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Circuit Court of Wisconsin.

Milwaukee County
Robert L. HABUSH, Daniel A. Rottier, Habush Habush & Rottier S.C., Plaintiffs,
v.
William M. CANNON, Patrick O. Dunphy, Cannon & Dunphy S.C., Defendants.
No. 09-CV-018149.
January 15, 2010.

Plaintiff's Response to Defendants' Motion to Dismiss

Foley & Lardner LLP, Attorneys for Plaintiffs Robert L. Habush, Daniel A. Rottier, and Habush
Habush & Rottier S.C., James R. Clark, WI Bar No. 1014074, Paul Bargren, WI Bar No.
1023008, Adam E. Crawford, WI Bar No. 1056803, Foley & Lardner LLP, 777 East Wisconsin
Avenue, Milwaukee, WI 53202-5306, 414-297-5543 (JRC), 414.297.4900 Facsimile, Email:
James R. Clark: Jclark@Foley.Com.

Honorable Charles F. Kahn, Jr.


Case Classification Type: Other Injunction or Restraining Order

Case Code: 30704

TABLE OF CONTENTS

SUMMARY OF ARGUMENT ... 1

ARGUMENT ... 8

1. Standard for Motion to Dismiss ... 8

2. Facts Assumed To Be True ... 9

3. The Scope and Interpretation of Wisconsin Statutes Section 995.50 ... 10

4. The Alleged Conduct is a “Use” Within the Meaning of Section 995.50 ... 12

a. Plain Meaning of Statute ... 12

b. Trademark Cases Involving Keyword Advertising Demonstrate that Alleged Conduct is a


“Use” ... 13

c. The Search Engines Themselves Consider Such Conduct a “Use” ... 17


d. Defendants' Citations Do Not Support the Argument that the Alleged Conduct is Not an
Actionable Use ... 17

5. Defendants' Use of Plaintiffs' Names in Keyword Advertising is “For Advertising Purposes or


For Purposes of Trade” ... 22

6. “Unreasonableness” is not a Separate Element of an Invasion of Privacy ... 26

7. Even If Plaintiffs Must Ultimately Demonstrate Unreasonableness, This is Encompassed in the


Scope of Plaintiffs' Complaint and The Invasion of Privacy Alleged in This Case is Clearly an
Unreasonable One ... 27

8. Proof of Confusion/ Deception or Source/Origin are Not Required Elements ... 32

9. Defendants Cannot Avoid Liability By Contending Their Wrongful Acts Took Place Outside
Wisconsin ... 34

10. Plaintiffs' Allegations Related to Defendants' Purchase of Surname States a Claim ... 37

a. The Contention that Defendants' Use of These Names Does not Identify Plaintiffs Robert L.
Habush and Daniel A. Rottier is Incredible ... 37

b. Statutorily-Prohibited Use is Not Limited to the Use of a Full Name ... 40

11. The Individual Plaintiffs Clearly Have A Cause of Action and the Firm is a Proper Plaintiff
to Seek Injunctive Relief ... 42

CONCLUSION ... 48
SUMMARY OF ARGUMENT
One of an individual's most valued possessions is his or her name. Those in the business of
providing professional services to others, such as Mr. Habush and Mr. Rottier, work diligently to
build up good will in their name, which serves as the primary vehicle by which they maintain the
viability of their practice and ability to earn a living. It is understandably offensive to people for
others to be able to trade off of their names and take advantage of their reputations and prestige.

For this reason, among others, Wisconsin has enacted a privacy law to protect individuals from
the inappropriate use by others of their names. Our legislature has declared that the “use, for
advertising purposes, or purposes of trade, of the name ... of any living person”, without consent,
is an actionable invasion of privacy. Notwithstanding all of Defendants' rhetoric about what
Wisconsin's public policy should be, this is the public policy enacted by the elected
representatives of this state.

It is hard to imagine conduct that is more clearly within the scope of what is prohibited by this
privacy law than that of the Defendants. Defendants are paying money for the Plaintiffs' names
in order to accomplish a specific purpose. The contention that this does not constitute “use” of
the names of Mr. Habush and Mr. Rottier defies logic, common sense, and the plain meaning of
the term. Furthermore, the purpose of this “use” is clearly to have the Defendants' advertisement
appear prominently any time a member of the public does an internet search for information
about the Plaintiffs. There is a direct connection between Defendants' purchase and use of the
Plaintiffs' names and the appearance of Defendants' advertisement in the search results obtained
from these names. Under such circumstances, to contend that this “use” of Plaintiffs' names is
not for an “advertising purpose” is equally devoid of logic and common sense. And with regard
to the “or for purposes of trade” component of our privacy law, how can it be reasonably
maintained that Defendants are not “trading” on the names of the Plaintiffs when the Defendants
are buying their names to get the Defendants' advertising in front of internet searchers in a way
that would not otherwise be possible? These names are not being used for personal purposes by
Defendants, they are being used to generate business.

This is the violation that Plaintiffs have alleged in this Complaint. When Plaintiffs' factual
allegations are taken as true, especially where confirmed by the Defendants' own references,
these allegations state a claim for invasion of privacy. Defendants' view of the law is not
accurate, and their Motion to Dismiss must be denied.

In their brief, Defendants seek to justify this advertising practice, and avoid the plain prohibition
in our privacy statute, by extolling the virtues of the internet “superhighway,” by raising the
specter that enjoining their conduct will somehow undermine the value of the internet as a source
of public information, by contending that enforcement of the statute as written should give way
to an “anything goes” mentality in the area of competition, and by pulling isolated snippets from
cases in other jurisdictions (which are either incomplete, otherwise distorted, or not applicable to
the alleged facts in this case).

There is no justification for exempting the Defendants from the reach of our privacy law just
because their conduct relates to the internet. A thorough examination of the statute reveals no
mention of the internet or any other form of media. The statute prohibits the use of the name of a
living person for purposes of advertising or trade. There is no exception under the statute as to
how the use occurs. It is a violation to use a living person's name for the prohibited purposes
regardless of whether the use results from distribution of leaflets at the county fair or from a
sophisticated misappropriation. Defendant's profuse arguments regarding the internet ignore the
plain language and meaning of the statute.

In fact, given the ubiquity of the internet, enforcement of our privacy law in this setting is all the
more important. Unquestionably, the internet “information superhighway” is a valuable public
tool. But every “superhighway” must have “rules of the road” in order to prevent individual
rights from being trampled by the stampede for profits and the intrusion which it can cause into
other people's lives and livelihood. Even Google recognizes this fact by warning customers of
their keyword sponsored site service that it is up to them to make sure that their “use” of the
purchased key words does not violate any applicable laws. Wisconsin Statutes section 995.50 is
one such law.

As explained below, Wisconsin Statutes section 995.50 does not overlay a “reasonableness”
inquiry on top of the elements of the three invasions of privacy defined and precluded by
subsection (2). But even if it does, how can it be reasonable to permit a competitor or anyone
else to seek a benefit from another's reputation, prestige, and professional standing? This is
precisely what Defendants are doing, and to contend that our Courts should bless this as
reasonable conduct not only runs counter to the letter and spirit of our privacy law but it
promotes a misguided notion of sound public policy. At minimum, this presents an issue that
cannot be resolved at the motion to dismiss stage.

There is no absolute or qualified legal “privilege” giving Defendants any right to dismissal as a
matter of law. Moreover, while “incidental” or trivial uses of a living persons name should not be
actionable under our privacy law, this is not an “incidental” or trivial use of the names of Mr.
Habush and Mr. Rottier. This is a direct, systematic, purposeful, and continuous use of Plaintiffs'
names by the Defendants for the express purpose of putting Defendants' advertising message in
front of every member of the public who has an interest in seeking out information about Mr.
Habush or Mr. Rottier.

Wisconsin's privacy law does not require that, in order for there to be a “use” for “advertising
purposes” or “purposes of trade,” the names of Mr. Habush and Mr. Rottier also have to appear
in or on the actual advertisement of the Defendants that was generated through the use of
Plaintiffs' names. Neither is it necessary under subsection (2) of our privacy law that there be a
suggestion of endorsement or sponsorship of the Defendants' services by the Plaintiffs or a
showing that members of the public who are confronted with the advertising result of the
Defendants' use of the Plaintiffs' names are likely to be misled or confused. If the legislature had
intended to require these as elements to sustain a privacy claim, it would have said so. The
quotations selected by Defendants from cases in other jurisdictions do not support the notion that
it is appropriate for a Court to add any of these additional proof requirements to our statute,
especially given the nature of the conduct alleged in this case. However, even if the Court should
conclude that one or more of these are required elements of proof, they are adequately
encompassed within the four corners of Plaintiffs' Complaint given the statement of the
underlying facts and the allegation that the Defendants' conduct violates Wisconsin Statutes
Section 995.50. And if these are relevant questions under these circumstances (which they are
not), then they present factual issues that cannot be resolved on a motion to dismiss, where
Plaintiffs' allegations must be taken as true.

A person does not leave the personal right to be free from invasions of privacy at the gate before
joining a company or firm to practice his or her profession. An individual's statutory right cannot
be forfeited simply because his name is incorporated into that of his law firm. Nor is there any
sense to the incredible suggestion that anyone who puts a website on the internet has waived his
or her right to complain about personal invasions of privacy through this method of
communication. These contentions reflect a desperate search for a way to somehow justify
Defendants' conduct in the face of Wisconsin's privacy statute. The rights of Mr. Habush and Mr.
Rottier are no less invaded through the misuse of their names because those names also appear in
the name of their law firm or because their firm has a webpage on the internet. And the Plaintiff
Habush Habush & Rottier S.C. does have standing for the purpose of joining with the individual
Plaintiffs in the request for injunctive relief to stop Defendants from trading on their names.

Even if the Defendants, as they claim, are only using the surnames “Habush” and “Rottier” in
their keyword purchase, this does not insulate the Defendants from a statutory violation.
Plaintiffs are not seeking exclusive ownership of the names “Habush” or “Rottier” or to block
others who may be named Habush or Rottier from the fair use of their names. They are seeking
to prevent persons who not named Habush or Rottier, like the Defendants, from trading off of
their names. Clearly, the Defendants used these surnames because people looking for personal
injury attorneys in Wisconsin readily affiliate these surnames with Mr. Habush and Mr. Rottier,
and because this is who Defendants are targeting with their sponsored site advertisements.
Defendants would not be spending good money to purchase Plaintiffs' names but for the benefit
they derive from trading off of the these names. Defendants at least implicitly acknowledge this
in their brief and, to the extent Defendants are attempting to deny it, this also is a factual issue
that cannot be decided on a motion to dismiss.

Defendants' actions cannot reasonably be compared to the placement of advertisements in the


yellow pages. An advertiser in the yellow pages does not “use” the names of others to obtain the
placement of its advertisements in the yellow pages. In fact, contrary to the unsupported
assertion of the Defendants outside the allegations of the complaint, an advertiser in the yellow
pages has no ability to even control the particular page inside the directory where its
advertisement will appear. Defendants' conduct is like a competitor paying the postal service for
a copy of any letter addressed to Mr. Habush or Mr. Rottier so the competitor can forward a
solicitation to the writer of the letter. Defendants should not be free to accomplish the same
result through the use of Plaintiffs' names just because it occurs on the internet.

Finally, there is no compelling public interest to motivate any court to engraft additional
elements onto the plain language of this privacy statute and construe it so narrowly as to permit
this intrusive advertising practice of Defendants. Notwithstanding Defendants' mantra of “free
competition” and the virtues of the free flow of information to the contrary, this advertising
practice of Defendants is personally invasive and offensive. Free competition means fair
competition that does not violate any individual rights. Although lawyers have the right to
advertise, that does not give them license to violate the rights of others in doing so (in fact there
is even a greater need for professional responsibility and dignity in lawyer advertising). No
higher public interest compels the Court to essentially amend our privacy statute to fit
Defendants' notion of unbridled competition, to the point of trading off of the name, reputation,
and prestige of another.

Plaintiffs do not seek to stop the use of the keyword purchase of internet sponsored sites, which
clearly serve legitimate public interests. Nor will the application of our privacy statute to
Defendants' conduct in any material way chill their ability to compete with the Plaintiffs. And
even if it does have some chilling effect on competition, this cannot override the will of the
legislature that an individual's name not be exploited for advertising or trade purposes.

Defendants, as well as other attorneys, remain free to purchase keywords that are designed to get
their advertising in front of members of the public who may be looking for “personal injury
attorneys in Wisconsin” or “mesothelioma attorneys” or “asbestos attorneys” or “multi-million
dollar jury verdicts” What they should not be permitted to do, however, and what our privacy
statute forbids, is the use (here through the purchase of) the names of living persons so that any
time a member of the public seeks information specifically about such persons, they are
confronted with advertisements from competitors or other extraneous sellers of goods or
services. Defendants complain that Plaintiffs do not want consumers to know that they have a
choice. But these consumers are looking for the Plaintiffs, not the Defendants. That is what the
Defendants are trying to disrupt through misuse of the Plaintiffs' names.

What public interest is served by permitting a competitor or anyone else to trade on the
reputation, good will, and prestige of another, especially when there are a myriad of effective and
honorable ways to compete without doing that? What public interest is served by permitting
sellers of goods or services to populate the search results for internet users looking for
information by name about, for example, Wisconsin's leading heart surgeon, with ads from
competing surgeons or medical devices he does not use or approve of. Or using the names of
Justices of the Supreme Court to produce ads from lawyers touting themselves as the best
appellate lawyers in the state or from purveyors of assorted products that a person may
reasonably not want to be associated with?

Our Privacy Law gives individuals the right to be free from others trading on their names. The
legislature has made the determination that the individual interest to be free from others
capitalizing on the good will and prestige associated with a person's name substantially
outweighs any interest competitors or others, including the public, may have in invading such
individually directed interest searches in the name of free competition.

ARGUMENT

1. Standard for Motion to Dismiss


“A motion to dismiss for failure to state a claim requires a determination of whether a complaint
is legally sufficient to put forth a claim for which relief can be granted.” Below v. Norton, 2008
WI 77, ¶ 18, 310 Wis. 2d 713, 751 N.W.2d 351 (citation omitted). A complaint should be
dismissed under this standard “only if there are no conditions under which the plaintiff can
recover.” Id. (citation omitted). “The facts pleaded and all reasonable inferences from the
pleadings are admitted to be true” for purposes of considering a motion to dismiss for failure to
state a claim. Id. (quoting citation omitted).

Defendants' Brief in support of their motion to dismiss substantially ignores the above standard
set forth by the Wisconsin Supreme Court. The issue on this motion to dismiss is not whether the
Court should grant relief in response to Plaintiffs' claim, but rather whether the Court could grant
relief to Plaintiffs, having accepted the allegations in Plaintiffs' Complaint as true. Defendants'
Brief improperly introduces numerous factual assertions in support of their motion. They also
devote pages of argument as to why Defendants' keyword advertising practices are not unfair or
otherwise improper. However, the sole issue on this motion to dismiss is whether the allegations
of the Complaint, “admitted to be true,” set forth a claim “under which [Plaintiffs] can recover.”
Id. Plaintiffs' Complaint adequately alleges a violation under Wisconsin Statutes section
995.50(2)(b), as it alleges that Plaintiffs' names were used for advertising purposes or purposes
of trade without consent and that Defendants' conduct violates Wisconsin Statutes section
995.50(2)(b).

2. Facts Assumed To Be True


Robert L. Habush and Daniel A. Rottier are adult residents of Wisconsin. (Compl., ¶¶ 1, 2.)
Through professional accomplishments, philanthropic efforts, and scrupulous legal advertising,
these attorneys have generated good will and public recognition that is intimately tied to their
names. The name “Habush” is associated by members of the public with Mr. Habush's
professional accomplishments and his philanthropic efforts. The name “Rottier” has similar
notoriety among the public because of Mr. Rottier's professional accomplishments and
philanthropic efforts. Further, Mr. Habush and Mr. Rottier have garnered further public
recognition for their names due to years of television, radio, and print advertising. ( See Compl.,
¶¶ 8-20.)

Defendants purchased as internet advertising keywords the names of Mr. Habush and Mr.
Rottier, without the consent of either of them, in order to have Defendants' advertisements
prominently displayed as the first entry a searcher sees anytime information is sought on search
engines about Mr. Habush or Mr. Rottier. (Compl. ¶¶ 20, 21.) This is an intentional and illegal
effort to trade upon the hard-earned names, personal reputations, and good will of the Plaintiffs.
It is a blatant attempt to distract consumers of legal services who are seeking information about
the Plaintiffs specifically and divert them to Defendants. It also serves to confuse and mislead
consumers of legal services by, among other things, leaving the impression that Mr. Habush and
Mr. Rottier are endorsing the Defendants and the promotional statements made in their
purchased search result. The harm to Mr. Habush and Mr. Rottier cannot be readily compensated
for in damages. ( See Compl., ¶¶ 24-26.)

Through these actions, Defendants have used, and continue to use, the names of Mr. Habush and
Mr. Rottier, both of whom are living persons. This use has been, and continues to be, both for
advertising purposes and purposes of trade, without the consent of Plaintiffs. This conduct
violates Wisconsin Statute section 995.50(2)(b). (Compl., ¶¶ 28-32.)

3. The Scope and Interpretation of Wisconsin Statutes Section 995.50


Although sometimes referred to as deriving from common law cases dealing with the “right of
publicity” (as opposed to the right to be let alone in the classical sense privacy), Wisconsin
Statutes section 995.50(2)(b) is really a derivative of the common law appropriation tort. Judith
Endejan, The Tort of Misappropriation of Name or Likeness Under Wisconsin's New Privacy
Law, 1978 Wis. Law Review 1029, 1030. As drafted, it seeks to protect the dual interests of
rights to privacy and publicity. Id at 1032.

In Hirsch v. S.C. Johnson & Son, Inc., 90 Wis.2d 379, 391 (1979) our Wisconsin Supreme Court
defined the relevant interest being protected this way:

“Because the right of publicity - the right to control the commercial exploitation of aspects of a
person's identity - differs from other privacy rights, it is appropriate for this court to recognize a
cause of action to protect this right, although other privacy rights were rejected in prior decisions
of this court. Protection of the publicity value of one's name is supported by public policy
considerations, such the interest in controlling the effect on one's reputation of commercial uses
of one's personality and the prevention of unjust enrichment of those who appropriate the
publicity value of another's identity.”
Defendants' contend that the Wisconsin Privacy Statute should be narrowly construed because
the New York statue is. But this must be evaluated in light of the fact that, whereas Wisconsin
Statutes section 995.50 seeks to protect three common law privacy categories [See, 995.50
sections (2)(a),(b) and (c)], the New York statute only addresses the “misappropriation invasion
of privacy”. Other types of privacy invasions such as intrusion into private affairs, public
disclosure of private facts, and publicity portraying plaintiff in a false light are not actionable
under the New York privacy statute. That is why New York courts have commented that its
statute should be narrowly confined to the “commercial appropriation mold”; i.e. to avoid
spilling into the other privacy invasions. See id. at 1042. In reality, in the realm of cases
involving commercial appropriation, New York has been anything but strict. “Except for
privileged uses, New York courts have been liberal in their interpretation of what constitutes
‘advertising purposes' or ‘for purposes of trade.’ ” Edjejan, Supra, at 1047 (emphasis added).

Only by quoting Paulsen v. Personality Posters, Inc., 299 N.Y.S.2d 501 (Sup. Ct. 1968) out of
context can Defendants support their erroneous contention that the Wisconsin statute must be
construed narrowly. The “far more restrictive treatment” of the right to privacy noted in Paulsen
applies to constitutionally protected “activities involving the dissemination of news or
information concerning matters of public interest.” Paulsen, 299 N.Y.S.2d at 505-506. In
contrast, Defendants are violating the right of publicity for commercial purposes, and “relief
from such ‘commercial exploitation’ has been liberally granted even to those who might be
characterized as ‘public figures.’ ” Id. at 505. The New York trial court's denial of relief to
plaintiff and comedian Pat Paulsen hinged on the fact that - seriously or not - he was presenting
himself as a candidate for president in the 1968 campaign, and the defendant's use of a photo of
Paulsen in a fanciful “campaign poster” was political speech at the core of First Amendment
protection, not a commercial misappropriation. Id. at 507-08. This is the so-called strict
application Defendants point to, but it does not apply to the commercial use they make of
Plaintiffs' names as keywords.

Rather, “a violation of § 51 in New York consists of only two elements: the commercial use of a
person's name or photograph and the failure to procure the person's written consent for such
use.” Chambers v. Time Warner, No. 00 Civ. 2839 (JSR), 2003 WL 749422, *4 (S.D.N.Y. Mar.
5, 2003) (finding complaint making those allegations stated a claim). Defendants' argument for
narrow application of the statute, overlaid with numerous jurisdictional and procedural
requirements, has no basis when all a right of publicity plaintiff needs to show in New York is
that the defendant's use was “a blatant ‘selfish, commercial exploitation.’ ” Id. *5 (emphasis
added).

As has been observed in connection with the Wisconsin Law Review analyses of Wis. Stat.
section 995.50(2)(b):

Thus the teachings of other jurisdictions should be instructive to the Wisconsin Courts. Generally
these approaches reveal that the use of a name or picture for commercial gain should be
actionable in nearly every case .... Both privacy and publicity interests should be furthered by the
tort. These dual interests can be protected by granting relief even if there is no adverse economic
effect on the plaintiff.
Endejan, supra, at 1057.

4. The Alleged Conduct is a “Use” Within the Meaning of Section 995.50


a. Plain Meaning of Statute
Defendants' purchase of the names “Habush” and “Rottier” to trigger keyword advertisements is
a “use” of Plaintiffs' names as that word is utilized in the statute.

The Wisconsin Supreme Court clarified the proper approach to statutory interpretation in State
ex rel. Kalal v. Circuit Court, 2004 WI 58, 271 Wis.2d 633, 681 N.W.2d 110. Interpreting a
statute begins with the language of the statute, because it is assumed that the legislature's intent
has been expressed in the language of the statute. Kalal, 2004 WI 58, ¶¶ 44-45. The language is
given its “common, ordinary, and accepted meaning,” except for technical or specially defined
words. Id. Where the statutory language is unambiguous, there is no need to consult extrinsic
sources such as legislative history or intent, for “[i]t is the enacted law, not the unenacted intent,
that is binding on the public.” Id. ¶¶ 44, 46.

In this case, the language of section 995.50(2)(b) is plain, clear, and unambiguous. The statute
prohibits “[t]he use, for advertising purposes or purposes of trade, of the name ... of any living
person” without having first obtained the consent of that person. Wis. Stat. § 995.50(2)(b).
Nothing in that statutory language creates an ambiguity such that extrinsic sources need be used
to interpret the meaning of the statute or particularly the word “use.” Thus, “use” and the rest of
the language in section 995.50(2)(b) should be given the common, ordinary, and accepted
meanings. The common, ordinary, and accepted meaning of “use” demonstrates that a “use”
under section 995.50(2)(b) includes paying money to have an online advertisement triggered
anytime an internet user seeks information about the living persons Robert L. Habush or Daniel
A. Rottier. This plain language interpretation of “use” is confirmed by reference to dictionary
definitions. Kalal at ¶ 53 (the term at issue had “a common and accepted meaning, ascertainable
by reference to the dictionary definition”). Black's Law Dictionary defines “use” as “[t]he
application or employment of something.” Black's Law Dictionary 1681 (9th ed. 2009). Further,
“English language” dictionaries define “use” as “application or conversion to some purpose” and
“continued or repeated exercise or employment.” 2 The New Shorter Oxford English Dictionary
3531 (1993); Webster's Third New International Dictionary 2523 (1986). Here, the names
“Habush” and “Rottier” were “applied” or “employed” or “converted” for a purpose, and the
purpose was plainly for advertising or trade; i.e., to trigger the appearance of Defendants'
advertisements whenever an Internet user searched for those names.

b. Trademark Cases Involving Keyword Advertising Demonstrate that Alleged Conduct is a


“Use”
Defendants pull selected quotations from cases outside Wisconsin, none of which involve the
purchase of keywords for internet searches, in an attempt to construct an argument that
Defendants' conduct is not a “use” for purpose of advertising or trade. In so doing, they
completely ignore the most analogous cases on this subject. As of now, virtually all cases
involving disputes regarding a defendant's choice and use of particular keywords that are
associated with a plaintiff in order to generate sponsored link advertisements are trademark
cases. Because a finding of trademark infringement under the Lanham Act requires a finding that
the alleged infringer “use[d] in commerce” the plaintiff's trademark “on or in connection with
any goods or services,” 15 U.S.C. § 1125(a), these trademark cases are highly persuasive in
confirming that the purchase of a particular word as part of a keyword advertising campaign
constitutes a “use” of that word. Further, since Defendants relied on trademark treatises and case
law in various sections of their brief, it is important that the Court be properly informed on the
actual state of trademark law in this context.

The seminal appellate trademark case on keyword advertising, Rescuecom Corp. v. Google, Inc.,
562 F.3d 123 (2d Cir. 2009), overruled previous Second Circuit precedent and held that the
defendant's use of the plaintiff's trademark as part of the Google Ad Words program was a
“commercial use”. Rescuecom, 562 F.3d at 129. Though Rescuecom involved a commercial use
of a trademark by the internet search engine provider, the substantial majority of Courts that have
considered the question have found this practice of purchasing keyword names to be a
commercial use in disputes between competitors as well. In fact, Plaintiffs are not aware of any
trademark case since Rescuecom that has held to the contrary.

In Hearts on Fire Co. v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass 2009), the district court
denied the defendant's motion to dismiss, finding that the defendant's “adoption of the
[p]laintiff's trademark as a search engine keyword constitute[d] a “use”. Id. at 278. The court
remarked that “[t]he Lanham Act's use requirement is not so narrow” to preclude a finding of use
in “[t]he purchase of a competitor's trademark to trigger search-engine advertising.” Id. at 282. A
“use” has occurred because “one company has relied on its competitor's trademark to place
advertisements for its own products in front of consumers searching for that exact mark.” Id.
This is exactly what has occurred by Defendants' use of the names “Habush” and “Rottier” in
this case. Defendants have purchased the keywords “Habush” and “Rottier” to trigger search-
engine advertising and have relied on those names to place advertisements for their own services
in front of consumers searching for those particular names.

Further, in Finance Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160 (C.D. Cal. 2008), the
court granted a preliminary injunction to the plaintiff, finding that the defendant had “gained an
unearned advantage and ha[d] misappropriated [the plaintiff's] goodwill” by purchasing the
plaintiff's trademarks as keywords from internet search engines. Id. at 1164-65. In that case, the
defendant, like Defendants in this case, defended its advertising practices by arguing that they
were merely competitive advertising. See id. at 1167-68. In considering the plaintiff's likelihood
of success in order to grant preliminary injunctive relief, the court concluded that “purchasing
keywords containing a plaintiff's trademarks constitutes a ‘use in commerce’ under the plain
meaning of the Lanham Act.” Id. at 1173. The court found that the defendant had “used” the
plaintiff's trademarks in keyword advertising on two different levels: first, the defendant used the
marks to purchase advertising from the search engine providers; and second, the defendant
profited from using the plaintiff's marks when it conducted business with internet users who
were initially searching for the plaintiff but ultimately conducted business with the defendant. Id.
Such is precisely the situation in this case, where Defendants have used the names of Mr. Habush
and Mr. Rottier both to purchase advertising from search engines and also to conduct business
with customers who had initially searched for Plaintiffs' names. Analogous to the court's
conclusion in Finance Express, Defendants' use of Plaintiffs' names in this manner properly
constitutes a “use” within the meaning of Wisconsin Statutes section 995.50(2)(b).
A host of other courts have reached the same conclusion. See, e.g., Fair Isaac Corp. v. Experian
Info. Solutions, Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009) (“purchasing keywords
containing a trademark to generate advertising from internet searches constitutes ‘use in
commerce’ as required to maintain a claim of trademark infringement”); Soilworks, LLC v.
Midwest Indus. Supply, Inc., 575 F. Supp. 2d 1118, 1129 (D. Ariz. 2008) (“In its use of
keywords and metatags, [defendant] thus capitalizes on [plaintiff's] trademark to attract clients to
its websites. Courts have held that such use constitutes commercial use for purposes of the
Lanham Act.”); Boston Duck Tours, LP v. Super Duck Tours, LLC, 527 F. Supp. 2d 205, 207
(D. Mass. 2007) (in addressing the plain meaning of the trademark statute, “[b]ecause sponsored
linking necessarily entails the ‘use’ of the plaintiff's mark as part of a mechanism of advertising,
it is ‘use’ for Lanham Act purposes”); J.G. Wentworth SSC Ltd. P'ship v. Settlement Funding
LLC, No. 06-0597, 2007 U.S. Dist. LEXIS 288, at *17 (E.D. Pa. Jan. 4, 2007) (despite the
defendant's argument that “use of plaintiff's marks in a method invisible to potential consumers
precludes a finding of trademark use,” the court found that “defendant's use of plaintiff's marks
to trigger internet advertisements for itself is the type of use consistent with the language in the
Lanham Act” and “[s]uch use is not analogous to ‘an individual's private thoughts' as defendant
suggest[s]”); Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310, 323 (D.
N.J. 2006) (a trademark “use” was found because “not only was the alleged use of [p]laintiff's
mark tied to the promotion of [defendants' goods and retail services, but the mark was used to
provide a computer user with direct access ( i.e., a link) to [d]efendants' website”).

Seventh Circuit courts are in accord with the majority of jurisdictions that hold that the purchase
of trademarked keywords from search engine providers constitutes a commercial “use” See
Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 CV 4348, 2009 U.S. Dist. LEXIS
106615 (N.D. Ill. Nov. 16, 2009). If the vast majority of federal courts, including in the Seventh
Circuit, have concluded that the practice of purchasing trademarked keywords for Internet
advertising is a commercial “use,” then it follows that the purchase of a living person's name as a
keyword is a “use” under Wisconsin Statutes Section 995.50(2)(b). A living person deserves at
least the same--if not more-- protection against the unauthorized use of that person's name, as a
trademark holder enjoys against the unauthorized use of its trademark.

c. The Search Engines Themselves Consider Such Conduct a “Use”


A simple statement on the website for Google Ad Words, one of the programs utilized by
Defendants in purchasing the names of Mr. Habush and Mr. Rottier, confirms that the alleged
conduct of Defendants is a “use.” In describing the program's “Keyword Tool,” Google remarks
that “You [(the keyword purchaser)] are responsible for the keywords you select and for ensuring
that your use of the keywords does not violate any applicable laws.” See Exhibit A (emphasis
added). “Use” is stated in Google's warning according to its ordinary and customary meaning,
the same ordinary and customary meaning that requires that Defendants' conduct be considered a
“use” under Wisconsin Statutes section 995.50(2)(b).

d. Defendants' Citations Do Not Support the Argument that the Alleged Conduct is Not an
Actionable Use
In arguing that no “use” has occurred in this case, Defendants state that courts have required that
the name or likeness be visible to the public in order for there to be a use. They say the use of
Plaintiffs' names has to be found in or on Defendants' solicitation for service. (Defs.' Br. at 18.)
As the keyword cases cite in Sec. b, above, illustrate, this is not correct. Defendants quote a New
York case, School of Visual Arts v. Kuprewicz, 771 N.Y.S.2d 804, 812 (Sup. Ct. 2003), as
“support” for this argument. Defendants completely misapply that case. Kuprewicz was a case
where the defendant falsely asserted on the internet (Craigslist) that the plaintiff was seeking job
applications for one of its employees. Id. at 807. This caused the plaintiff to receive numerous
unsolicited job applications and pornographic emails. Id. The court's analysis of the privacy issue
in that case did not turn on any issue of name visibility. In fact, it could not have, because the
court noted that there was not even any allegation in the complaint that the employee's actual
name was used in the job postings or “in connection with” the pornographic websites. Id. at 812.
Thus, contrary to the Defendants' assertion, this New York court clearly noted that it was
sufficient for the person's name to used “in connection with” the offending material. The court
went on to note that “[i]n any event, [defendant's] alleged conduct does not fall within the reach
of the statute because plaintiff's] name was not used ‘for advertising purposes or for purposes of
trade.’ ” Id. (emphasis added). This result is not surprising given that there was no indication that
the defendant's activity was for an advertising or trade purpose. These facts are in no respect
comparable to the purchase of the keyword name of an individual to cause Defendants'
advertisement to appear as part of the result of an internet search based on the individual's name.

Neither does Meeropol v. Nizer, 381 F. Supp. 29, 37 (S.D.N.Y. 1974), aff'd 560 F.2d 1061 (2d
Cir. 1977), support Defendants' argument. First, Meeropol involved the privacy right to be left
alone, rather than the privacy right against commercial misappropriation of a living person's
name that is at issue in this case. Meeropol, 381 F. Supp. at 36 (“[P]laintiffs also allege that
defendants intruded upon their privacy and right to be left alone by falsely portraying a picture of
the most personal and intimate aspects of plaintiffs' lives.”). Second, the Court found that the
“names” of the plaintiffs were not even used in the book because the book referred to them as the
Rosenbergs, rather than the Meeropols--the name they had used for the past twenty years. Id. In
this case, it is obvious that Mr. Habush's and Mr. Rottier's actual names are the names that have
been used.

Defendants then assert that the alleged use of the names of Mr. Habush and Mr. Rottier in this
case is analogous to an attorney using the name “Habush” in a Westlaw search to find
information about the Miller Park crane accident case in which Mr. Habush represented one of
the parties. (Defs.' Br. at 19.) Defendants' assertion that such a use would be a violation under “a
technical reading” of section 995.50(2)(b) because the use of the name would be “for profit” is
misplaced. Aside from the fact there is no “for profit” standard in section 995.50(2)(b), in any
nexus between the use of the “Habush” name in connection with a search to find information
about the Miller Park Crane accident and a “trade purpose” (attempt to draw trade to the
attorneys firm) is at best incidental and trivial. And, in this irrelevant example, the attorney is not
using the name of Mr. Habush in order to benefit from his reputation, good will, and prestige as
is alleged in this case.

Defendants' contention that because the names “Habush” and “Rottier” are inputted by the
internet user and cannot be seen by the internet user at that time, the names have not been
“used,” is completely meritless (Defs.' Br. at 19-20.) First, nothing in the plain meaning of the
statute requires that the “use” be visible to the public. The trademark keyword cases illustrate
this. Trademark cases in virtually all jurisdictions have found that a “use” has occurred in the
context of the exact sort of keyword advertising practiced by Defendants in this case, even
though Defendants would contend that the “uses” in those cases were not visible either. ( See
supra Section 4.b and cases cited therein.)

However, even if visibility is a requirement (which it is not), the falsity of Defendants'


contention that the names “used” in this case are not visible to the public is evident by a cursory
review of the Exhibits attached to Plaintiffs' Complaint. Consider Exhibit A to the Complaint, for
example, which is a collection of screenshots of Google search results when the names “Habush”
or “Rottier” are inputted by the Internet user. Contrary to Defendants' contention that the internet
user “only sees the search results generated by the search engine in response to their [sic]
inquiry” (Defs.' Br. at 20), the names of Mr. Habush and Mr. Rottier are prominently displayed
to the Internet user on the same search-result page which prominently displays Defendants'
advertisement (for example, “Results 1-10 of about 106,000 for habush”). In an analogous
trademark case involving keyword advertising, the court considered precisely this issue in
finding that a “use” had occurred. In concluding that “there is little question that the purchase of
a trademarked keyword to trigger sponsored links constitutes a ‘use’,” the court found that the
searched-for trademark was “necessarily” displayed along with the sponsored links in the search
results, because the display included the text “results for [the searched-for trademark].” Hearts
on Fire, 603 F. Supp. 2d at 282-83 (emphasis added). The court remarked “[i]ndeed, this display
is exactly what the [d]efendant paid for: the association of [the defendant's] sponsored link with
the searched-for trademark.” Id. at 282. Like what occurred in Hearts on Fire, the association of
Defendants' sponsored link advertisements with the searched-for names of Mr. Habush or Mr.
Rottier is exactly what Defendants are paying for. This association, which is part of the “use”
that Defendants are paying for, is readily visible to the public.

Defendants also suggest, citing to Vinci v. American Can Co., 591 N.E.2d 793, 794 (Ohio Ct.
App. 1990), that there can be no actionable “use” under Wisconsin's privacy statute absent a
suggestion of endorsement or sponsorship of Defendants' services by Plaintiffs. (Defs.' Br. at 20.)
Again, Defendants provide the Court with “cite-bite” quotations that imply support for their
position that does not actually exist. Contrary to Defendants' representation, Vinci actually held
that the alleged use was merely incidental to the promotion of the Dixie cups, and that the
reference to the athletes and their accomplishments “was purely informational”. Vinci, 591
N.E.2d at 794 (emphasis added). In so doing, the Vinci case cited to and relied upon the then-
proposed Restatement (Second) of Torts section 652C in stating that:

The value of the plaintiff's name is not appropriated by mere mention of it, or by reference to it
in connection with legitimate mention of [the plaintiff's] public activities; nor is the value of [a
plaintiff's] likeness appropriated when it is published for purposes other than taking advantage of
[the plaintiff's] reputation, prestige, or other value associated with [the plaintiff], for purposes of
publicity. It is only when the publicity is given for the purpose of appropriating to the defendant's
benefit the commercial or other values associated with the name or the likeness that the right of
privacy is invaded. Id. (emphasis added).

It was the absence of a purposeful intent to benefit from the commercial value of plaintiff's name
that led to the denial of relief in Vinci, not the absence of visibility. Such is precisely the sort of
appropriation that Plaintiffs have alleged has occurred in this case. Defendants have used
Plaintiffs' names in much more than an incidental or informational way; they have used the
names in order to derive a benefit from the “reputation, prestige, and other value” associated
with those names.

Additionally, McCarthy on Trademarks and Unfair Competition, section 28:7, which is cited by
Defendants in the very same paragraph as the Vinci case, explicitly states that “[f]alse
endorsement is not the issue.” See 5 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION; § 28:7 (4th ed. 2009). Thus, despite Defendants' arguments to
the contrary, an indication of endorsement or sponsorship is not required to demonstrate an
actionable use under section 995.50. See also, Hirsch, supra, at 390, (where our Supreme Court,
citing with approval from a Texas Law Review article, noted that implied endorsement of a
product or service was just one of the ways that an advertiser can violate the right of publicity
interest being protected.)

5. Defendants' Use of Plaintiffs' Names in Keyword Advertising is “For Advertising Purposes or


For Purposes of Trade”
Contrary to Defendants' arguments, Defendants' use of Plaintiffs' names as part of its keyword
advertising campaign is “for advertising purposes” or “for purposes of trade” within the meaning
of Wisconsin Statutes section 995.50(2)(b). Under any plain or ordinary meaning of the statutory
language, the use of the names of Mr. Habush and Mr. Rottier is for “advertising purposes”. No
Wisconsin court has been called upon to construe the meaning of an “advertising purpose.”
However, it has been construed by the Court of Appeals of New York. “Where the use of
plaintiffs' name is solely for the purpose of soliciting purchasers for defendants' products the
advertising purpose prong of the statute is violated.” Lerman v. Flynt Dist. Co., 745 F.2d 123,
130 (2d Cir. 1984). “A use for advertising purposes has been defined as a use in, or as part of, an
advertisement or solicitation for patronage.” Flores v. Mosler Safe Co., 164 N.E.2d 853, 857
(N.Y. 1959) (citation omitted) (emphasis added).

Defendants argue that Plaintiffs cannot satisfy the “for advertising purposes” prong because
Plaintiffs have not alleged that Defendants used the names of Mr. Habush or Mr. Rottier “in” or
“on” Defendants' sponsored advertisement, the sponsored link to the website, or in any other
advertisement. (Defs.' Br. at 36.) However, in advancing this conclusory argument, the
Defendants focus only on the “appearing in” component of the definition and completely ignore
the “as part of” component.

It is self-evident that the use of Plaintiffs' names in Defendants' keyword advertising campaign is
a use that is undertaken “as part of an advertisement or solicitation for patronage.” When an
internet user searches the names of Mr. Habush or Mr. Rottier, Defendants' sponsored link
advertisements are triggered only because of Defendants' use of Plaintiffs' names. Since the use
of Plaintiffs' names is intimately tied to the very existence of the sponsored link advertisements
purchased by Defendants, the argument that such a use is not “part of an advertisement or
solicitation of patronage” is untenable. Therefore, the cases cited by Defendants offer no
persuasive support for their contention that their use of Plaintiffs' names is not “for advertising
purposes.”
Further, Defendants' use of Plaintiffs' names in this case also clearly meets the “for purposes of
trade” prong of the statute. “Trade purposes” ... “involves use which would draw trade to the
[defendant's] firm.” Kane v. Orange County Publ'ns, 649 N.Y.S. 2d 23, 25 (App. Div. 1996); see
also Flores, 164 N.E.2d at 857. Defendants' use of Plaintiffs' names is clearly a use that was
intended to, and would, draw trade to Defendants. Indeed, that is the admitted purpose of
Defendants' keyword advertising--a method of competing for potential clients that are looking
for a personal injury attorney. The problem is with the method by which Defendants have
advertised for and attempted to divert customers--by illegally using the names of Mr. Habush
and Mr. Rottier without their consent.

Defendants again wrongly contend with regard to this prong of the statute that there must be an
indication that Plaintiffs are promoting or endorsing Defendants' services in order to constitute a
use “for purposes of trade.” Such an expression of endorsement or promotion is certainly not
required according to the plain meaning of the Wisconsin statute, and the cases cited by
Defendants do not support this contention.

Defendants first cite to Loft v. Fuller, 408 So. 2d 619 (Fla. Dist. Ct. App. 1981) to support their
argument that some expression of endorsement or promotion is necessary. The alleged use in
Loft was the inclusion of the name of a deceased airline pilot in a book written by the defendant.
Loft, 408 So. 2d at 620-21. The court concluded that the fact that the defendant made money
from the sale of his book that contained the name of the deceased pilot was not enough to find
that the use was for commercial, advertising, or trade purposes. Id. at 622-23. Quoted correctly,
the court stated that the Florida right of publicity statute was designed to “prevent the
unauthorized use of a name to directly promote the product or service of the publisher” and that
“the publication is harmful not simply because it is included in a publication that is sold for a
profit, but rather because of the way it associates the individual's name or his personality with
something else.” Id. at 622-23. Contrary to Defendants' argument, the quoted language from Loft
demonstrates that the use alleged by Plaintiffs in this case is a use for advertising purposes or
purposes of trade. Defendants are using Plaintiffs' names to “directly promote” their business, by
“associat[ing] [Plaintiffs' names] ... with something else,” that is, with Defendants' sponsored
link advertisements.

Defendants also cite Namath v. Sports Illustrated, 371 N.Y.S.2d 10 (App. Div. 1975), aff'd 352
N.E.2d 584 (N.Y. 1976) and Almeida v. Amazon.com, Inc., 456 F.3d 1316 (11th Cir. 2006) to
defend their argument that an expression of promotion or endorsement by the plaintiff of the
defendant's services is necessary to constitute “for purposes of trade.” This is not correct. Like
Loft, these cases merely stand for the proposition that the mere use of a name or image in a
publication, incidental to the news medium itself, is not actionable under the New York statute.
For example, in Namath the court viewed the use as nothing more than informing the reader of
the advertisement of what was likely to be in future issues of the magazine. Namath, 371
N.Y.S.2d at 12. With regard to the endorsement issue, the court simply said that if there was an
indication of endorsement a different issue would have been presented (likely because it would
have indicated that the defendant was trying to take advantage of the reputation, prestige, or
other value at that time associated with the Namath name). Id. The court did not say that an
indication of endorsement by Namath was a required element of a cause of action, or that it was
the only way that a defendant might unlawfully take advantage of the reputation or prestige of
another. See Almeida, 456 F.3d at 1325 (requiring only that the unauthorized use directly
promote a product or service to be a commercial use, not that the person whose name is
improperly used appear to be promoting the product or service).

These cases simply reflect the application of the “incidental use” doctrine and other privileges
afforded the media to avoid restricting the use of anyone's name in a publication merely because
the publication is sold for profit. Such is not the case in Defendants' use of the names of Mr.
Habush and Mr. Rottier. If Defendants had incidentally included Mr. Habush's name in a book
chronicling the history of Defendants' law firm, there would likely be no cause of action against
Defendants under our statute either. However, the use of Plaintiffs' names by the Defendants in
this case is far different. Defendants are wrongfully using Plaintiffs' names in a way that draws
potential clients to Defendants' advertisements by capitalizing upon the potential clients' original
intention to search for information regarding Mr. Habush and Mr. Rottier. Such use, regardless
of any indication of endorsement, is not permitted by the plain meaning of the Wisconsin statute,
and there is no applicable authority to the contrary.

Moreover, even if Plaintiffs have to prove (which they do not) that the placement of Defendants'
advertisement leaves a reasonable impression of endorsement of Defendants' services by
Plaintiffs, this is sufficiently pled by the allegations in the Complaint and is an issue of fact that
cannot be resolved on a motion to dismiss.

6. “Unreasonableness” is not a Separate Element of an Invasion of Privacy


Contrary to Defendants' assertion, “unreasonableness” is not a separate element of a cause of
action under section 995.50. The structure and language of the statute demonstrates this. Rather,
the word “unreasonably” was used in Subsection (1) of the statute merely to introduce the three
actionable types of invasion of privacy that are described in Subsection (2). The language of the
descriptions in Subsection (2) confirms that each invasion of privacy described has been
determined to be per se unreasonable if the elements of the particular privacy invasion have been
satisfied. For instance, Subsection (2)(a) describes one actionable invasion of privacy as the

Intrusion upon the privacy of another of a nature highly offensive to a reasonable person, in a
place that a reasonable person would consider private or in a manner which is actionable for
trespass.

Wis. Stat. § 995.50(2)(a) (emphasis added).

Similarly, Subsection (2)(c) describes another actionable invasion of privacy as

Publicity given to a matter concerning the private life of another, of a kind highly offensive to a
reasonable person, if the defendant has acted either unreasonably or recklessly as to whether
there was a legitimate public interest in the matter involved, or with actual knowledge that none
existed. It is not an invasion of privacy to communicate any information available to the public
as a matter of public record.

Wis. Stat. § 995.50(2)(c) (emphasis added).


Thus, these subsections contain an implicit unreasonableness element. It would be nonsensical if
the word “unreasonably” in Subsection (1) created an additional, separate and distinct
unreasonableness element to be alleged and proved in actions for invasion of privacy under
Subsections (2)(a) or (2)(c). Likewise, the word “unreasonably” cannot create an additional,
separate and distinct unreasonableness element to be alleged and proved in an action for invasion
of privacy under Subsection (2)(b) either. As with subsections 2(a) and 2(c), the legislature made
“unreasonableness” implicit in the definition of an invasion of privacy under Subsection (2)(b);
i.e., it is unreasonable to use a living person's name or likeness for advertising purposes or
purposes of trade without that person's consent.

7. Even If Plaintiffs Must Ultimately Demonstrate Unreasonableness, This is Encompassed in the


Scope of Plaintiffs' Complaint and The Invasion of Privacy Alleged in This Case is Clearly an
Unreasonable One.
As demonstrated above, “unreasonableness” is not a separate and distinct element of an invasion
of privacy that needs to be alleged and proved. However, to the extent that “unreasonableness”
needs to be separately shown, this does not have to be specifically alleged in the Complaint.
Wisconsin is a notice pleading state, and under notice pleading, a complaint need only contain
“[a] short and plain statement of the claim, identifying the transaction or occurrence or series of
transactions or occurrences out of which the claim arises and showing that the pleader is entitled
to relief.” Wis. Stat. § 802.02(1)(a). Though the word “unreasonably” was not explicitly alleged
in Plaintiffs' Complaint, it need not be, because the Complaint alleges a violation of section
995.50 (implicitly alleging that the conduct was unreasonable, if that is a required element of
proof). This is not a situation in which the complaint “requires the court to indulge in too much
speculation leaving too much to the imagination of the court.” See Wilson v. Cont'l Ins. Cos., 87
Wis. 2d 310, 326-27, 274 N.W.2d 679, 687 (1979). Under Wisconsin's notice pleading standard,
it is not necessary to allege a violation of the right of privacy statute using the particular words
that are used in the statute or all aspects of the standard applied to measure Defendants' conduct.
Rather, it is only necessary to identify the circumstances from which the claim arises and to
show that that the pleader is entitled to relief. Plaintiffs' Complaint accomplishes both.

Even if unreasonableness has to be demonstrated, in addition to the elements described in section


995.50(2)(b), this standard should only be applied to exclude invasions which are “incidental” or
trivial, or those which is covered by an established legal privilege. Otherwise, the reasonableness
standard will effectively rewrite the legislative will. Defendant has identified no legal “privilege”
that takes it conduct out of the clear scope of section 995.50 (2) (b). Although Defendants try to
cloak the “free flow of information” and “competitive choice” with some sort of privilege status,
there is no such legal privilege. The use in this case is not one incidental to the news medium. In
New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 2002), the
Court dismissed the Plaintiff's claim because of the existence of a statutory privilege in the
California Privacy law which provided a complete defense if the name was used “in connection
with any news, public affairs, or sports broadcast or account”. The Wisconsin statute contains no
such privilege and, in any event, the use by the defendants in this case (buying Plaintiffs names
to gain their advertisements access to internet searches specifically seeking information about the
Plaintiffs) is in no reasonable respect a news event, a comment on public affairs, or a sports
broadcast or account.
Furthermore, Defendants' use of Plaintiffs' names is not a trivial use that can escape the statutory
prohibition of section 995.50 under the “incidental use” doctrine. Rather, it is a persistent and
ongoing use of Plaintiffs names to promote Defendants' services that occurs every time an
Internet user searches for the words “Habush” or “Rottier.”. Defendants cite a number of cases
where courts have determined that the name use was “incidental” (Defs.' Br. at 29-33.) None of
them are remotely similar to the facts in this case. For example, using the names “Habush” and
“Rottier” to trigger an advertisement anytime an Internet user inputs those names into a search
engine can hardly be analogized to a four-second appearance in an hour-long television
broadcast or a handful of references to a person in a 143-page book. ( See Defs.' Br. at 30, 32.)

In fact, the cases cited by Defendants in support of their argument that the alleged use in this
case is merely incidental demonstrate just the opposite-- the continuous, repeated, and purposeful
use engaged in by Defendants in this case is nothing like the trivial and fleeting (“incidental”)
uses in the cases cited by Defendants. See Stillman v. Paramount Pictures Corp., 147 N.Y.S.2d
504, 505 (Sup. Ct. 1956) (alleged use was statement in motion picture to go to “Stillman's Gym
and get a punch-drunk fighter”), aff'd 157 N.E.2d 728 (N.Y. 1959); Damron v. Doubleday,
Doran & Co., 231 N.Y.S. 444, 446 (Sup. Ct. 1928) (alleged use was “[t]he single appearance of
plaintiff's name in [a] book”); Wallach v. Bacharach, 80 N.Y.S.2d 37, 39 (Sup. Ct. 1948)
(alleged use was the incidental mention of a person's name in a news report that was included in
paid advertising space); Netzer v. Continuity Graphic Assocs., Inc., 963 F. Supp. 1308, 1326
(S.D.N.Y. 1997) (alleged use was an isolated use of plaintiff's previous name and current
surname as aliases for a comic book character; court remarked that the incidental use doctrine
“protects the writers and publishers of books and other materials from liability for ‘isolated,’
‘fleeting,’ or ‘de minimis' uses” of a name or image); Delan v. CBS, Inc., 458 N.Y.S.2d 608
(App. Div. 1983) (alleged use was a four-second appearance in a sixty-minute television
telecast); Almeida v. Amazon.com, Inc., 456 F.3d 1316, (11th Cir. 2006) (alleged use by online
retailer was of plaintiff's image that was the same image as on the cover of a book); Leary v.
Punzi, 687 N.Y.S.2d 551, 552 (Sup. Ct. 1999) (alleged use was listing of plaintiff on a website as
a contact person); Vinci v. Am. Can Co., 591 N.E.2d 793, 794 (Ohio Ct. App. 1990) (alleged use
was a “purely informational” reference to Olympic athletes on Dixie cups); Lawrence v. A.S.
Abell Co., 475 A.2d 448, 454 (Md. 1984) (alleged use was republication by newspaper of
photograph from a previous edition); Univ. of Notre Dame du Lac v. Twentieth Century Fox
Film Corp., 256 N.Y.S.2d 301, 304 (App. Div. 1965) (alleged use was two mentions of plaintiff's
name in 143-page book); Namath v. Sports Illustrated, 371 N.Y.S.2d 10, (App. Div. 1975)
(alleged use was re-use of photograph of plaintiff, which had been originally used by defendant
without plaintiff's objection, in defendant's advertisement).

The Restatement of the law of “Appropriation of Name or Likeness”, which is the invasion
prohibited by 995.50, has set forth a bright line test for whether the unauthorized use of a
person's name is incidental or actionable; namely, whether the purpose is to obtain the benefit of
“the commercial or other values associated with the name ...” RESTATEMENT (SECOND) OF
TORTS § 652C, “Appropriation of Name or Likeness,” cmt. d. (1977). The complaint alleges
that the Defendants have used the Plaintiffs' names to deliberately exploit their value for
advertising purposes. This is more than sufficient to meet the pleading requirements and, given
this allegation, this alleged use cannot be viewed as an incidental one as a matter of law.
Even if the Court should determine that its reasonableness analysis should go beyond whether
the use is “incidental”, the Defendants' practice is clearly unreasonable. The only reason
Defendants purchase the names of Mr. Habush and Mr. Rottier is because they know the
reputation and good will of these lawyers is such that their name recognition results in large
numbers of potential personal injury plaintiffs seeking out information about them on the
internet. How can it be reasonable to permit others to use their names to capitalize on their good
will and prestige in this fashion? The more accomplishments and philanthropy tied to a
professional name, such as that of Mr. Habush, the more attractive a target the name will be for
those seeking to benefit from that name recognition. Validating this activity as reasonable will
encourage the proliferation of advertisements on sites of well-known professional people that not
only “reaps what they have sown” but breeds confusion and interferes with the intent of the
internet search. Although sponsored sites based on keyword names of prominent professionals
may be limited to three today, they could be ten or more tomorrow. Ever increasing ransom may
have to be paid to the search engines in order to protect the value built up in a professional's
name and to keep others from capitalizing on it. This cannot be reasonable.

In their zeal to convince the Court that this invasion of privacy is “reasonable”, Defendants go
outside the Complaint and contend that the use (purchase) of living person's names for keyword
searches is a common practice. There is no support for that in the Complaint and Defendants'
attempt to introduce alleged facts outside the pleading on a motion to dismiss is improper.
Moreover, if the Gruber law firm and one other Milwaukee law firm at one time engaged in this
practice, or worse, this hardly should be the measure for the standard of care for reasonable
service providers in this state. And even if it is factually true that advertisers are using Oprah's
and President Obama's names in connection with interest keyword searches with impunity, that
has nothing to do with the question of whether such use is an actionable invasion of privacy
under our statute.

In addition, Defendants improperly introduce extrinsic evidence, in the form of an advertisement


by Plaintiffs, to support the false analogy drawn by Defendants that its conduct is comparable to
placing advertisements in the yellow pages of a phonebook or in a newspapers (Defs.' Br. at 38-
40.) Newspaper, yellow pages, or phonebook advertisements do not involve the “use” of a
persons name. Nor does the placing of plain generic aspirin on the shelf next to Bayer have
anything to do with the “use” of a living persons name to accomplish that result. Even if an
advertiser has the right to direct where its advertisement is specifically placed in these directories
or in a newspaper or precisely where its product is placed on the shelf (which Plaintiffs dispute
and which in way outside the scope of the complaint), this practice does not run afoul of section
995.50(2)(b) because another person's name is not used to place the advertisement or the
product. Defendants' Internet-advertising conduct is a violation of the statute because Plaintiffs'
names are used by Defendants to trigger the appearance of Defendants' advertisements.

There is nothing to prevent Defendants from purchasing any keywords they wish to assist
internet searchers who are looking for attorneys in areas of the law in which Defendants practice
in order to steer the searchers to them or to give their legal practices more public visibility, as
long as the names of living persons are not used. However, it is not reasonable for Defendants to
purchase the names other living persons to trigger Defendants' advertisement anytime an internet
user is searching for information specifically about Mr. Habush or Mr. Rottier.
In any event, Defendants' attempt to introduce extrinsic evidence to support their view of
reasonableness illustrates that, if a separate reasonableness inquiry is even relevant (which it is
not), it cannot serve to support a motion to dismiss given the allegations of the complaint.

8. Proof of Confusion/ Deception or Source/Origin are Not Required Elements.


Defendants, in furtherance of their attempt to cloud the fact that a clear statutory violation has
been alleged by Plaintiffs, claim that possible deception of the public and indication of source or
origin are necessary elements for a cause of action under section 995.50. (Defs.' Br. at 21-23.)
That these “requirements” are nowhere to be found in the text of section 995.50 is abundantly
clear. Although these “requirements” may be elements of offenses under unfair competition and
trademark law, they are not a necessary element of proof under our privacy statute. In fact, none
of the cases and treatises cited by Defendants in support of their position are true invasion of
privacy cases. ( See id. at 21-23.) Though Defendants may argue that Univ. of Notre Dame du
Lac v. Twentieth Century-Fox Film Corp., 256 N.Y.S.2d 301 (N.Y. App. Div. 1965) was a right
of publicity case, Defendants' quotation from that case is misapplied, because the plaintiff
university brought a cause of action under a business law statute, not New York's right of privacy
statute. Id. at 305 (where the court notes that the plaintiff was not relying on New York's right of
privacy statute.) Further, that case involved a work of fiction in which the alleged use of a name
had occurred, and right of privacy statutes were “not passed with the idea of interfering with the
circulation of newspapers or the publication of books within proper limits.” Flores, 164 N.E.2d at
857. Defendant's have cited no case in which a Court has held that confusion or deception (or
source/origin) is a required element of proof in a privacy claim premised on the commercial
misuse of an individuals name.

In the portion of the Restatement of law of unfair competition that deals the appropriation of the
commercial value of a person's identity (the right of publicity), it is clearly noted that “[p]roof of
deception or consumer confusion is not required for the imposition of liability ...”.
RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 46, cmt. b. and reporters notes on
cmt. b. (1995).

Nowhere in the Wisconsin Supreme Court's decision in Hirsch v. S.C. Johnson & Sons, Inc., 90
Wis. 2d 379 (1979), which discussed Wisconsin's common law cause of action for appropriation
of a person's name for trade purposes prior to the adoption of 995.50, is there contained even a
hint that these are required elements for this privacy claim. Defendants' attempt to transfer
elements of other causes of action to what is a clear and straightforward statutory prohibition on
the use of a person's name for advertising or trade purposes without that person's consent has no
valid legal basis.

In any event, even if they are required elements of proof, it is specifically alleged that
Defendants practice serves to confuse and mislead consumers and any source/origin element is
adequately pled by the allegation that section 995.02 (2) (b) has been violated. If they are
relevant (which they are not), these are not issues that can be resolved by the Court on a motion
to dismiss. In asking the Court to rule as a matter of law that no internet searcher could possibly
be confused, the Defendants improperly ask the Court to make numerous assumptions that have
not been proven, including that users of the internet are sophisticated enough to know exactly
how Defendants' promotion ended up in their search results and how it may be associated with
the Plaintiffs.

9. Defendants Cannot Avoid Liability By Contending Their Wrongful Acts Took Place Outside
Wisconsin.
Defendants grasp at straws in attempting to argue that Plaintiffs' Complaint should be dismissed
for failing to allege a “use” within the state, an allegation Defendants incorrectly posit is
“required by statute.” (Defs.' Br. 33-36.)

First, there is in fact “use” within Wisconsin. Defendants, attorneys who live and practice in
Wisconsin, select the keywords they want in Wisconsin and use them to trigger sponsored links
to their own advertisement when interest users go looking for “Habush” or “Rottier.”

Second, although there is “use” here, the statute does not require “use” within Wisconsin. In the
introductory section of the Wisconsin statute, it is the right of privacy that is recognized “in this
state.” Wis. Stat. § 995.50(1). Section 995.50(2) does not include a requirement that the improper
use take place here. The law has long held that the victim of wrongdoing can sue where he or she
was injured, even if the injurious act took place out of state. Wis. Stat. § 801.05(4).[FN1] For
example, the Supreme Court's ruling in Olstad v. Microsoft Corp., 2005 WI 121, 284 Wis. 2d
224, 700 N.W.2d 139, allowed that plaintiff to proceed with antitrust claims alleging harm in
Wisconsin resulting from Microsoft's nationwide conduct.

FN1. Sec. 801.05(4) states, of course, that Wisconsin state courts have jurisdiction in “any action
claiming injury to person or property within this state arising out of an act or omission outside
this state by the defendant,” provided that, as here, the Defendants can be found in the state.

Defendants' fanciful argument that they would be immune from liability in Wisconsin if they
traveled to California to pick their keywords (Defs.' Br. at 35) has no merit. The Defendants'
actions violate the statutory rights of these Wisconsin Plaintiffs here, where they are located, “in
this state,” regardless of where Defendants may choose to travel to invade Plaintiffs' rights not to
have their names misused.

Defendants' assertion that out-of-state “use” is immune from liability even if it causes harm here
is particularly unsettling because it is directly contrary to the case Defendants cite, Olstad. Olstad
specifically empowers Wisconsin statutes to reach beyond the state borders. The Supreme Court
expressly applied Wisconsin's antitrust statute to interstate commerce as well as intrastate
commerce. Id., 284 Wis. 2d 224, ¶ 74. To find otherwise would make the statute “a dead letter,”
Id. ¶ 78, because the conduct prohibited by the antitrust statute is almost invariably interstate,
just as with privacy violations on the internet. Claims under the Wisconsin antitrust statute are
allowed where conduct” ‘substantially affects' the people of Wisconsin and has impacts in this
state, even if the illegal activity resulting in those impacts occurred predominantly or exclusively
outside this state.” Id. ¶ 85. The privacy statute's enabling provisions are comparable to the
antitrust statute's. For example, the antitrust provisions of Ch. 133 seek to enhance “the
economic policy of this state,” Section 133.01, while Section 995.50(1) states the “right of
privacy is recognized in this state.” Nothing in Section 995.50 suggests it should be read any
more narrowly than the broad reading given to Ch. 133 by Olstad.
Defendants rely heavily upon the New York statute, but fail to note an important distinction. The
New York statute specifically states that violations must occur “within this state.” NY Civil
Rights Law § 51.[FN2] Wisconsin's statute does not have any comparable requirement. See Wis.
Stat. § 995.50(2). If anything, this suggests the Wisconsin legislature purposely rejected this
requirement when it enacted its new law based on New York language. In any event, because
“used within this state” does not appear in the Wisconsin statute, the New York case law
Defendants cite for this point does not apply. ( See Defs.' Br. at 33, relying on citation to “within
this state” language in Paulsen v. Personality Posters, Inc., 299 N.Y.S.2d 501, 509 (Sup. Ct.
1968).[FN3] )

FN2. The relevant text:

§ 51. Action for injunction and for damages

Any person whose name, portrait, picture or voice is used within this state for advertising
purposes or for the purposes of trade without the written consent first obtained as above provided
may maintain an equitable action in the supreme court of this state against the person, firm or
corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof;
and may also sue and recover damages for any injuries sustained by reason of such use and if the
defendant shall have knowingly used such person's name, portrait, picture or voice in such
manner as is forbidden or declared to be unlawful by section fifty of this article, the jury, in its
discretion, may award exemplary damages.

NY Civil Rights Law § 51 (excerpt; footnote reference omitted).

FN3. Contrary to the impression Defendants try to create in citing this case to “N.Y. 1968,” the
Supreme Court in New York is a county court, not the final appellate court.

Defendants' insistence on using New York law to interpret Wisconsin's statute confirms the
fallacy of their position. New York's intermediate appellate court ruled that a dance model
satisfied New York's “within this state” pleading requirement under § 51 New York simply by
alleging that the image in question was available for use “on a world wide basis” on the internet.
Molina v. Phoenix Sound Inc., 747 N.Y.S.2d 227, 230 (N.Y. App. Div. 2002). Because it was
available everywhere on the internet, “it necessarily was concurrently available within New York
State.” Id. Chambers v. Time Warner No. 00 Civ. 2839 (JSR), 2003 WL 749422, *4 (S.D.N.Y.)
(March 5, 2003), proceeded on similar allegations of misappropriation across the internet.

As the court noted, relevant here, “any person with a computer and an internet connection,
anywhere, has access to a website, regardless of where the site itself was created or is
maintained.” Id. “[P]laintiff's assertion of a website's global accessibility sufficiently meets the
required statutory element of use within New York State.” Id. So Defendants attempt to avoid
the application of the Privacy Statute on this technicality would not fly even in a state like New
York where that statute, unlike Wisconsin's, requires “used within this state”.

10. Plaintiffs' Allegations Related to Defendants' Purchase of Surname States a Claim.


a. The Contention that Defendants' Use of These Names Does not Identify Plaintiffs Robert L.
Habush and Daniel A. Rottier is Incredible.
Contrary to Defendants' assertion, Hirsch v. S.C. Johnson & Son, Inc., 90 Wis. 2d 379, 280
N.W.2d 129 (1979) does not stand for the proposition that the alleged use must “clearly identify]
the wronged person.” (Defs.' Br. at 23.) Rather, Hirsch, a case involving an alleged use of a
person's nickname, held that all that is necessary is that the term that is used “clearly identify the
wronged person.” Hirsch, 90 Wis. 2d at 397. In this case, the names “Habush” and “Rottier” that
have been used by Defendants clearly identify the Plaintiffs Robert L. Habush and Daniel A.
Rottier. Under Hirsch, that is “[a]ll that is required.” Id.

In determining whether a defendant's use of a plaintiffs name is sufficient to identify the


plaintiff, “the name as used by the defendant must be understood by the audience as referring to
the plaintiff.” RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 46, cmt. d (1995).
Whether the plaintiff is identifiable is a question of fact, and can be determined according to “the
nature or extent of the identifying characteristics used by the defendant, the defendant's intent,
the fame of the plaintiff, evidence of actual identification made by third persons, and surveys or
other evidence indicating the perceptions of the audience.” Id. (emphasis added). Each of the
above considerations lead to the conclusion that Defendants' use of the names “Habush” and
“Rottier” clearly meets the identity requirement.

First, Defendant's own actions prove the identification point, because they would not pay for the
use of “Habush” or “Rottier” otherwise. The Defendants are not attempting to link generically to
anyone who happens to be named Habush or Rottier, in the way someone might buy a keyword
and attempt to link to generic searches for “Milwaukee lawyer.” The Defendants, before picking
these names to purchase, must have concluded that a significant portion of the consumers of
legal services in the relevant market identify “Habush” with Plaintiff Robert L. Habush and
“Rottier” with Plaintiff Daniel A. Rottier. The fact that the Defendants came to this obvious
conclusion in purchasing the names “Habush” and “Rottier” makes it incongruous for them to
now suggest that internet searchers who enter these names are not identifying them with Mr.
Habush or Mr. Rottier.

Second, it defies logic for the Defendants to argue that their use of the names “Habush” and
“Rottier” refers to anyone other than Plaintiffs. Defendants purchased these keywords from
various search engines for a purposeful reason-- to gain access to potential clients who were
looking for a particular high profile personal injury attorney. It is beyond belief that Defendants
have spent valuable advertising dollars in order to gain exposure to the pool of consumers
searching for “Joel Habush Productions” or “Arthur Rottier chaise lounges.” ( See Defs.' Br. at
25.) The Defendants clearly intended that the names they purchased and used would place their
sponsored link advertisements with the search results for Robert Habush, Dan Rottier, and their
law firm.

Third, Defendants unquestionably are attempting to free-ride on the secondary meaning that the
“Habush” and “Rottier” names have acquired, and demonstrate in the process that Plaintiffs'
names are terms that deserve protection against such conduct. Defendants' arguments ignore a
key legal principle that is clearly demonstrated by basic trademark law, but equally applicable to
privacy law: surnames can acquire secondary meaning that can be protected. Personal names
“are treated as strong marks upon a showing of secondary meaning.” E. & J. Gallo Winery v.
Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992), citing 1 J. McCarthy, Trademarks and
Unfair Competition § 13:2 (2d ed. 1984). “Secondary meaning is the consumer's association of
the mark with a particular source or sponsor.” Gallo, 967 F.2d at 1291 (finding secondary
meaning in the surname “Gallo”).

That is, at least in Wisconsin, the names of the individual Plaintiffs have come to stand for more
than just the named individuals but have also come to be associated by consumers with a
particular source of premier legal representation for personal injury plaintiffs, that source being,
in addition to Robert Habush and Dan Rottier, the Habush firm.

In his scholarly study of law firm reputations in 2004, Professor Id. Kritzer of the University of
Wisconsin repeatedly pointed to the Habush firm as having a reputation for outstanding results
that was strongly associated with Robert Habush's name:

Habush has effectively established a brand name .... Importantly, Habush's successful use of
advertising is closely tied to its reputation for successfully handling large, complex cases;
Habush's advertising is successful because the firm has a reputation of delivering a high-quality
‘product.’ ”

Herbert M. Kritzer, Risks, Reputations and Rewards 56 (Stanford Univ. Press 2004). When
Professor Kritzer conducted a survey asking Wisconsin residents if they could name a personal
injury lawyer, Habush was named more than any other, and more than three times as often as the
next-mentioned firm. Id. Prof. Kritzer states later: “Simply put, Bob Habush and his firm -
Habush Habush & Rottier - have a reputation for winning large jury verdicts and large
settlements for their clients.” Id. at 219.[FN4]

FN4. As a concrete example of the Habush reputation, Professor Kritzer recounts a report from
the National Law Journal about one of the workers killed in the “Big Blue” crane accident in
1999. “Some days before his death, in a premonition of what was to happen, [Jeffrey] Wischler
had told his wife, ‘If anything ever happens to me, I want you to call Bob Habush.’ Within
twenty-four hours of the accident, his wife had called Habush and set in motion what would end
in a jury verdict totaling $99.25 million to be shared by the families of the three dead men.”
Kritzer, id. at 219, citing A ‘typically relentless' approach wins big, Nat'l L. J., July 16, 2001, at
C9. Prof. Kritzer reported hearing anecdotally that the Habush reputation was so strong it
commanded higher settlement payments than other firms could obtain, often enough more to pay
the entire Habush contingent fee. Kritzer, id. at 220. While Prof. Kritzer said he could not
confirm that information, “[w]hat is important is the reputation it reflects.” Id.

Further, in Hirsch, the fact that others were known by the same name as the plaintiff did not
preclude an invasion of privacy claim. The court stated:

The fact that the name, ‘Crazylegs,’ used by Johnson, was a nickname rather than Hirschs actual
name does not preclude a cause of action. All that is required is that the name clearly identify the
wronged person. In the instant case, it is not disputed at this juncture of the case that the
nickname identified the plaintiff Hirsch. It is argued that there were others who were known by
the same name. This, however, does not vitiate the existence of a cause of action.

Hirsch, 90 Wis.2d at 397-98.

Likewise, Defendants' argument that people other than Plaintiffs are known by the names
“Habush” or “Rottier” does not preclude Plaintiffs' cause of action. Because Defendants' use of
the names is understood by the relevant audience as referring to Plaintiffs, as clearly
demonstrated by Defendants advertising purpose in selecting them, it does not matter that other
individuals have these same last names.

b. Statutorily-Prohibited Use is Not Limited to the Use of a Full Name


Defendants' cite to Pfaudler v. Pfaudler Co., 186 N.Y.S. 725 (N.Y. 1920) to argue that a right of
publicity does not exist in a surname alone. (Defs.' Br. at 26.) Initially, it should be noted that
Wisconsin statute prohibits the use of a person's “name;” there is no requirement that a person's
full name be used. Furthermore, the Pfaudler case is readily distinguishable from the present
case. The plaintiff in Pfaudler, having the last name “Pfaudler,” was seeking to prohibit a
company, named the “Pfaudler Company,” from continued use of that name. Pfaudler, 186
N.Y.S. at 725. In the present case, Plaintiffs are seeking to prevent Defendants, who are not
named “Habush” or “Rottier,” from continued use of those names for purposes of promoting
Defendants' business. There is an obvious difference between a business named “Pfaudler” using
that name to promote itself, and a company named “Cannon & Dunphy” or individuals named
“Cannon” or “Dunphy” promoting themselves through the use of the names “Habush” and
“Rottier.”

Defendants also cite to Swacker v. Wright, 277 N.Y.S. 296 (N.Y. 1935), which is distinguishable
from the present case because the name used in Swacker did not identify the plaintiff. The
plaintiff's name was used in Swacker to refer to a minor character in a book. Swacker, 277
N.Y.S. at 297. The plaintiff's first and last name were used only in the cast of characters section,
while the plaintiff's last name alone was used in the text of the book. Id. The court found that the
plaintiff had not stated a claim because “there is not a single parallel between the plaintiff and
the character depicted in the books” and “[n]o person familiar with the plaintiff could possibly
infer from a reading of the books that the secretary to the district attorney was intended to
portray the plaintiff, or that the plaintiff's name was being used for some commercial purpose.”
Id. at 298. In our case, the use of Plaintiffs' last names is adequate to identify Plaintiffs. See sec.
10a., supra. The relevant audience of internet users that the Defendants are focusing on are
looking for a particular personal injury attorney in conducting searches. Certainly, to this
audience, “Habush” is more than adequate to identify Mr. Habush, and “Rottier” is more than
adequate to identify Mr. Rottier. And this is clearly what Defendants intended by purchasing
these keyword names. This is in no material respect comparable to the facts in Pfaudler and
Swacker.

Defendants' continued arguments in this regard further illustrate the difference between a
permissible and impermissible uses of a name. ( See Defs.' Br. at 28-29.) Of course there is
nothing impermissible about any of the lawyers named “Cannon” or any of the lawyers named
“Dunphy” using those surnames to promote themselves. Those individuals are named as such,
and they have a right to use their own name to promote themselves. Plaintiffs do not “desire to
own and control all ‘use’ of the words ‘habush’ and ‘rottier’ on the Internet via § 995.50(2)(b),”
as contended by Defendants. (Defs.' Br. at 29.) Plaintiffs only seek to prevent the use of their
names for advertising purposes by those who are not named--and therefore have no rights to use-
- “Habush” and “Rottier.” Defendants unmistakenly fit this description.

In any event, to the extent that Defendants' seriously intend to make an issue of “identification”,
this is an issue of fact that cannot be resolved on a motion to dismiss without an evidentiary
record.

11. The Individual Plaintiffs Clearly Have A Cause of Action and the Firm is a Proper Plaintiff
to Seek Injunctive Relief
The individual plaintiffs Robert L. Habush and Daniel A. Rottier are proper plaintiffs in this
action and have clearly alleged a claim under section 995.50(2)(b). A right of privacy cause of
action under section 995.50(2)(b) can clearly be asserted by the living person whose name is
being misused. Indeed, the wording of Wisconsin's right of privacy statute makes the personal
nature of this cause of action explicit: i.e., it is the use of a living person's name by others that is
being protected. Clearly the living person with the name is “one” whose privacy right is being
invaded by any such misuse of his or her name. Wis. Stat. § 995.50(2)(b). The Complaint clearly
alleges that harm is being incurred by Mr. Habush and Mr. Rottier (Compl. ¶ 26), although proof
of harm is not a pre-requisite for obtaining an injunction to stop invasions of privacy precluded
by section 995.50(2). It is unreasonable to contend that a attorney, or the law firm in which he or
she is a part, does not suffer any harm through the name exploitation engaged in by Defendants.
However, nowhere in section 995.50 does it say that any quantum or harm, irreparable or
otherwise, has to be proven to obtain injunctive relief for a violation of the statute. “These dual
interests [(privacy and publicity)] can be protected by granting relief even if there is no adverse
economic effect on the plaintiff.” Endejan, 1978 Wis. L. Rev. at 1057.

The assertion by the Defendants that Plaintiffs have alleged that the primary harm has been
incurred by the firm is incorrect. No such allegation is found in the complaint. Defendants have it
backward. The initial harm is to Mr. Habush and Mr. Rottier. Harm to the firm follows on their
harm.

The Defendants dip into another area of law entirely in an effort to construct a bizarre theory
under which they say Mr. Habush and Mr. Rottier have no right to sue under Section 995.50 for
the misappropriation of their own personal rights of publicity. The shareholder/derivative action
cases Defendants point to simply have no application here.

In shareholder and derivative lawsuits such as each of the Wisconsin cases relied upon by
Defendants, the lawsuit is among adverse parties that already have a fiduciary or similar
relationship, whether as co-shareholders or as shareholder and corporate entity. Because they are
fighting over the same harm, usually devaluation of the company for the personal profit of an
individual stockholder, it follows logically that a given claim can belong only to one, not both.
See Defs.' Br. at 14-16, citing Felton v. Teel Plastics, Inc., 2009 WL 3245911 664 F. Supp. 2d
937 (W.D. Wis. 2009) ((shareholder suing company and co-shareholder); Rose v. Schantz, 56
Wis. 2d 222, 201 N.W.2d (1972) (shareholder suing officer, director and company); and Notz v.
Everett Smith Group, Ltd., 2009 WI 30, 316 Wis. 2d 640, 764 N.W.2d (shareholder suing
shareholder, officer, director and company). Krier v. Vilione, 2009 WI 45, 317 Wis. 2d 288, 766
N.W.2d 517, also cited by Defendants, does not apply because the plaintiffs there were not
shareholders at all and were attempting to sue the accountants of a corporation they had done
business with.

Those cases involving related co-owners and the corporate entity have no application here where
the defendant is a third party. A footnote in the law firm case cited by Defendants tells the story:

Where the injury to the stockholder results from a violation of a duty owing to the stockholder
from the wrongdoer, having its origin in circumstances independent of and extrinsic to the
corporate entity, the stockholder has a personal right of action against the wrongdoer. Absent
such independent duty, however, the wrong suffered by the shareholder is deemed to be the same
as the wrong suffered by the corporation and there is no shareholder right of action separate and
apart from the corporate right of action ....

Saxe, Bacon & Bolan, P.C. v. Martindale-Hubbell, Inc., 521 F. Supp. 1046, 1049 n. 4 (S.D.N.Y.
1981) (citation omitted) ( see Defs.' Br. at 16.)

The individual claims in this action are of the sort first described in the Saxe footnote; namely,
arising from Defendants' violation of the duty owed independently to Mr. Habush and Mr.
Rottier not to violate the rights identified by the Wisconsin privacy statute. The allegations by
the individuals in Saxe were found not to state a claim based on the unique facts of that case. But
here, Mr. Habush and Mr. Rottier have claims against the Defendants, and can bring them. The
Habush firm has a claim, too, and it can also bring it.[FN5] It's the same as if a corporate official
was the victim of a traffic accident while driving a company car. The official has an individual
claim against the other driver, and so does the corporation. Both can bring them. This is not an
either/or situation such as found in the shareholder suits.

FN5. Other than Saxe, the Defendants cite only one case in which the shareholder plaintiffs were
suing a third party. In Delta Automatic Systems, Inc. v. Bingham, 974 P.2d 1174, 1177 (N.M. Ct.
App. 1998), the court dismissed the sole shareholders' malpractice suit against the corporation's
law firm. The result was logical: the law firm's client had been the corporation, not the
shareholders, and so only the corporation had the fiduciary duty claim to allege. An attorney
does not owe a fiduciary duty to someone who is not a client. This case is entirely different. All
of the Plaintiffs here have incurred some harm by the unauthorized exploitation of the names of
Mr. Habush and Mr. Rottier and, therefore, all of the Plaintiffs have their own right to relief.

Moreover, in circumstances such as these, where individual plaintiffs' names are used with their
consent by the law firm in which they practice law, the right of Mr. Habush and Mr. Rottier to
equitable relief should include not only a restriction against further use of their names
individually but also against use of the name of the firm that incorporates their names. Allowing
use of the Habush firm name (or variations) as a keyword violates the right of publicity of Mr.
Habush and Mr. Rottier individually, because they are understood by the public to be the
“Habush” and “Rottier” associated with “Habush Habush & Rottier.” See Southland Publishing
Co. v. Sewell, 143 S.E.2d 428, 432 (Ga. Ct. App. 1965) (derogatory reference to “Smith &
Sewell Garage” was understood to defame the individual owner named Sewell as well).
Otherwise, a competitor or other advertiser could accomplish an invasion of privacy indirectly
that it could not do directly, a result that is not consistent with the purpose of our statute or sound
public policy.

Defendants' argument is like one rejected in a New York case. Billionaire Howard Hughes
alleged a right-to-publicity violation against the maker of an unauthorized adult educational
career game entitled “The Howard Hughes Game.” Rosemont Enters., Inc. v. Urban Sys. Inc.,
340 N.Y.S.2d 144 (N.Y. Sup. Ct. 1973). However, Hughes had earlier made an exclusive
assignment to his co-plaintiff, Rosemont, of the right to exploit the Hughes name and
personality. Id. at 145. The court rejected the defendants' argument that the assignment barred
Hughes from bringing an action under NY Civil Rights Law § 51 in his own name. “Plaintiff is
free to protect himself from the exploitation of his name and likeness against all the world except
Rosemont,” the court said. Id. at 147. So here, even if Mr. Habush and Mr. Rottier are seen
somehow to have assigned rights to the firm, they are still free to protect themselves against
exploitation of their names from all others, including Defendants.

This is further supported by the Restatement of the Law of Unfair Competition related to the
Commercial Value of a person's name (right of publicity). As noted in comment g., the interest in
the commercial value of a person's identity “is in the nature of a property right and is freely
assignable to others”. However, such an assignment of the right of publicity “transfers only the
right to exploit the commercial value of the assignor's identity; the personal interests protected
under the right of privacy are not transferable, and thus invasions of those rights by third persons
remain actionable by the assignor.” RESTATEMENT (THIRD) OF UNFAIR COMPETITION,
§ 46, cmt. g. (1995). Therefore, even though the individual Plaintiffs may have transferred the
right to their firm to use their names, they still retain and can enforce their personal interests in
their name.

Furthermore, with regard to the right of the firm to obtain the injunctive relief requested, “the
law of standing in Wisconsin should not be construed narrowly or restrictively.” Wisconsin's
Envtl. Decade, Inc. v. Pub. Serv. Comm'n, 69 Wis. 2d 1, 13, 230 N.W.2d 243, 250 (1975).
Applicable to this case, Wisconsin courts have held that an organization has standing to sue if it
alleges facts that demonstrate that a member of the organization has standing to sue in its own
name, despite arguments that standing could not exist because the alleged injury related solely to
the member's individual interests. Id. at 19-20.

Wisconsin Statutes section 995.02(1) entitles “one” whose privacy right has been invaded to
obtain equitable relief. In so doing, it does not expressly or implicitly preclude an employer or
any other third person from joining in the request for injunctive relief to protect the interest it
may have resulting from the misuse of a living person's name. Section 995.50 does not say that
only the living person can obtain relief; it only says that anyone seeking relief has to have a
privacy (right of publicity) interest based on the name of a living person.

Habush Habush & Rottier S.C. is a proper plaintiff for purposes of joining individual Plaintiffs
Robert L. Habush and Daniel A. Rottier in the claim for injunctive relief. By obtaining at least an
implied right to use the names of the individual Plaintiffs, the firm has a protectable interest in
the right of publicity and thereby “has standing to assert the right against others,” even though
the personal interests protected remain with the individual and are separately actionable. See,
RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 46, cmt. g (1995).

Moreover, an organization “has standing to assert the corresponding rights of its members.”
NAACP v. Button, 371 U.S. 415, 428 (1963) (allowing organization to proceed as plaintiff). This
is especially so where the remedy sought is “a declaration, injunction, or some other form of
prospective relief,” because “it can reasonably be supposed that the remedy, if granted, will inure
to the benefit of those members of the association actually injured.” Warth v. Seldin, 422 U.S.
490, 515 (1975) (denying relief where association sought damages for members with disparate
claims rather than injunctive relief benefitting all members). See also American Library Ass'n v.
F.C.C., 401 F.3d 489, 492-93 (D.C. Cir. 2005) (an association's standing may be “self-evident”
and arises if at least one member suffers harm from the challenged conduct that can be
“redressed by a favorable decision”) (citations omitted). In this case, the Firm's enjoining the
continued misappropriation of Mr. Habush's and Mr. Rottier's names would “inure to the benefit
of its employees [the individual Plaintiffs] actually injured,” as required by Warth. Because the
names that have been used to invade the privacy of the individual Plaintiffs in this case are part
of the corporate name of the law firm Habush Habush & Rottier S.C., the firm has a legally
recognized interest in seeking injunctive relief along with the individuals whose right of privacy
has been invaded.

Defendants' attempt to escape liability by postulating a theory by which no one has the right to
any relief for this statutory violation is a complete non-starter. This would leave most service
professionals with no effective remedy for the unlawful exploitation of their name. Defendants
can't be seriously urging this result. The right to be free from invasions of privacy is not forfeited
or waived because a person joins a partnership or service corporation which bears his or her
name, and the entity bearing their names also has the right to protection against the exploitation
of these names by others.

CONCLUSION

Plaintiffs have clearly stated a claim in their complaint which, if proven, gives them the right to
enjoin Defendants' violation of Wis. Stats. Sec. 995.50 (2) (b). For purposes of this motion, the
Court must accept as true all of the allegations in the complaint. To the extent any material
factual issues exist, they are not resolvable on a motion to dismiss. The Defendant's cry for the
Court to ignore the language of the statute and erect artificial barriers to recovery is
unsupportable. There is no good reason for the Court to construe the statute as narrowly as
Defendants propose. No free flow of news or media interests is implicated here. The
“information highway” will not shut down if advertisers like Defendants are not able to exploit
names of living individuals to intrude on internet searches for information. The application of
our Privacy law to the Defendants' targeting of Plaintiffs' names to obtain more visibility for their
advertising is not inconsistent with any persuasive judicial authority and finds ample support in
the plain language and intent of our Privacy statute and the authorities Plaintiffs have cited to the
Court. The application of our Privacy law to these facts is consistent with the policy established
by our legislature; namely, that it is contrary to common notions of decency and fairness to
permit anyone to exploit the value, prestige, and good will associated with another person's
name.

The fact that this is an advertising strategy employed on the internet is immaterial. It is not
important how the Defendants have exploited Plaintiffs' names, but whether they have done so.
As one Court noted:

A rule which says the right to publicity can be infringed only through the use of nine different
means of appropriating identity merely challenges the clever advertising strategist to come up
with the tenth.

White v. Samsung Elec. Am., Inc., 971 F.2d 1395, 1398 (9th Cir. 1992).

Defendants' motion to dismiss should be denied.

Dated: January 15, 2010

FOLEY & LARDNER LLP

By: <>

James R. Clark

Attorneys for Plaintiffs Robert L. Habush,

Daniel A. Rottier, and

Habush Habush & Rottier S.C.

James R. Clark, WI Bar No. 1014074

Paul Bargren, WI Bar No. 1023008

Adam E. Crawford, WI Bar No. 1056803

FOLEY & LARDNER LLP

777 East Wisconsin Avenue

Milwaukee, WI 53202-5306

414-297-5543 (JRC)

414.297.4900 Facsimile

Email: James R. Clark


jclark@foley.com

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