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8/14/2019 EFF: EFF amicus http://slidepdf.com/reader/full/eff-eff-amicus 1/24 06-4881-cv United States Court of Appeals  for the Second Circuit RESCUECOM CORPORATION,  Plaintiff-Appellant,  – v. – GOOGLE, INC.,  Defendant-Appellee.  _______________________________ ON APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF NEW YORK BRIEF OF AMICUS CURIAE ELECTRONIC FRONTIER FOUNDATION IN SUPPORT OF AFFIRMANCE JASON SCHULTZ CORYNNE MCSHERRY  FRED VON LOHMANN ELECTRONIC FRONTIER FOUNDATION  Amicus Curiae 454 Shotwell Street San Francisco, California 94110 (415) 436-9333

Transcript of EFF: EFF amicus

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06-4881-cvUnited States Court of Appeals

 for the

Second Circuit

RESCUECOM CORPORATION,

 Plaintiff-Appellant,

 – v. – 

GOOGLE, INC.,

 Defendant-Appellee.

 _______________________________ 

ON APPEAL FROM THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF NEW YORK 

BRIEF OF AMICUS CURIAE ELECTRONIC FRONTIER 

FOUNDATION IN SUPPORT OF AFFIRMANCE

JASON SCHULTZ CORYNNE MCSHERRY FRED VON LOHMANN 

ELECTRONIC FRONTIER FOUNDATION 

 Amicus Curiae454 Shotwell StreetSan Francisco, California 94110(415) 436-9333

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CORPORATE DISCLOSURE STATEMENT

Pursuant to FRAP 26.1 and 29(c), amicus Electronic Frontier 

Foundation (“EFF”), a 501(c)(3) non-profit corporation incorporated in the

State of Massachusetts makes the following disclosure:

1. EFF is not a publicly held corporation or other publicly held

entity.

2. EFF has no parent corporations.

3. No publicly held corporation or other publicly held entity owns

10% or more of EFF.

4. EFF is not a trade association.

DATED: February 22, 2007 ELECTRONIC FRONTIER FOUNDATION

By Corynne McSherry, Esq.Staff Attorney

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TABLE OF CONTENTS

I.  STATEMENT OF INTEREST OF AMICUS………………………………1

II.  INTRODUCTION AND SUMMARY OF ARGUMENT…………...….…..1

III.  ARGUMENT………………………………………………………….…….5

A. The Trademark Use Doctrine is a Crucial Tool for BalancingTrademark and Free Speech Rights………………..…………………8

B. Rescuecom’s Theory, if Adopted, Would Improperly Expand the

Boundaries of Trademark Use and Chill Speech……………………14

IV.  CONCLUSION………………………………………………………….…17

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TABLE OF AUTHORITIES

Cases

1-800 Contacts, Inc. v. WhenU.com, Inc.,414 F.3d 400 (2d Cir. 2005).…………………………….....………….passim

 Bosley Med. Inst., Inc. v. Kremer ,

403 F.3d 672 (9th Cir. 2005)………………………….………….…7, 11, 12

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, Inc.,886 F.2d 490 (2d Cir. 1989))…………..…………………..…….........……..9

CPC Int’l, Inc. v. Skippy Inc.,

214 F.3d 456 (4th Cir. 2000).………………………………….........……...10

 DaimlerChrysler AG v. Bloom,

315 F.3d 932 (8th Cir. 2003)…..……………………………………….13, 14

 Holiday Inns, Inc. v. 800 Reservation, Inc. ,86 F.3d 619 (6th Cir. 1996)…………………………………….......………13

 Lamparello v. Falwell ,420 F.3d 309 (4th Cir. 2005)…………………………………..........……….7

Mattel, Inc. v. MCA Records, Inc.,296 F.3d 894 (9th Cir. 2002)……………………………………........…….10

 New Kids on the Block v. New America Publ’g, Inc.,971 F.2d 302, (9th Cir. 1999)…………….......………………..........……….9

 Prestonettes v. Coty,

264 U.S. 359, (1924)……………………….......……………….......……...10

 Rescuecom Corp. v. Google,456 F. Supp. 2d 393 (N.D.N.Y. 2006)………………………........…………7

 Rogers v. Grimaldi,875 F.2d 994, (2d Cir. 1989)…………………….......………...………..9, 10

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Taubman v. Webfeats,319 f. 3d 770, 775 (6th Cir. 2003)………………….………...………….7, 11

Yankee Publ’g. v. News America Publ’g ,809 F.Supp. 276 (S.D.N.Y. 1992)…………………………........………….10

Other Authorities

Barrett , Margreth,

 Internet Trademark Suits and the Demise of “Trademark Use,” 39 U.C. DAVIS L. R EV. 371 (2006)……………...………………......…………...….10

Denicola, Robert,

Trademarks as Speech: Constitutional Implications of the Emerging  Rationales for the Protection of Trade Symbols, 1982 WIS. L. R EV. 158...…9

Kozinski , Alex,Trademarks Unplugged , 68 N.Y.U. L. R EV. 960 (1993)………………........8

Karlin, Rick,

State Politics Clicks with Googling , ALBANY TIMES-U NION, Mar. 16, 2006,A3....................................................................................................................4

Lemley, Mark A.,

 Property, Intellectual Property, and Free Riding , 83 TEX. L. R EV 1031(2005)............................................................................................................14

Lemley , Mark A.,

The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J.1687 (1999)…………………...…….…………………………………...…10

Schlosser , EricOp-Ed., A Side Order of Human Rights, N.Y. TIMES, Apr. 6, 2005………...2

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I.  STATEMENT OF INTEREST OF AMICUS

The Electronic Frontier Foundation (“EFF”) is a non-profit, membership-

supported civil liberties organization working to protect consumer interests,

innovation and free expression in the digital world. EFF and its over 20,000 dues-

 paying members have a strong interest in protecting First Amendment rights on the

Internet and promoting access to quality online information. This case calls on the

Court to evaluate the proper scope of the Lanham Act’s “trademark use”

requirement as it relates to the Internet, an issue of critical interest to online

speakers, consumers, and technology innovators. As a leading advocate for these

groups, EFF has a perspective that is not represented by the parties to this appeal.

EFF files this brief pursuant to Federal Rule of Appellate Procedure 29(a)

and the accompanying Motion for Leave to File Brief as Amicus Curiae.1 

II.  INTRODUCTION AND SUMMARY OF ARGUMENT

Submit the search term “McDonald’s” to Google’s search engine and among

the “sponsored links” that appear in response you may encounter a link for “The

Coalition of Immokalee Farm workers,”2

a community-based organization that

supports the rights of low-wage workers in Florida. The Coalition was recognized

recently in the national news for leading a successful boycott of the restaurant

1Appellee Google Inc. has consented to the filing of this brief. Appellant

Rescuecom Corporation declined to do so.2

Available at http://www.ciw-online.org/ (last visited February 10, 2007).

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chain Taco Bell that resulted in improved wage and working conditions for tomato

 pickers in the Taco Bell supply chain. See Eric Schlosser, Op-Ed., A Side Order of 

 Human Rights, N.Y. TIMES, April 6, 2005 (discussing the boycott’s success).

Recently, the Coalition turned its attention to McDonald’s practices and, as part of 

its public campaign for working condition and wage improvements, decided to

 purchase sponsored links on Google to help stimulate public debate and mobilize

support.

This is an example of the important free speech activity that search engines

help facilitate. It is also an example of the kind of Constitutionally-protected

activity that would be disrupted were this Court to adopt the arguments urged by

Appellant Rescuecom. The Internet brings together many kinds of speakers and

audiences—some competing with trademark owners, others criticizing them, still

others simply referring to them in the course of discussing other subjects or 

 products. This is the nature of today’s online information resources and the way

users use them. The challenge, of course, is how to help speakers find their 

audiences and vice-versa.

Like many other speakers online, the Coalition and its audience rely on

intermediaries, such as search engines, to find each other. Two things must come

together to make this possible: (1) input of search terms from the information

seeker and (2) output of information from the search engine. For example, an

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Internet user who enters “McDonald’s” as a Google search term may be looking

for any number of things. She may be looking for the McDonald’s Corporation

website. Or she may be looking for an online encyclopedia with background

information on the company. She may be looking for websites that are critical of 

McDonald’s business practices. If she has invested money in McDonald’s stock,

she may be looking for the latest Wall Street numbers. Or she may be looking for 

nutritional information on McDonald’s food offerings. Thanks to the technologies

developed by companies like Google, links leading to these types of information

often appear within the first fifteen results of a Google search3

for “McDonald’s.”

But groups like the Coalition may not appear highly ranked in these non-

sponsored search results, especially if they are just beginning a new political

campaign. Fortunately, Google will also display additional information a user 

might not initially seek but still find valuable via its “sponsored links”—including

3A search conducted via the Google search engine on February 10, 2007, using

“McDonald’s” as a search term input, yielded the following among the first fifteen(15) results :

(a) the McDonald’s Corporation website appears as the first result:http://www.mcdonalds.com

(b) the Wikipedia entry on McDonald’s appears third:

http://en.wikipedia.org/wiki/McDonald's(c) a site criticizing McDonald’s policies toward people, animals and the

environment appears fourth: http://www.mcspotlight.org/

(d) the CNNMoney page devoted to McDonald’s financial informationappears thirteenth: http://money.cnn.com/quote/quote.html?symb=MCD

(e) a site providing nutrition facts for the McDonald’s menu appearsfourteenth: http://www.nutritiondata.com

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noncommercial and/or political information about the query. Thus, for example,

the Drum Major Institute (“DMI”), a New York City-based think tank, has used

Google’s AdWords program to advertise its political “score card” for state

legislators. A citizen who runs a Google search for his state assembly member will

see a sponsored link to DMI’s website, and perhaps gain some unexpected and

useful information. Rick Karlin, State Politics Clicks with “Googling ,” ALBANY

TIMES U NION, Mar. 16, 2006, at A3.

If Rescuecom has its way, however, the Coalition and other noncommercial

or public interest advocates that comment on trademarked figures or entities would

not be able to reach out directly to Internet users via a sponsored link on Google.

Under Rescuecom’s theory, search engines would be liable both for responding to

search queries for “McDonald's” with sponsored messages and for allowing any

entity (other than McDonald’s Corporation) to purchase “sponsored link” space on

the Google results page when a user types “McDonald’s” as part of a search query.

This approach would stymie not only the efforts of competitors seeking to reach

Internet users ( see Brief for Intellectual Property Law Professors Eric Goldman

and Stacey Dogan, et al., as Amici Curiae), but also the efforts of noncommercial

speakers like the Coalition.

The Lanham Act’s requirement of “trademark use” precludes this result, both

on its plain language and following long-standing First Amendment policies.

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Accordingly, this Court should reject Rescuecom’s appeal and affirm the decision

 below that the use of words (even trademarks) to help search and retrieve

information on the Internet is not a “use in connection with goods or services”

under the Lanham Act.

III.  ARGUMENT 

Today’s Internet offers unprecedented opportunities for speakers and audiences

to find each other and exchange valuable information about products, research,

viewpoints, and other important topics. One of the keys to facilitating these online

“conversations” is the ability of one party to discover the other. Since its

inception, the Internet has offered an evolving series of mechanisms for such

discovery to take place – from the original “gopher”-style menus at universities, to

directory systems like the early Yahoo!, to domain names and the currently

dominant system of keyword searching via services offered by companies such as

Appellee Google Inc. (“Google”). Indeed, search engines have become a crucial

mechanism by which users discover the information they need to make informed

decisions about everything from where to go for lunch to how to vote in the next

election.

That discovery process occurs, in part, through the use of trademarked words.

On the Internet, trademarked words are not just source identifiers but also essential

navigation tools and vehicles of expression. Speakers can use these words

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(including via sponsored links on Google or other search engines) to reach out to

citizens that might be interested in their message—if a person is interested in

McDonald’s, she might want to know something about its relations with farm

workers. Citizens and consumers, for their part, use trademarks to find all kinds

information about goods and services—if a person is interested in finding out

about McDonald’s labor practices, she may start by employing searches that

include the company’s name. The challenge, both in commercial and

noncommercial contexts, is connecting relevant speakers with their interested

audiences, a task that often requires the involvement of an intermediary.

This “use” of trademarks by intermediaries to help speakers and audiences find

each other is nothing new, and certainly not illegal. It explains how a billboard

owner may lease the space next to a McDonald’s to a group intent on protesting the

company’s practices (or to a fast food competitor, or a weight loss center, or a

children’s TV show). It also explains the strategic placement of competing

 products beside famous brands on store shelves. By providing a “sponsored links”

section in its search results pages, Google is simply providing a new, digital

mechanism whereby speakers and audiences can connect, both for commercial and

noncommercial speech purposes.

As the use of trademarked words for navigation and as proxies for shared

interests becomes more sophisticated and targeted, it is no surprise that some

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trademark holders have sought to control the kinds of information that interested

audiences encounter. Some markholders have targeted the speakers themselves,

hoping to use trademark law to shut down both the speakers’ messages and their 

use of technology to convey those ideas. Fortunately, courts have resisted these

overtures and reinforced the proper boundaries between trademark law and

Constitutionally-protected speech so that noncommercial messages can reach the

audiences that are most likely to be interested in those messages. See Lamparello

v. Falwell , 420 F.3d 309, 313 (4th Cir. 2005)(“Congress left little doubt that it did

not intend for trademark laws to impinge the rights of critics and commentators.”); 

 see also, e.g., Bosley Med. Inst., Inc. v. Kremer , 403 F.3d 672 (9th Cir.

2005)(upholding, on First Amendment grounds, the right of a dissatisfied customer 

to create a critical website using the company’s trademark); Taubman v. Webfeats,

319 F.3d 770 (6th Cir. 2003)(holding that the Lanham Act cannot be invoked

where, as in the case of noncommercial websites, there is no trademark use).

In this case, a markholder has opted to pursue not the speaker, but instead the

intermediary upon which both speakers and audiences rely to find each other.

Simply put, Rescuecom seeks to prevent the use of its mark as an online discovery

mechanism, even where the mark was not used “in any way that indicates source or 

origin.” Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393, 403 (N.D.N.Y.

2006). In fact, according to Rescuecom, trademark law permits a markholder to

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control virtually any use of the words that make up its trademark in a computer 

system, even if the use is purely for purposes of facilitating noncommercial speech.

Such a position must be rejected, as it contradicts both the plain language of the

“trademark use” requirement in the Lanham Act and the public interest in

maximizing access to information online.

A.  The Trademark Use Doctrine is a Crucial Tool for BalancingTrademark and Free Speech Rights

Trademark law has historically taken great care to avoid chilling

noncommercial speech. The trademark use doctrine is not a “hyper-technical”

rule, as Rescuecom would have it, but rather a crucial mechanism by which that

task has been accomplished. By ensuring that the Lanham Act is only applied to

regulate uses of trademarks in commerce to identify the sources of goods and

services, the trademark use doctrine helps focus courts’ attention where it should

 be—on confusing commercial speech that increases consumer search costs.

Trademark law was not designed to grant monopolies on language; quite the

opposite. The Lanham Act and decisions interpreting it recognize that

trademarks—words, symbols, colors—are also essential components of everyday

language, used by companies, consumers and citizens to share information. See 

Alex Kozinski, Trademarks Unplugged , 68 N.Y.U. L. R EV. 960, 973 (1993)

(“[trademarks] often provide some of our most vivid metaphors, as well as the

most compelling political imagery in political campaigns . . . Where trademarks

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come to carry so much communicative freight, allowing the trademark holder to

restrict their use implicates our collective interest in free and open

communication.”); see also Robert Denicola, Trademarks as Speech:

Constitutional Implications of the Emerging Rationales for the Protection of Trade

Symbols, 1982 WIS. L.R EV. 158, 195-96 (“Famous trademarks offer a particularly

 powerful means of conjuring up the image of their owners, and thus become an

important, perhaps at times indispensable, part of the public vocabulary. Rules

restricting the use of well-known trademarks may therefore restrict the

communication of ideas.”). As the Ninth Circuit Court of Appeals put the matter,

“Much useful social and commercial discourse would be all but impossible if 

speakers were under threat of an infringement lawsuit every time they made

reference to a person, company or product by using its trademark.” New Kids on

the Block v. News America Publ’g, Inc., 971 F.2d 302, 307 (9th Cir. 1992). Thus

courts have taken care to ensure that Lanham Act restrictions do not intrude on

First Amendment values. See  Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.

1989) (“Because overextension of Lanham Act restrictions . . . might intrude on

First Amendment values, we must construe the Act narrowly to avoid such a

conflict.”); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, Inc., 886

F.2d 490, 494 (2d Cir. 1989)(“in deciding the reach of the Lanham Act in any case

where an expressive work is alleged to infringe a trademark, it is appropriate to

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weigh the public interest in free expression against the public interest in avoiding

consumer confusion.”); CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir.

2000)(“[i]t is important that trademarks not be ‘transformed from rights against

unfair competition to rights to control language.’” (quoting Mark A. Lemley, The

Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687, 1710-

11 (1999)); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir.

2002)(trademark rights do not “entitle the owner to quash an unauthorized use of 

the mark by another who is communicating ideas or expressing points of view”);

Yankee Publ’g v. News America Publ’g , 809 F. Supp. 267, 276 (S.D.N.Y.

1992)(“the Second Circuit has construed the Lanham Act narrowly when the

unauthorized use of the trademark is for the purpose of a communicative message,

rather than identification of product origin.”(citing Rogers, 875 F.2d at 998)).

The Lanham Act therefore prohibits only trademark uses, i.e., uses of the

mark in connection with the sale of goods and service in commerce, that are likely

to confuse or deceive consumers.  Prestonettes, Inc. v. Coty, 264 U.S. 359, 368

(1924) (“[a trademark] does not confer a right to prohibit the use of the word or 

words. It is not a copyright. A trademark only gives the right to prohibit the use of 

it insofar as to protect the owner’s good will against the sale of another’s product

as his.”); see generally Margreth Barrett, Internet Trademark Suits and the Demise

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of “Trademark Use,” 39 U.C. DAVIS L. R EV. 371 (2006)(discussing history and

 purpose of trademark use requirement).

In the online context, “trademark use” has become an essential tool for 

 protecting free speech and other public interests from regulation by trademark 

owners. In Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003), for example, a

trademark owner attempted to use infringement claims to shut down several

noncommercial websites that commented on the mark owner. The Sixth Circuit

Court of Appeals observed that any expression embodying the use of a mark that

was not a trademark use and not likely to cause confusion was quite simply

“outside the jurisdiction of the Lanham Act and necessarily protected by the First

Amendment.” Id. at 775. Because the sites at issue were noncommercial, the court

held, the Lanham Act could not “properly be invoked.” Id. at 776. Two years later,

in Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005), the Ninth

Circuit took up an appeal by a trademark owner who had sued a dissatisfied

customer for publishing a noncommercial “gripe” website using the trademark in

its domain name. The court held that the defendant’s use of the mark was entirely

noncommercial and therefore not a “trademark use” subject to regulation by the

mark holder.  Id. at 679 (“[Defendant] is not [plaintiff’s] competitor; he is their 

critic. His use of [plaintiff’s] mark is not in connection with a sale of goods or 

service—it is in connection with the expression of his opinion about [plaintiff’s]

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goods and services.” (emphasis in original)). The court implicitly recognized,

moreover, that the plaintiff’s primary intent in bringing suit was to silence a critic.

 Id. at 680 (“[Plaintiff] cannot use the Lanham Act either as a shield from …

criticism, or as a sword to shut [defendant] up.”).

In the leading trademark use case in this circuit, 1-800 Contacts, Inc. v.

WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), this Court recognized that the

Lanham Act trademark use requirement does not extend to the triggering of pop-up

advertisements because use of a word (even a trademark) to retrieve information

from a computer database is not the same as using the mark in connection with the

sale of goods or services. Importantly, this Court specifically rejected the

 plaintiff’s contention that trademark use occurred simply because the defendant

sought to “free ride” on the plaintiff’s mark.  Id. at 410. Rather, the Court held that

 because the mark was not shown visually to any consumers in association with a

good or service and not used to trick or deceive consumers, it was not a use that

triggered liability under the Lanham Act.  Id. 

While directed to commercial speech, the 1-800 Contacts ruling also

 provided strong protection for noncommercial speech by acknowledging that

words and phrases may be used in multiple ways in the digital world, to serve

varying goals, and that not all of these uses are controlled by trademark law.

Indeed, the Court recognized that the vast majority of such uses were outside the

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scope of the Lanham Act and only those specific uses visually associated with the

sale of goods and services to consumers could be regulated. See 1-800 Contacts,

414 F.3d at 412 (“while any number of activities may be ‘in commerce’ or create a

likelihood of confusion, no such activity is actionable under the Lanham Act

absent the ‘use’ of a trademark.”). To return to the Coalition example above, the

Coalition’s use of the “McDonald’s” keyword to trigger its sponsored link could be

construed as an attempt to “leverage” the McDonald’s mark to gain attention for 

the Coalition’s critique, but because the Coalition’s use is for noncommercial

 purposes and not in connection with the sale of goods or services to consumers, it

is not subject to regulation by trademark law. Indeed, that kind of “leveraging” is

essential to critical speech about all kinds of markholders. NoDaddy.com, a

noncommercial “gripe site” founded by a frustrated former customer of domain

name registrar GoDaddy.com, clearly plays on the “GoDaddy” mark to call

attention to the gripe site’s critique. However, because NoDaddy does not use the

mark in association with a good or service, its use is not subject to regulation under 

the Lanham Act.4 

4 Moreover, courts have consistently permitted such free riding even in the contextof commercial speech where, as here, the use is not a trademark use. In  Holiday

 Inns, Inc. v. 800 Reservation, Inc. 86 F.3d 619 (6th Cir. 1996), for example, theSixth Circuit Court of Appeals recognized that a reservation service that took 

advantage of a common misdialing of plaintiff’s mark (1-800-HOLIDAY) did notinfringe the mark because it never used the mark. Similarly, in DaimlerChrysler 

 AG v. Bloom, 315 F.3d 932 (8th Cir. 2003), the Eighth Circuit held that there was

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B.  Rescuecom’s Theory, if Adopted, Would Allow Improper Attacks onDigital Speech Intermediaries

Rescuecom’s appeal not only seeks to undermine the protections afforded to

noncommercial speakers under the “trademark use” doctrine; it also attacks the

 protections afforded to the intermediaries upon which noncommercial speakers— 

 particularly online speakers—rely.

The evolution of free speech online has depended on the evolution of search

and information location technology. From menu-driven websites to directory

services to domain names to keyword searching, digital intermediaries like Google

have always helped citizens and consumers find the information they need to make

informed decisions. Indeed, such tools and services are one of the few

mechanisms for small political groups to reach broad audiences online. Just as the

Internet gives a small soda bottler the ability to buy the virtual shelf space next to

no trademark infringement where the defendant licensed, to several Mercedes

dealers, use of a phone number that could be interpreted to spell “1-800-MERCEDES,” without Mercedes’ authorization.  Id. at 935-39. Potential

customers around the country could call this number and be switched to localdealers who joined the network. Those local dealers, all of whom were authorized

to use Mercedes’ marks, regularly advertised the 1-800 MERCEDES service.However, the defendant did not promote or advertise Mercedes’ marks itself.

Absent that advertising or promotion, the court held, there was no infringing use. Id. at 939; see generally Mark Lemley, Property, Intellectual Property, and Free

 Riding , 83 TEX. L. R EV. 1031(2005)(arguing that free riding is a socially beneficial practice that falls outside the scope of intellectual property law). If the Lanham Act

does not regulate such commercial free riding, it surely cannot regulate associatednoncommercial uses.

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Coke, it also gives the Coalition of Immokalee Farm workers the opportunity to

reach millions with their message. The theory asserted by Rescuecom could put a

rapid end to this extraordinary opportunity.

Physical world examples may help bring the matter into relief. If the

Coalition purchased space on a billboard that was located next to a McDonald’s

restaurant to publish a political message about labor conditions in McDonald’s

supply chain, we would not think for a moment that McDonald’s could

successfully allege that the billboard company was making a “trademark use” of 

the McDonald’s trademark within the meaning of the Lanham Act by leasing that

space to the Coalition; nor would we would think Procter & Gamble had a

trademark cause of action against a retailer that placed a generic cough syrup next

to Nyquil on its shelves. See generally 1-800 Contacts, 414 F.3d at 411 (product

 placement in retail stores does not violate Lanham Act). Because these

intermediaries do not have to worry about frivolous trademark suits, they can

continue to offer entities like the Coalition opportunities to speak and generic firms

opportunities to compete for lowest price and highest quality with the name brands

on their shelves.

Yet Rescuecom’s theory would encourage exactly that type of speech-

chilling and anti-competitive litigation. Indeed, Rescuecom would like to give

markholders the advertising veto right soundly rejected by this Court in 1- 800

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Contacts. In that case, this Court noted the absence of legal authority for the

 proposition that “advertisement, software applications or any other visual image

that can appear on a C-user’s computer screen must be authorized by the owner of 

any website that will appear contemporaneously with that image.” Id. at 412.

Here, Rescuecom apparently believes it has the right to authorize (or deny

authorization to) any message that appears contemporaneously with a computer 

user’s search results when they happen to type “Rescuecom” into a search box. If 

that were the rule—and it is not—McDonald’s could use trademark claims to force

Google to remove the Coalition’s messaging; other trademark holders could do the

same against their critics. Thus, companies could head competitors and critics off 

at the pass by preventing the mere act of outreach via sponsored links. Such a

result flies in the face of decades of careful balancing between trademarks and

speech, and would drastically curtail one of the significant benefits the Internet

offers to noncommercial and small commercial speakers—the ability to reach new,

 broad audiences relatively cheaply.

In order to ensure such barriers are not unnecessarily imposed on online

speech, the Court should protect intermediaries that offer opportunities for speech

under the same “trademark use” approach taken in Bosley and 1-800 Contacts.

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IV. CONCLUSION

Trademark rights place restrictions on language. The trademark use

requirement helps ensure that those restrictions apply only to the extent that they

serve the broader goal of easing access to high quality information. Rescuecom

asks the Court to allow the markholders to use their marks to accomplish the

opposite goal—to limit Internet users’ ability to gather information and

noncommercial groups’ ability to reach those users. This result must not be

tolerated. The decision of the lower court should be affirmed.

DATED: February 22, 2007By

Corynne McSherry, Esq.ELECTRONIC FRONTIER FOUNDATION454 Shotwell StreetSan Francisco, CA 94110

Telephone: (415) 436-9333 x123Facsimile: (415) 436-9993

Attorney for Amicus CuriaeELECTRONIC FRONTIER FOUNDATION

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CERTIFICATE OF COMPLIANCE

As required by Fed. R. App. P. 32(a)(7), I certify that this brief is

 proportionally spaced and contains 3,968 words.

I certify that the foregoing information is true and correct to the best

of my knowledge and belief formed after a reasonable inquiry.

DATED: February 22, 2007 ELECTRONIC FRONTIER FOUNDATION

ByCorynne McSherry, Esq.Staff Attorney

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ANTI-VIRUS CERTIFICATION FORM

Pursuant to Second Circuit Local Rule 32(a)(1)(E)

CASE NAME: Rescuecom v. Google, Inc.

DOCKET NUMBER: 06-4881-cv

I, Mariana Braylovskaya, certify that I have scanned for viruses the PDF

version of the

 ________ Appellant’s Brief 

 _______ Appellee’s Brief 

 ________ Reply Brief 

 ___X____ Amicus Brief 

that was submitted in this case as an email attachment to <[email protected]>and that no viruses were detected.

Please print the name and the version of the anti-virus detector that you used:

Symantec AntiVirus version 10.0 was used.

 ________________________________ Mariana Braylovskaya

Date: February 22, 2007