Hark & Hark, a two-lawyer firm, with law offices located in Cherry Hill, New Jersey, Philadelphia and King of Prussia, Pennsylvania were named in a trademark infringement lawsuit filed June 22, 2018 by Helmer, Conley & Kasselman, P.A., a firm with 16 office locations from New Jersey to New York and listing three partners, four associates and 42 lawyers. The suit was filed in federal court in Camden, New Jersey.
The lawsuit alleges that Hark & Hark wrongly used Google’s sponsored search program (Google Ads) to divert clients/potential clients away from Helmer, Conley & Kasselman, P.A. by using the Helmer, Conley & Kasselman, P.A firm name to attract clients and then re-directing them to Hark & Hark instead.
The keywords used by Hark & Hark in the Google Ads search program included: Helmer lawyer, Helmer law office, “helmer conley,” “helmer,” “helmer kasselman,” “helmer lawyer,” “helmer defense,” “conley law” and “helmer and associates,” which returned results that read “Helmer Conley Kasselman, Aggressive Criminal Defense,” but, the actual search results listed the address and phone number of Hark & Hark and displayed their website.
Google Ads generates the “sponsored links” section on search results that appear above non-sponsored results. A lawyer practicing criminal law might pay Google to have a link to its website appear when an internet user searches for terms such as “criminal lawyer” or “New Jersey criminal lawyers.” Then, each time a user clicks on a sponsored link, Google collects a fee for the ads.
While one may think Google would monitor the use of a competitor’s name as a keyword search term, it does not. In fact, Google states: “Google will not investigate or restrict the use of trademark terms in keywords, even if a trademark complaint is received.”
According to the U.S. District Judge presiding over the motion for a preliminary injunction to stop Hark & Hark from diverting search traffic to their firm, the case stood a reasonable probability succeeding on the merits.
Hark & Hark and Jeffrey and Richard Hark, firm principles, were named as defendants in the lawsuit which brought a claim under the Lanham Act for false advertising and false association. It also alleged unfair competition and identity theft under New Jersey’s statutes and common-law claims for negligent enablement of imposter fraud, unfair competition, commercial appropriation of name or likeness, unjust enrichment and tortuous interference with prospective economic advantage.
The lawsuit laid out its claim by stating: “Upon information and belief, defendants have purchased plaintiffs’ names and numerous variants thereon as Google Ads in order to divert Plaintiffs’ potential clients to Defendants.”
In this case, Hark & Hark allegedly used the Helmer law firm’s name in ad copy. Presuming this claim is true, it would appear to be a calculated attempt to deceive clients and potential clients. The New Jersey court agreed and issued a temporary restraining order and preliminary injunction banning Hark & Hark from marketing in that way on Google Ads.
So did Hark & Hark violate ethics?
Pay-per-click programs are popular with law firms to establish their brand. Many advertising consultants tell law firm clients to use the name of competitors for search terms. On the other hand, many attorneys and law firms are not aware that their marketing agency is actively bidding on competing lawyers’ names.
This tactic, of hijacking a competitor's name, employed by marketing agencies is unethical and illegal.
Bennett Wasserman, of Davis, Saperstein & Salomon, who handles legal ethics and malpractice cases, says, “. . . it sounds to me like an intentional interference with economic relations. That’s an actionable tort.” “The bottom line is, this is dirty pool. If the complaint is true, I find it very disturbing from a legal ethics standpoint.”
Currently, the law is not clear on situations such as the one described in the Hark & Hark case. The law needs to catch up to technology.
Rule 7.1(a) of the New Jersey Rules of Professional Conduct provides that, “[a] lawyer shall not make false or misleading communications about the lawyer, the lawyer’s services, or any matter in which the lawyer has or seeks a professional involvement.”
Rule 8.4(c) of the New Jersey Rules of Professional Conduct provides that “[i]t is professional misconduct for a lawyer to . . . engage in conduct involving dishonesty, fraud, deceit or misrepresentation . . . .”
These rules are virtually identical to the American Bar Association Model Rules of Professional Conduct.
In fact the American Bar Association (ABA) in Rule 7.1 states that, "A lawyer shall not make a false or misleading communication about the lawyer or the lawyer’s services. A communication is false or misleading if it contains a material misrepresentation of fact or law, or omits a fact necessary to make the statement considered as a whole not materially misleading."
Furthermore, the ABA states in Rule 8.4 (c) that “It is professional misconduct for a lawyer to . . . engage in conduct involving dishonesty, fraud, deceit or misrepresentation . . . .”
Each state bar association will have similar rules to those provided by the ABA, and they will also have rules that apply to their own particular jurisdiction. Currently, not all state bars have provided an opinion on whether or not it is unethical to bid on a competing attorney’s name in ads. However, some states have looked at the practice and declared it to be unethical.
For example, Florida issued Advisory Opinion A-12-1 that states that using “false, deceptive or misleading [meta tags] is prohibited” and that this ban also applies “when lawyers purchase advertising on a search engine keyed to specific words or phrases.” North Carolina also says bidding on a competitor’s name is unethical.
A 2010 North Carolina 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."
Using a competitor's name to gain business places a firm and its attorneys at risk of legal and ethical complaints, something that can destroy a law firm's reputation
If a law firm wants to avoid the kind of opprobrium that comes with misleading and possibly unethical marketing tactics, they should never use a competitor’s name to drive traffic to their website.
Helmer Conley voluntarily dismissed this lawsuit on August 28, 2018 and Hark & Hark were permanently enjoined from using such marketing tactics. Hark & Hark also agreed to provide a sworn declaration of cancellation for any and all contracts for keywords that are similar or identical to Helmer Conley’s name. Hark & Hark were also assessed Helmer Conley’s legal fees and costs.