This is an archived article that was published on sltrib.com in 2007, and information in the article may be outdated. It is provided only for personal research purposes and may not be reprinted.
Google "Utah Legislature" and "lawsuit" and you might soon find yourself reading about, well, Google.
The world's largest Internet search engine says a new state law that curbs keyword-triggered advertising is unconstitutional and probably will be challenged in court. And although the company didn't promise to be the plaintiff, its spokesman pledged to work with other Internet companies to "educate officials in Utah about the numerous consequences" of the legislation.
"This law hurts consumers, violates free speech, and is inconsistent with both established U.S. trademark law and our capitalist system," Google spokesman Adam Kovacevich said in an e-mail to The Salt Lake Tribune.
The legal caveats shouldn't surprise Utah lawmakers. They heard the same warnings from their own lawyers. A legislative review note said the Trademark Protection Act had a "high probability of being found unconstitutional."
Even the brains behind the concept, Unspam Technologies CEO Matthew Prince, said the state will be sued. If true, it would be the second time a Prince initiative has landed the state in court. "I warned them during the session that this would make Google mad," Prince said Tuesday.
So far, the governor and lawmakers aren't flinching. Lisa Roskelley, spokeswoman for Gov. Jon Huntsman Jr., said he has been contacted by some people concerning the law but it hasn't been overwhelming.
The probability of litigation led lobbyists for 1-800 Contacts and Overstock.com to assume the bill had no chance. But late in the session the proposal resurfaced - without a dollar figure for litigation - and passed with almost no opposition. Barring a special session or a court injunction, the law will take effect June 30.
From that point on, companies that register trademarks in Utah will be protected from competitors seeking to buy the right to key off of those brands. For example, if you type Overstock.com into Google's search engine, you will get sponsored links to SmartBargains.com, Buy.com and webspawner.com. Under the new law, Overstock could sue the search engine and the competitor if such ads show up in Utah-based Internet searches.
Rep. David Clark, R-Santa Clara, House sponsor of the law, said it "places Utah in the front of the pack of U.S. states in trademark protection - but not over the edge."
"I'm sorry they feel it's still the Wild West on the Internet," he said of Google and bloggers, who have been blasting the law.
The United States is one of the few industrialized nations that allow such "pirating" of trademarks on the Internet, Clark said.
"Google seems to be able to do commerce in Germany and France under these circumstances," Clark said.
But in the United States, federal courts have consistently upheld the right to use trademarked terms in comparative ads, said Google's Kovacevich.
"Competition, which generally helps lower prices and benefits consumers, is fueled in part by companies being able to use advertising to draw contrasts with their competitors," he said.
Companies such as Salt Lake City's Overstock.
"This could be problematic for us," Overstock attorney Mark Griffin said. "We're looking at it and all of its ramifications."
Jay Magure, a lobbyist for 1-800 Contacts, supports the concept of trademark protection but isn't sure the law can withstand a legal fight. "Historically it's very hard to tailor a state law that just protects the interest of state and doesn't go beyond the borders," he said.
Some companies, including Microsoft, wondered if the contact lens retailer crafted the bill. After all, the Draper company helped draft a dubious spyware law to regulate software that creates advertisements on a computer as a result of visiting certain Internet Web sites. The law was struck down in federal courts.
The Trademark Protection Act is the creation of Unspam's Prince, father of the controversial child-protection registry. That law, which is being challenged in court by a pornography trade group, requires companies that sell adult-oriented products and services to submit their e-mail lists to Unspam to be "scrubbed" of e-mail addresses to which minors have access. The cost is half a cent for every address they submit.
Likewise, Prince has positioned himself to benefit from the new law. If the state decides to hire an outside company to manage the database of registered trademarks, and if the deal is financially attractive, Prince said he might create a company and bid on the contract.
The entrepreneur insisted that wasn't his primary motivation in pushing the bill. The idea, he said, came out of a class he taught two years ago at The John Marshall Law School in Chicago.
"That is not a big motivation in my life right now," he said of winning another state contract. "Besides, whoever is the vendor will probably get sued by Google. I'm already involved in one lawsuit, and I'm not keen on being involved in another."