habush v. Cannon, 2013 WL 627251 (Wis. Ct. App. Feb. 21, 2013)
Can your business competitor use your name to promote itself and never mention your name to the public? Keyword advertising makes that possible. A competitor can bid on keyword search terms consisting of your company name to make links to its website appear whenever a person searches for your name on the Internet. A law firm that fell prey to such an advertising strategy decided to sue its competitor for violating its publicity rights, which is a form of invasion of privacy.
Robert Habush and Daniel Rottier are shareholders in Habush Habush & Rottier, a well-known personal injury law firm in Wisconsin. Another Wisconsin law firm also specializing in personal injury law, Cannon & Dunphy (C&D), bid on the keyword search terms “Habush” and “Rottier” through Google, Yahoo!, and Bing. As a result, when a person searched for “Habush” or “Rottier” in one of the three search engines, links to C&D’s website would appear at the top of the list of “sponsored” results, i.e., those links produced by keywords that been bid on and paid for by advertisers. Sponsored results generally appear above the “organic results” generated by the search engine’s algorithm.
Habush and Rottier sued C&D for violating Wisconsin’s invasion of privacy statute. Under the statute, a person’s privacy could be invaded by “[t]he use, for advertising purposes or for purposes of trade, of the name . . . of any living person, without having first obtained the written consent of the person . . . .” The main question was whether C&D engaged in a “use” of Habush and Rottier’s names.
Habush and Rottier argued that any attempt to benefit from the commercial or other value of a person’s name or image is a “use.” Under this interpretation, C&D “used” the names of Habush and Rottier. C&D countered that the statute covers only “use” that is visible to the public. Under that perspective, bidding on names for keyword advertising purposes is not a “use” because the public does not see the use of the names.
The court found both interpretations reasonable, but adopted C&D’s interpretation. The court held back from ruling that unauthorized use of a name can never be an invasion of privacy unless the use is visible to the public, but it agreed with C&D that bidding on a competitor’s name to get one’s ad placed near links to the competitor’s website in search results is not a violation of the competitor’s publicity rights.
The court analogized competitive keyword advertising to “proximity advertising.” Examples of proximity advertising include: a new car dealership opens across the street from an established car dealership; a business advertises on billboards next to a competitor’s billboards; a lawyer places a Yellow Pages ad near the phone listing of competing lawyers. Although a competitor is trying to take advantage of the name of an established business in each of these scenarios, none involves an impermissible “use”, such as when a competitor puts the name of an established business in its ad or on its product. The court similarly did not see a problem with using a third party—in this case, a search engine—to engage in proximity advertising.
LegalTXTS Notes: This is a pretty novel case because most competitive keyword advertising cases are based on theories of trademark infringement or dilution. Since Habush and Rottier are personal names, they might not have acquired sufficient second secondary meaning to qualify for trademark protection, so publicity rights was invoked as a creative alternative.
Hawai‘i has its own publicity rights statute, so would the outcome have been different had the lawsuit been filed in Hawai‘i? Hawai‘i courts have not had the occasion to interpret the statute, but if you buy the reasoning of the court in Habush, the answer is probably not. The Hawai‘i statute is similar enough to the Wisconsin statute for the logic of Habush to apply.
As a partner in a law firm (and therefore a business owner), I’m not sure how I feel about Habush. I think the court rightly rejected the interpretation that any attempt to benefit from the commercial value of a person’s qualifies as a violation of publicity rights. That’s a pretty broad proposition. But something about the decision makes it hard to swallow. There’s an element of deception the court doesn’t adequately address. I wonder if, instead of claiming violation of publicity rights, Habush and Rottier could have sued under an unfair competition theory.