Lawyers as Cyberpirates? Say it Ain't So.

March 28, 2013, 3:36 PM

While many companies have tried to further their competitive positions by purchasing competitors names and trademarks as adwords on Google and other search engines, such activity does not seem to be particularly prevalent in the legal profession. However, a recent decision by a Wisconsin state appeals court illustrates that it can happen here. In the case in question, one prominent personal injury law firm in Wisconsin, Cannon & Dunphy, purchased the names of principals of a competing firm, Habush, Habush & Rottier, as Google adwords. This resulted in Cannon & Dunphys ad appearing when someone initiated a Google search on either of the names Habush or Rottier. The case was first brought in 2009, moved through various levels of the state court system, and culminated in a Wisconsin Court of Appeals decision in favor of Cannon & Dunphy on February 21, 2013.

Most adword disputes of this sort are fought between the party objecting to the use of its name by a competitor and Google, and are based on allegations of trademark misuse or infringement. While outcomes in these cases have generally been favorable to Google, courts deciding them have found the Google adword activity to constitute trademark use, even where the trademark does not appear in the competitors ad triggered by the adword.

The Wisconsin case between the two law firms was different not only because Google was not a party to it, but because instead of being based on trademark law, the plaintiffs alleged that use of the Habush and Rottier names as adwords by Cannon & Dunphy constituted violations of a Wisconsin statute protecting individuals rights of privacy and publicity. In fact, in its ruling favorable to Cannon & Dunphy, the court explicitly ruled that the adword activity did not constitute use of the individuals names for purposes of the Wisconsin statute.

After waging this battle for more than three years, one might have expected the two Wisconsin trial firms to soldier on with an appeal to the state Supreme Court. That may still happen, of course
but maybe not, considering that Google, Bing and Yahoo searches on the names Habush and Rottier on the day this posting was written did not show any results other than ones for the Habush, Habush & Rottier firm. In other words, it appears that despite winning the day in court Cannon & Dunphy has discontinued its use of its competitors names as adwords on those search engines. --Robert E. Smartschan