Legal issue, need advice

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Hi Guys,

I am an internet marketing specialist from Australia.
Like most people who work with adwords I do keyword research and relevant good traffic keywrod are being picked up.
Lately one of my clients got a letter from a law firm requesting damages and saying their trade mark was breached.
The issue is like this:
1. the ad involved is a dynamic ad, so this means it echos the keyphrase as it was typed as the title of the ad.
2. the keywords we had in as a keyphrase where "trade marked keyphrase
+ the word Melbourne"

Observably we where happy to remove any keyword/phrase but I am a little worried about the compensation issue.

Did any of you run into this? any advice you can supply? I was researching online, and it looks like there is no clear answer.

Please let me know what you think,
Thanks Eco.
#advice #issue #legal
  • Profile picture of the author PaulBaker
    hey eco,

    This isn't the place I'd be asking for legal advice.

    I would be forwarding any legal correspondence to my own solicitor.

    Any comments here would be purely speculation and pretty much useless to you.
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    • Profile picture of the author Digibite
      Originally Posted by PaulBaker View Post

      hey eco,

      This isn't the place I'd be asking for legal advice.

      I would be forwarding any legal correspondence to my own solicitor.

      Any comments here would be purely speculation and pretty much useless to you.
      Hi Paul,


      Sure I am aware of this, I just want to know what people here know, if they run into the same situation what where the steps they took.
      If they did run into this how did it resolve it self?
      Maybe they did some research and they know what the law says about it.
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    • Profile picture of the author jking1
      Originally Posted by PaulBaker View Post

      hey eco,

      This isn't the place I'd be asking for legal advice.

      I would be forwarding any legal correspondence to my own solicitor.

      Any comments here would be purely speculation and pretty much useless to you.
      I'm not agreed. OP may get good advices from this forum members. Its relate to keywords.
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      • Profile picture of the author PaulBaker
        Originally Posted by jking1 View Post

        I'm not agreed. OP may get good advices from this forum members. Its relate to keywords.
        Of course, what was I thinking.
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      • Profile picture of the author kaytav
        Originally Posted by PaulBaker View Post

        Of course, what was I thinking.
        LOLzz......

        Originally Posted by jking1 View Post

        I'm not agreed. OP may get good advices from this forum members. Its relate to keywords.
        What's your advice??:rolleyes:
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        • Profile picture of the author Digibite
          Any thing guys?
          What with all the experts out there, and the day to day advertising, no one have run into this issue?
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      • Profile picture of the author Mike Anthony
        Originally Posted by jking1 View Post

        I'm not agreed. OP may get good advices from this forum members. Its relate to keywords.

        Ummmm....what part of the thread title did you miss?

        "Legal issue, need advice"

        OP one piece of advice and the only one anyone here can give you - get legal advice from a lawyer in Australia. Sounds like you admit you have been using their trademark so its all a matter of how serious they are. If they are then you can at least be expected to be fired.
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        • Profile picture of the author nik0
          Banned
          I think I would threaten them with 1.000.000 xrumer and blog comment links
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  • Profile picture of the author Digibite
    I think its an interesting topic don't you ? as most people here will be using adwords
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  • Profile picture of the author PaulBaker
    I agree it's an interesting topic.

    There won't be much of a precedent for this sort of thing in Australia and whether it's worth pursuing will depend on the amount of money involved and whether that can be quantified.

    But hey, I'm speculating.
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  • Profile picture of the author Digibite
    Hi Mike,

    This is the first letter we got (my client got). and they are already asking for potential damages.

    The thing is, none of us can check every keyword before we put it in.
    Also are they really able to claim damages automatically? isn't it a little over the board? why not first contact us and alert us?
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    • Profile picture of the author Jack Gordon
      Originally Posted by Digibite View Post

      Also are they really able to claim damages automatically? isn't it a little over the board? why not first contact us and alert us?
      But if they did that, then they wouldn't be able to demand exorbitant sums of money in the hopes you'll be so scared of a legal threat that you'll pay up.

      I have some advice for you with 2 caveats: first, I am in the US, and anything I say reflects my own experiences over here, and second I am not a lawyer and you shouldn't listen to anything I have to say that sounds like legal advice because I am utterly unqualified to offer it.

      With that out of the way, I would offer you this observation: Anybody can sue anybody for any amount over any conflict (real or perceived) at any time. Does that mean they will? Of course not.

      It is one thing to send a scary letter. It is entirely another thing to act on it. Google "Getty Images Extortion Letter" - this is a great case study of a big company sending thousands of letters claiming they have been damaged and demanding huge sums, but in reality they never (or very, very rarely anyway) actually sue.

      They will send letter after letter escalating the situation until the recipient breaks from the stress or they decide they'll never collect and give up.

      Will this company sue you? Maybe.

      Now go get this in front of an actual lawyer and get some real advice.
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    • Profile picture of the author MikeFriedman
      Originally Posted by Digibite View Post

      Hi Mike,

      This is the first letter we got (my client got). and they are already asking for potential damages.

      The thing is, none of us can check every keyword before we put it. Also are they really able to claim damages automatically? isn't it a little over the board? why not first contact us and alert us?
      They should ask for damages. They don't have to give you a warning for infringjng on their trademark. You can and should be checking every keyword. That is part of your job as an SEO.

      You also should stop asking people here for advice. You NEED to discuss this with an attorney. Any advice you get here is potentially wrong and could get you into more shit than you are in already.
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  • Profile picture of the author pjman
    Your best advised to just clean up your act and make them file a motion. I wouldn't respond at all until they get you in court. That costs so much, I doubt they make it that far.
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  • Profile picture of the author Digibite
    I am fully aware that people here are not lawyers, but they are the people who do the advertising.
    So this is exactly why I asked this question here.

    I have advised my client to get a lawyer and replay to their letter.
    I also advised him that we complied with their demands.

    But this does not mean that the question I was asking is not valid.
    And in response to @MikeFriedman do you check all your keyword for trademark? does any one? it is important for me to know, am I slack? or should I charge 3 times more and actually do what you @MikeFriedman said, and spend x3 of my time checking every keyword?
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  • Profile picture of the author MikeFriedman
    Of course I check any keywords that are potentially trademarked keywords. It takes no time at all.
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  • Profile picture of the author nik0
    Banned
    If you know the brands in your niche then you can easily find them with search & replace in a txt editor.
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    • Profile picture of the author Digibite
      Hi Guys,
      Well if it was MY niche, than OK I understand what you mean.
      In reality as I do internet marketing for lots of companies it is hard to know every thing, and these things can happen.

      did any of you get a letter before?
      MikeFriedman sounds like your on the ball with this stuff but are you working for your self on your own projects? or are you advertising other people?

      maybe I should get my guy in India to do some more research before I approve ads
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      • Profile picture of the author Mike Anthony
        Originally Posted by Digibite View Post

        maybe I should get my guy in India to do some more research before I approve ads
        take your business seriously before you get some other company in problems because sooner or later the company is going to be coming after you with a lawsuit

        and based on what you have shown in this thread they would win.

        Well if it was MY niche, than OK I understand what you mean.
        Thats a cop out. You take money from a company to advertise for them then that becomes your niche. if this is some generic name then you can defend against a lawsuit but I dunno seems like you know it isn't. Sounds like you might have decided to get cute with a competitors trademark and got caught and yeah charge three times more

        if it means doing a good job you don't have to join the lowest quality providers list. We don't have to wsoize everything.
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  • Profile picture of the author Gareth Mailer
    Em, not sure about this one. As far as I'm concerned I ALWAYS avoid using trademarks in Ad Creative - targeting brand terms however, everyone does it; they just don't use the term in the Ad Creative, for this exact reason.

    If it's any consolation, up until a few years ago I used to get trademark letters through all the time, and rightly so. The main reason was because I used to register trademark domains i.e. asosdiscountcode.org.uk, build unique content on them, push them to top spot in search, drive tons of traffic, and stick AdSense ads on them. I was making a small fortune (well a relative fortune for a 21 year old, I'm doing substantially better now without resorting to such tactics!) across about 50 company's, until Google pulled my AdSense account (I got about 5 or 6 TM letters).

    I was totally in the wrong, but nothing ever happened about it - I was also lucky and at the time, stupid and naive.

    Not that any of this helps you, of course - just sharing experience.
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  • Profile picture of the author squadron
    Originally Posted by Digibite View Post

    Hi Guys,

    ...
    Lately one of my clients got a letter from a law firm requesting damages and saying their trade mark was breached.
    The issue is like this:
    1. the ad involved is a dynamic ad, so this means it echos the keyphrase as it was typed as the title of the ad.
    2. the keywords we had in as a keyphrase where "trade marked keyphrase
    + the word Melbourne"

    Please let me know what you think,
    Thanks Eco.
    There was a very similar case a few years ago where two Melbourne car yards had a fight about trademarks in Adword ads. It was Google who ended up in court. Google was held as being liable as well as the advertiser.

    As a result of this decision aggrieved brand owners may have recourse not only against the advertisers responsible for the advertisements but directly against Google. The High Court is likely to revisit the issue of Google's liability later this year.

    Here's some reading for you: Recent Google AdWords cases in Australia: from googles to spectacles | Davies Collison Cave

    If I were you I'd just get a lawyer to write to the other party saying it was an honest mistake that has been addressed and the trademarked keyword removed from the campaign. I would not offer or pay any compensation.
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    • Profile picture of the author Mike Anthony
      Originally Posted by squadron View Post

      If I were you I'd just get a lawyer to write to the other party saying it was an honest mistake that has been addressed and the trademarked keyword removed from the campaign. I would not offer or pay any compensation.
      I thought the same when I first saw this but the OP seems to indicate he knows he's in the wrong so the trademark violation must be pretty obvious. THats the other thing about this thread that makes it a poor place to get advice. No one commenting has any details.
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      • Profile picture of the author Digibite
        Originally Posted by Mike Anthony View Post

        I thought the same when I first saw this but the OP seems to indicate he knows he's in the wrong so the trademark violation must be pretty obvious. THats the other thing about this thread that makes it a poor place to get advice. No one commenting has any details.
        Well after we got the letter, I did a trademark check, and saw we where in the wrong.
        We than removed any thing related to the trademarked keyphrase.
        The think is, the as is dynamic, so in the user types "This Is My Trademark" this is exactly how the ad will show the title of the ad.

        So... this is why it is all getting confusing.
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        • Profile picture of the author Mike Anthony
          Originally Posted by Digibite View Post

          Well after we got the letter, I did a trademark check, and saw we where in the wrong.
          We than removed any thing related to the trademarked keyphrase.
          In that case I'll withdraw what I said before but all the more reason you need to get legal advice from your own municipality. To get damages I would think they would have to show some intent but again everything in this thread is worthless next to getting real legal advice.
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          • Profile picture of the author Gareth Mailer
            Originally Posted by Mike Anthony View Post

            In that case I'll withdraw what I said before but all the more reason you need to get legal advice from your own municipality. To get damages I would think they would have to show some intent but again everything in this thread is worthless next to getting real legal advice.
            This. Never rely on t'internet for issues such as these.
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    • Profile picture of the author PaulBaker
      Originally Posted by squadron View Post

      There was a very similar case a few years ago where two Melbourne car yards had a fight about trademarks in Adword ads. It was Google who ended up in court. Google was held as being liable as well as the advertiser.
      You need to check this, I believe Google appealed and won that one in the High court. Which actually means advertisers are responsible for trademark infringement not Google.

      Also also far as Trademarks go Eco, they should be included in any negative keywords for your campaign.
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  • Profile picture of the author PaulBaker
    Thanks for going to the effort of finding that.
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  • Profile picture of the author FakeItTilYouMakeIt
    Banned
    Not giving advice but I had a client that went through this prior to hiring me, could be smoke and mirrors though very unfortunate that in the OP it sounds like the trademark infringement was against a law firm. They will badger you to death, they are lawyers that's what they do. Be aware that trademark infringement cases can be very costly, if they don't have much of a case I don't know if they'd be willing to gamble.

    Anyways the client in question did some ads using a very reasonable niche keyword and an obscure company came out of the woodwork with trademark on that keyword. It was thrown out because my client made a case for an honest mistake without malicious intent. You still definitely need a lawyer
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  • Profile picture of the author PaulBaker
    A Saturday morning blast from the past for my fellow Aussies.

    And, a special dedication to you, Eco.

    Cruel Sea - You Better Get A Lawyer (Studio 22) - Tex Perkins/Beasts Of Bourbon related - YouTube
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  • Profile picture of the author Digibite
    Hi Guys,

    I think there is some misunderstanding here:
    1. It is a company and NOT a law firm that the trademark belongs 2.
    2. The key phrase was general and was not put in, with intent.

    I think most of us here in the marketing area are honest, and will not do something like that on purpose.
    When I set a campaign for a client I search for good traffic relevant keyphrases.
    I think what got them angry is that they typed their trademark into google and saw out ad BUT, the ad in dynamicly generated, so the could type "This Is my trade Mark" and the title of the ad will be "This Is my trade Mark" or the could type " this is not my trade mark" and the ad will show " this is not my trade mark".
    So this is is the issue, yes it is a general keyphrase and the ad is dynamically generated.

    I did NOT make an ad with their trade mark in the title and try and get their clients. it is simply a keyphrase.

    Now if they got a letter out asking us to remove the keyphrase other wise they will take action, I can fully understand that, but to go and write a letter and say you must agree to remove the keyphrase and agree for compensation ? I feel that this is going a little over board.

    Another point I will like to make is that now that we are chatting nicly on the net and each word is writen, who knows what trade mark we break it makes this whole game very diffrent, its like stepping on egg shell
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  • Profile picture of the author Icematikx
    You're not going to get any specific details without posting what keyword was used, their brand name, their trademark and so forth.

    A good start would be to go and look through their finances. If it was a £10k profit company threatening legal action, I would ignore it. If it was Amazon sending the letter, I'd be splitting my cheeks in half and bending over.
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    • Profile picture of the author Digibite
      Originally Posted by Icematikx View Post

      You're not going to get any specific details without posting what keyword was used, their brand name, their trademark and so forth.

      A good start would be to go and look through their finances. If it was a £10k profit company threatening legal action, I would ignore it. If it was Amazon sending the letter, I'd be splitting my cheeks in half and bending over.
      Its not a big company, but they are apparently advertising on TV (I dont have a TV for the last 13 years so I wouldn't know).

      Anyway, my clients budget is around the $1000 p/m mark, and with keywords costing up to $8 per click, we are not getting a huge amount of traffic.

      Anyway Just for every one to know (I am not a lawyer and I take no responsibility for this information in a legal bla bla bla), Google do actually support the enforcement of trademark owners.
      there is a form they can fill up and by doing this, google will remove ads showing with their keywords.

      So here are some useful links:

      AdWords Trademark Policy - Advertising Policies Help

      google trade mark form( for trade mark owners): https://services.google.com/inquiry/aw_tmauth


      In saying that I still think this company went over board. isnt it more simple to make a phone call? save a few hundred dollars? why are people so scared?, I mean yes I can see how you can get angry, but isn't the first step to communicate with the other company and try and resolve the issue?

      You know if I was a lawyer, I would take this law company into court for bullying, because this is exactly what they are doing.

      Anyway this is now just my rant. I hope the links help some one.
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  • Profile picture of the author Entrecon
    Depending on the company and the trademark you may not have been the first to infringe. If they run into this on a regular basis they just have their counsel deal with it. The other thing to look at in some of these cases is if it is an on staff/company lawyer or if it is an outside firm. If it is a company lawyer or one they have on retainer he is just sitting around looking for things to do for the company so he has to find stuff to do.

    I know you indicated that the company you did this for got an attorney, but have you? Have you reviewed your contract with them to see if you have any liability? Have you checked with your insurance company to see if you are covered for this type of liability if a judgement is found against you?
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    • Profile picture of the author MikeFriedman
      Originally Posted by Digibite View Post

      In saying that I still think this company went over board. isnt it more simple to make a phone call? save a few hundred dollars? why are people so scared?, I mean yes I can see how you can get angry, but isn't the first step to communicate with the other company and try and resolve the issue?

      You know if I was a lawyer, I would take this law company into court for bullying, because this is exactly what they are doing.

      Anyway this is now just my rant. I hope the links help some one.

      What an attorney explained to me is that part of having a trademark is that you are legally obligated to enforce that trademark protection. If you let one company get away with infringing on it, but then decide to go after a second company that infringed on it, the second company can use the fact that the first company was allowed to infringe on the copyright as part of their defense. On top of that, your trademark can actually be taken away if you are not actively enforcing it.

      As far as them going too far... if someone was stealing from you, would you kindly ask them to stop it or would you take legal action? I think most of us would take legal action.
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