(note: I co-wrote this article with Fernando M. Pinguelo[1])

            Recently, the Wisconsin Court of Appeals declared that using a competitor’s name as a keyword for online advertising does not run afoul of the relevant state law that guarantees a “right of privacy.”[2]  In 2009, Wisconsin law firm Cannon & Dunphy (“Cannon”) began to use the words “Habush” and “Rottier” as keywords when purchasing online advertising through Google, Yahoo!, and Bing.  By doing so, Cannon ensured that web users searching for their competitor’s law firm, Habush Habush & Rottier (“Habush”), would see Cannon’s sponsored advertisement appear above the organic search results.   Habush sued on the grounds that such use of their name violated a “right of privacy” codified in Wisconsin statute § 995.50.

            Wisconsin recognizes a "right of privacy," and when that right is "unreasonably invaded" an injunction, compensatory damages, and attorneys’ fees can be imposed.[3]  Under the statute "invasion of privacy" includes "[t]he 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[.]"[4]

            Cannon attempted to focus the argument on whether or not its "use" was "unreasonable" under the statute.[5] The court refused to consider the additional concept of "unreasonable invasion," stating that “this framing of the issue needlessly complicates resolution of this particular dispute.”[6]  Instead, its sole consideration was whether purchasing online advertising based on a competitor’s name was in fact a "use" contemplated by the drafters of § 995.50.[7]

            Habush’s essential claim was that a § 995.50 “use” means any employment of a name or image for the purpose of exploiting its commercial value.[8]  This interpretation of “use” would push the Wisconsin privacy statute closer to the “right of privacy” found in the Restatement of Torts,[9] where the name, image, or persona are protectable, as a sort of property right, from appropriation for another’s “use or benefit.”  According to Habush, because only incidental “uses” were not covered by the statute, and because Cannon “used” the name of Habush for economic benefit Cannon’s “use” was not merely incidental and was therefore violative of § 995.50.[10] 

            Under Cannon’s contrary view, to violate the statute, the “use” had to be one that was visible to the public.[11]  An example would be incorporating a person’s name or image into an advertisement that was presented to the public at large.  Reviewing similar privacy rights in other states, the court found that every instance required a publicly visible “use” of a protected name or image.[12]

Adopting Cannon’s view, the court held that “non-visible” types of “use,” such as in keyword advertising with search engines, were not what the drafters of § 995.50 meant to include in their definition of the word.    In reaching this conclusion, the court analogized the function of keyword advertising to that of billboard advertising and office location in the physical world.[13]  If Cannon had decided to open a branch office next to Habush in order to divert some of Habush’s foot traffic to its own office, there would be no violation of § 995.50.  Similarly, if Cannon had leased billboard space directly across from Habush in order to siphon off potential customers, there would be no violation.  But under Habush’s unavailing interpretation of § 995.50, such “uses” would be violative.

The court held that Cannon’s business strategy, even though intended to take advantage of Habush’s name, did not run afoul of the statute because the claimed “use” was merely an attempt to juxtapose Cannon with Habush in the minds of web searchers.  Thus, the “use” of the name in purchasing online advertising was more about proximity and less about attempting to incorporate or capitalize on the value of Habush’s name directly. 

            It is important to note that the court did not decide to permit all “non-visible” types of use.[14]  Rather, the court explicitly limited the application of this rule to covering the use of names in the context of Internet keyword advertisements and left open the question of whether it would apply to other contested uses.

 

Key Takeaways:

- Purchasing online advertising based on a competitor’s name will not be considered a forbidden “use” for the purposes of Wisconsin law under § 995.50.  It is important to note that this decision was handed down by a single intermediate appellate court and is thus new law subject to further interpretation.  In particular, this decision is still be subject to review by the Wisconsin Supreme Court.

- This decision is strictly limited to the use of names for online keyword advertising, such as ads purchased through services like Google’s Adwords, Yahoo!, and Bing.

- The court declined to rule on whether there was in fact an additional requirement related to “unreasonable” uses of such names. Thus, it is possible that uses of names in other contexts are protectable because they can be shown to be not “unreasonable.”  On the other hand, it is possible that the “unreasonable” language in § 995.50 will not ultimately constitute an element.

 

[1] Fernando M. Pinguelo, a Partner and Chair of the firm’s Cyber Security & Data Protection Law Group, is a U.S.-based trial lawyer who devotes his practice to complex business lawsuits with an emphasis on cyber, international, employment, and intellectual property law. To learn more about Mr. Pinguelo visit www.CyberJurist.com or email Fernando@CyberJurist.com.  Kristian Stout is a partner of A&S Technologies, a software development firm, and a J.D. candidate from the Rutgers School of Law. To contact Mr. Stout email Kristian.Stout@A-STechnologies.com.  

[2] Habush v. Cannon, No. 2011AP1769, 2013 WL 627251 (Wis. Ct. App. Feb. 21, 2013).

[3] Wis. Stat. Ann. § 995.50(a).

[4] Wis. Stat. Ann. § 995.50(b).

[5] Habush, ¶10.

[6] Id. at ¶14.

[7] Id. at ¶12.

[8] Id. at ¶¶13,14.

[9] Restatement of Torts § 652C states that “One who appropriates to his own use or benefit the name or likeness of another is subject to liability to the other for invasion of his privacy.”

[10] Habush v. Cannon, No. 2011AP1769, 2013 WL 627251 at ¶19.

[11] Id. at ¶21.

[12] Id. at ¶22.

[13] Id. at ¶26.

[14] Id. at ¶30.

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