May a law firm hijack a competitor’s name in Google Ad Words?
Recently it came come to my attention that whenever anyone Googled my name in the mobile version of Google, the first thing that up was ads for competitors who had purchased my name in Google Ad Words®. After I asked several law firms that had used my name in their Ad Words® advertising to immediately stop, their ads disappeared from searches in my name.
The only remaining company that appears to target my name in Google Ad Words® is Fasthelp.com, a website of uncertain provenance but with an Atlanta phone number, which advertises for unidentified lawyers. I will find out who is behind it, and I will file a Bar grievance against any lawyer who is behind that anonymous website for violation of Georgia Rules of Professional Conduct 7.1(a) and 8.4(a)(4).
This conduct is both unethical and a violation of federal laws.
In the case of Pensacola Motor Sales v. Eastern Shore Toyota, LLC, 2010 WL 3781552 (N.D. Fla., Pensacola Div, decided Sept. 23, 2010), the court strongly disapproved unauthorized use of a competitor’s name in domain names and “ad words” to divert internet traffic. The court held that a complaint of an auto dealer’s misappropriation of the name of a competitor presented genuine issues of fact for jury determination regarding:
- False advertising in violation of he Lanham Act, as codified in 15 U.S.C. § 1125(a). To establish a false advertising claim under § 1125(a), a Plaintiff must demonstrate:
“(1) the ads of the opposing party were false or misleading, (2) the ads deceived, or had the capacity to deceive, consumers, (3) the deception had a material effect on purchasing decisions, (4) the misrepresented product or service affects interstate commerce, and (5) the movant has been-or is likely to be-injured as a result of the false advertising.” North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1224 (11th Cir.2008).
The court held that actual confusion and damages are not required under § 1125(a). Capacity to deceive and likelihood of injury are sufficient. North American Medical Corp. at 1224.
- Unfair competition, also under the Lanham Act. A showing of actual confusion is not essential to recovery in a claim for unfair competition. Bauer Lamp Co., Inc. v. Shaffer, 941 F.2d 1165, 1171 (11th Cir.1991). All that is required is proof of the likelihood of confusion. Id. at 1172. To determine if there is a likelihood of confusion in a trademark infringement action, the Eleventh Circuit considers seven factors: “(1) type of mark, (2) similarity of mark, (3) similarity of the products the marks represent, (4) similarity of the parties’ retail outlets and customers, (5) similarity of advertising media used, (6) defendant’s intent and (7) actual confusion.” Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir.1989). The court rejected the contention that use of a competitor’s identity in ad words did not constitute misrepresentation or cause confusion.
For lawyers to employ such misleading advertising tactics is also a violation of the Rules of Professional Conduct. Rule 7.1(a) of the Georgia Rules of Professional Conduct states, “A lawyer may advertise through all forms of public media and through written communication not involving personal contact so long as the communication is not false, fraudulent, deceptive or misleading.” Rule 8.4(a)(4) provides, “It shall be a violation of the Georgia Rules of Professional Conduct for a lawyer to:. . . engage in professional conduct involving dishonesty, fraud, deceit or misrepresentation.”
There does not yet appear to be a reported case or formal advisory opinion in Georgia on unethical hijacking of other lawyers’ names for Google Ad Words®. However, the North Carolina Bar has determined that bidding on a competing lawyer’s name is unethical. A 2010 Formal Ethics Opinion #14 states:
It is professional misconduct for a lawyer to engage in conduct involving dishonesty, fraud, deceit, or misrepresentation. Rule 8.4(c). Dishonest conduct includes conduct that shows a lack of fairness or straightforwardness. See In the Matter of Shorter, 570 A.2d 760, 767-68 (DC App. 1990). The intentional purchase of the recognition associated with one lawyer’s name to direct consumers to a competing lawyer’s website is neither fair nor straightforward. Therefore, it is a violation of Rule 8.4(c) for a lawyer to select another lawyer’s name to be used in his own keyword advertising.
It is probable that some lawyers and law firms have hired internet advertising agencies to manage their Ad Words® campaigns, unaware that their agents were leading them into ethical violations. Those who do employ such agencies should promptly take action to assure that they are not paying for Ad Words® that hijack the names and reputations of competitors. Those who persist in such unethical conduct should be prepared to face the consequences.
Ken Shigley is a past president of the State Bar of Georgia, past chair of the State Bar’s Tort & Insurance Practice Section, past chair of the Georgia Insurance Law Institute, past chair of the American Association for Justice Motor Vehicle Collision, Highway & Premises Liability Section, and a member of the board of governors of the Academy of Truck Accident Attorneys. He is lead author of Georgia Law of Torts: Trial Preparation & Practice (Thomson Reuters West, 2010-2018). His law practice is focused on catastrophic injury and wrongful death including those arising from commercial trucking accidents and those involving brain, neck, back, spinal cord, amputation and burn injuries. He is licensed to practice law in Georgia. Representation of clients in others states, which possible, can be undertaken only in strict compliance with the multijurisdictional practice and pro hac vice rules of the other state.