Trademark Infringement and Search Engine Advertising
- posted: Aug. 12, 2021
When a personal injury law firm sues a personal injury lawyer referral website for tort liability – well, it is just fun to watch, especially for those of us used to being on the defense side of litigation.
In 2019, Houston’s own Jim Adler, the self-proclaimed “Texas Hammer,” filed a trademark infringement lawsuit against the Accident Injury Legal Center, a lawyer-referral website and call center which solicits and refers personal injury cases to lawyers in exchange for referral fees.
According to the allegations in the First Amended Complaint, the call center used three of Adler’s federally registered trademarks in its keyword advertising on Google. As a result, if someone ran a search for “Jim Adler” on their phone, the search results would include a click-to-call advertisement, which, when clicked, would cause the user’s phone to make a call rather than visit a website. The call center’s representatives would then answer the telephone call using a generic greeting, build a rapport with the caller, then refer the caller to other personal injury lawyers, not Adler.
The trademark infringement case was filed in federal court in Dallas, which originally dismissed the lawsuit on the basis that the call center’s use of Adler’s trademarks as keywords in search engine advertising was not trademark infringement because it was not actually visible to consumers. Adler appealed the case to the U.S. Court of Appeals for the Fifth Circuit in New Orleans.
On Tuesday, the Fifth Circuit disagreed. The legal question in a trademark infringement case is whether there is a likelihood of consumer confusion: did the call center’s use of the Adler trademarks in its search engine advertising create a likelihood of consumer confusion? Whether or not the use of Adler’s trademarks was visible to a consumer “is a relevant but not dispositive factor in determining a likelihood of confusion in search-engine advertising cases.” The case was sent back to the federal court in Dallas to determine if any trademark infringement had occurred.
My Take: If someone searches Google for “Tom Erdos,” I’d like them to find me, or at least someone actually named “Tom Erdos.” I have not spent over $100 million on advertising in the Texas marketplace, but if I had, I’d have a lot more reason to be upset. For a third party to parlay that advertising into their own revenue stream is not right. I think this is a good result and I think it will be followed by other federal courts. For that reason, it is now safer to not include your competitors’ registered trademarks in your own search engine advertising.
On a very slightly related note, in 1986, I was collecting unemployment. I had a Master’s degree in Applied Linguistics, and I had taught the English language to international students at the Language and Culture Center at the University of Houston. The Middle East oil crisis of the mid- 1980s had hurt the program’s enrollment, and it was my second time to be laid off in six months. I had already been admitted to U of H Law School’s night program which would start in June, so in the meantime I looked for work at a law firm by sending hundreds of letters to every Houston law firm -- in alphabetical order.
By early March, my letters were going to the E’s and my interviews were in the A’s and B’s. One morning, I had a job interview with Jim Adler of Adler & O’Connor. Mr. Adler was a personal injury attorney even then. That afternoon, I interviewed with Baker & Kirk, a law firm formed to help inventors and investors form new tech start-up companies. I told Baker & Kirk about the Adler interview and that, if Adler’s firm called me, I was in no position to turn down a job – but I’d rather work for them. By the end of the day, Baker & Kirk called me, and I started the next week. I worked at Baker & Kirk full time for the next seven years, both during and after law school.
They were the last two job interviews I ever had.
May you find joy in what you do and who you are with.