Over at Ars, I’ve got a write-up of Rescuecom, an important trademark case that was heard by the Second Circuit last week. I shamelessly ripped off James Grimmelmann’s excellent first-hand write-up of the exchange:

Trademark law is designed to protect consumers by preventing companies from selling their products under false pretenses. The core issue of the Rescuecom case is whether choosing a competitor’s trademark as an advertising keyword is likely to confuse consumers. Rescuecom has argued that Google profits from consumer confusion by obscuring the distinction between organic search results and paid advertising. Google, in contrast, compares its advertisements to a grocery store that stocks a generic product on a shelf alongside its brand-name competitor—a use that courts have consistently upheld as legal.

Last week, the case was heard by a three-judge panel of the Second Circuit. Law professor James Grimmelmann was there, and he gives a thorough summary of the exchange. The argument focused heavily on dueling analogies. Google’s lawyers invoked the grocery-store-shelf analogy and suggested that the situation was akin to handing out flyers in front of a competing restaurant.

Rescuecom’s lawyer countered that there was no concept of “next to” on the Internet. He argued that a consumer entering “Rescuecom” into Google’s search box was expecting to be taken to Rescuecom-owned sites, not to those of Rescuecom’s competitors or critics. He preferred to analogize Google’s actions to a scenario in which a listener calls directory assistance and is read a paid advertisement for a competitor. A judge also brought up a scenario in which a customer asks a druggist for Advil and is given Aleve instead.

My favorite analogy, though, comes from this comment in the Ars forums:

IIRC there was a case like this regarding Pepsi and Coke, where one of them was going around threatening restaurants who provided the competitor’s product when the customer asked for their product. Except that the recommended alternative was for the restaurant to instead tell the patron, “we haven’t got Coke, how about Pepsi instead?” Which seems to be much closer to what Google is doing. When you type in rescuecom and hit “I’m feeling lucky” then you get, not or any other advertisers. When you hit search, you get a long list of results like you’re supposed to. Some of them are competitors and critics as well they should be.

I don’t know what case this might be referring to, but it’s an excellent example for Google’s argument. Not only is this exactly the “ask for Advil, get Aleve” scenario, but there’s no question that both Pepsi and the restaurant are profiting from it. And I’m reasonably certain that this is not regarded as trademark infringement. So if Google does the automated equivalent—search for Rescuecom, get an ad for Geek Squad—I don’t see why that would be different.

One of the largest issues to be considered here at the Los Angeles ICANN meeting is about WHOIS. As the AP reports, there are proposals to eliminate the WHOIS database, modify the information process, or call for more studies. Indeed, there’s a lot of people interested in this topic, particularly privacy advocates on the one side and trademark owners on the other.

But there’s more to this issue than privacy and IP rights. The reality is that WHOIS is important for law enforcement to track criminals that steal personal information.

What is WHOIS? It’s the publicly available database that reveals the contact information for who owns a domain name.  ICANN has grappled about what to do with WHOIS for a long time, and this week we’ll see action by ICANN’s board of directors as to whether to approve a new proposal to create an operational point of contact (OPoC) or to even eliminate WHOIS, so that registrants don’t have to provide their contact information for the whole world — or the dictator in an authoritarian country — to see.

This is a controversial proposal. Registrars – the websites that you go to to register a name – would love to see OPoC because it gives them another point of revenue. They’d be the ones that could operate the systems to designate an OPoC. But there are a lot of questions raised. How does a point of contact relay information to the registrant? How quickly would it have to respond to law enforcement? Or a trademark owner?

In addition to the OPoC supporters, there are those that would like to abandon WHOIS entirely. This would be a mistake, as Saul Hansell writes in his New York Times blog:

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