Hartford Business Journal

www.HartfordBusiness.com • February 19, 2018 • Hartford Business Journal 7 What Can We Do For You? 860.871.1111 www.nemsi.com 166 Tunnel Road, Vernon, CT 06066 Choose an Award-Winning Partner For Over 50 Years, Clients Have Counted On NEMSI For: • HVAC, Plumbing and Process Piping • Design-Build Construction • Energy Management Systems • LEED Certification Programs • Electrical Services • Comprehensive Preventive Maintenance Programs • 24/7/365 Emergency Response Recent Awards Include: » ABC Platinum Safety Award » ABC Accredited Quality Contractor (ABC-AQC) » ABC Excellence in Construction Award » ABC Specialty Contractor of the Year » Contracting Business First Place Design/Build Award License #s: E1-104939 • S1- 302974 P1- 203519 • F1- 10498 • SM1-192 • MC-1134 Offices in: New London | Trumbull | Pawtucket, RI | Palmer, MA | Manchester, NH | Albany, NY away you have to start asking the question, 'what's it going to take to win, financially?' " he said. While Goldman says Edible will run into plenty of precedent by resurfacing the issue of trademark infringement and search keywords, he said the suit appears to raise an issue that could be more novel to the court: The way Google displays competitors' paid ads adjacent to search results. A screenshot filed as an exhibit with the Edible suit (shown on PG. 6) shows a Google search of "edible arrangements" displaying an adjacent box containing paid ads from both Edible and its competitors. Above the box, a header reads "Shop for edible arrangements on Google" with a "Sponsored" disclaimer in gray font further to the right. "The net result of this display is that consumers are deceived into thinking competitive products come from or are associated with Edible Arrangements, Edible Arrangements' valuable trademark is placed in jeopardy, and Google profits handsomely," the complaint alleges. It's unclear when the screenshot was taken, but earlier this month, a reporter's search of the same phrase turned up an abbreviated header over the box, reading "Shop for edible arr … on Google." And as of a Feb. 13 search, the header had changed again, reading simply "Shop on Google." Confusion is key For Edible Arrangement's suit to succeed in a trial, it would have to prove that consumers were confused by the appearance and format of competitors' ads next to its Google search results, which would require expert testimony and survey evidence, said Michelle Ciotola, a partner in the Hartford office of intellectual property law firm Cantor Colburn. "To succeed, a plaintiff is going to need to overcome the prevailing view of the courts that consumers are adept at distinguishing between sponsored links and organic search results," Ciotola said. "Courts have tended to view consumers using search engines as sophisticated enough to recognize a sponsored link, generated from putting a trademark into a search browser, as originating from either the trademark owner or a competitor." The strength of the Edible Arrangements trademark may also come into play, she said. If someone searches for Edible Arrangements, are they looking for fruit arrangements from the company specifically, or are they using the phrase in a more descriptive sense? What's it mean for advertisers? Advertisers are certainly bidding on competitors' names as search keywords, but it's tough to gauge exactly how common it is. A 2010 study determined that somewhere between 2.7 percent and 6.4 percent of ads searched were triggered by trademarked keywords on major search engines. Goldman said habits differ by industry, but when one participant starts doing it, others typically follow. Cashman + Katz's Notartomaso said he doesn't often advise his clients to piggyback on competitors' names. He's not so much worried about eliciting a lawsuit or creating a perception of dirty play. It's more about what's best for the client. "There's a time and a place for everything," he said. "We try to stay away from it because it does not necessarily bring the best return on investment." Getting sued is always a possibility in business, but as the law appears to be on the side of keyword piggybackers, there's another, perhaps counterintuitive, legal liability to think about, said Goldman. He pointed to the Federal Trade Commission's ongoing 2016 administrative lawsuit against 1-800 Contacts, alleging it had orchestrated a series of anti-competitive agreements with its rivals, who agreed not to bid on each other's trademarked terms. The FTC, which is still hearing the case, alleged that the deals between rivals "suppress competition in certain online search advertising auctions" and "restrict truthful and non-misleading internet advertising to consumers." In other words, the FTC sees piggybacking as a legal business practice that companies shouldn't be allowed to manipulate behind the scenes to mislead consumers. "Now, trademark owners must be thoughtful about whether keyword enforcement actions are anti- competitive," Goldman said. Eric Goldman, Professor, Santa Clara University School of Law Michelle Ciotola, Partner, Cantor Colburn "Many suits against Google have evaporated. I thought we might never see another case." Eric Goldman , Professor, Santa Clara University School of Law

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