Lawyer Advertising, Privacy, Small Law Firms, Technology, Trademarks

Buying the Names of Your Competitors Is Good Business, Totally Shady

Can you buy the names of your competitors for advertising purposes? Wisconsin says, "yes!"

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If you have a mediocre law firm, here’s a new trick — just buy the ad-search rights to the names of better law firms. Every time someone searches for the better firm, a nice big ad for your firm will pop up.

Does that sound dirty? It kind of seems like cashing in on the good will of another firm. Not to mention the personal identities of the lawyers at the better firm.

So, yeah, it sounds dirty and not possibly legal.

Well, a state appeals court decided it was totally legal….

On Thursday, the Court of Appeals’ first district in Wisconsin blessed a local personal injury firm’s unique brand of identity — well, not theft — “friendly borrowing.”

We’ve actually written about the basics of this case before, but with a very different take. The firm at the center of the lawsuit is Cannon & Dunphy. In 2009, its named partners had the admittedly clever idea that they could purchase the ad-search rights for partners from Habush Habush & Rottier, a much larger, much older firm. With “Habush” and “Rottier” successfully purchased, Cannon & Dunphy started placing ads on user searches for the other firm. This tactic reminds me of George Lucas’s re-releases of the original Star Wars movies: I went looking for a particular thing, and someone plastered unwanted images all over it.

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Habush Habush & Rottier filed suit. Unlike the companies in higher profile actions, such as the Rosetta Stone case, where the language-learning software giant filed trademark claims for counterfeiters buying ad-search rights for “Rosetta Stone,” Habush and Rottier, as individuals, alleged a breach of Wisconsin’s privacy law:

The use, for advertising purposes or for purposes of trade, of the name, portrait or picture of any living person, without having first obtained the written consent of the person or, if the person is a minor, of his or her parent or guardian.

Judge Paul Lundsten wrote for the appellate court that Habush and Rottier were out of luck:

We conclude that Cannon & Dunphy’s interpretation is also reasonable because it is consistent with case law on which the statute is based and on case law interpreting statutory language that is comparable for our purposes. In every case brought to our attention by the parties and discovered in the course of our own research, the “use” of the name or image at issue was a visible part of some sort of promotion or product.

Well, sure, no one saw the words “Habush” or “Rottier” in the computer code, but the fact that the magical series of tubes known as the Interwebs hadn’t been invented when the courts decided the cited cases (and they cite cases as far back as the 1930s), doesn’t mean the names of these two lawyers aren’t being taken for the purpose of maximizing Cannon & Dunphy’s advertising.

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Cannon & Dunphy succeeded in convincing the court that their use of their competitor’s names is more akin to locating an office on the same block:

We agree with the circuit court, and with Habush’s and Rottier’s apparent concession, that locating an advertisement or business near an established competitor to take advantage of the flow of potential customers or clients to the established business is not a practice the legislature intended to prohibit by adopting WIS. ST A T. § 995.50(2)(b). This strategy undeniably takes advantage of the name of the established business and its ability to draw potential customers, but the strategy does not “use” the name of the business in the same way as putting the name or image of the business in an advertisement or on a product.

Except it’s not a perfect analogy. A perfect analogy is forcing a prospective client walking into an office to walk through a banner ad for another firm like a football team coming out of the tunnel for homecoming conveniently placed right outside the reception area. It’s perfectly targeted to the user’s precise search, much more than leasing an office down the street.

In our previous article, we praised the strategy of Cannon & Dunphy as a success for offering a small firm choice to consumers conducting a search for the most prominent firm in the area. I can understand why a small firm might see this as a savvy marketing strategy.

I just can’t share that viewpoint. The strategy crosses into personal when the names of a competitor are purchased. It’s not like buying an ad where a consumer is searching for “personal injury in Wisconsin.” The precedent set in the trademark cases should apply here as well. Maybe the Wisconsin privacy statute wasn’t written to deal with this situation, but the law should protect a law firm’s name the same as it does the trademark of companies like Rosetta Stone.

Habush and Rottier are still mulling over appealing this decision to the Wisconsin Supreme Court.

In the meantime, if you’re a struggling firm in Wisconsin, the ad reps from Google, Bing, and Yahoo! are eagerly awaiting your ad buy.

Law firms wage war of ad-search words in court [Thompson Reuters News & Insight]

Earlier: Size Matters: An Important Victory For Small-Firm Advertising

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