habush v cannon response to motion to dismiss

8/8/2019 Habush v Cannon Response to Motion to Dismiss

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Circuit Court of Wisconsin.Milwaukee CountyRobert 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 HabushHabush & 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 WisconsinAvenue, Milwaukee, WI 53202-5306, 414-297-5543 (JRC), 414.297.4900 Facsimile, Email:James R. Clark: [email protected].

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 anActionable Use ... 17

5. Defendants' Use of Plaintiffs' Names in Keyword Advertising is “For Advertising Purposes orFor 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 theScope of Plaintiffs' Complaint and The Invasion of Privacy Alleged in This Case is Clearly anUnreasonable 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 OutsideWisconsin ... 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 ... 48SUMMARY OF ARGUMENTOne 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 tobuild up good will in their name, which serves as the primary vehicle by which they maintain theviability of their practice and ability to earn a living. It is understandably offensive to people forothers 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 fromthe inappropriate use by others of their names. Our legislature has declared that the “use, foradvertising 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 whatWisconsin's public policy should be, this is the public policy enacted by the electedrepresentatives of this state.

It is hard to imagine conduct that is more clearly within the scope of what is prohibited by thisprivacy law than that of the Defendants. Defendants are paying money for the Plaintiffs' namesin 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' advertisementappear prominently any time a member of the public does an internet search for informationabout the Plaintiffs. There is a direct connection between Defendants' purchase and use of thePlaintiffs' names and the appearance of Defendants' advertisement in the search results obtainedfrom 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 regardto the “or for purposes of trade” component of our privacy law, how can it be reasonablymaintained that Defendants are not “trading” on the names of the Plaintiffs when the Defendantsare buying their names to get the Defendants' advertising in front of internet searchers in a waythat would not otherwise be possible? These names are not being used for personal purposes byDefendants, they are being used to generate business.

This is the violation that Plaintiffs have alleged in this Complaint. When Plaintiffs' factualallegations 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 notaccurate, and their Motion to Dismiss must be denied.

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

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

In fact, given the ubiquity of the internet, enforcement of our privacy law in this setting is all themore important. Unquestionably, the internet “information superhighway” is a valuable publictool. But every “superhighway” must have “rules of the road” in order to prevent individualrights from being trampled by the stampede for profits and the intrusion which it can cause intoother 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 thepurchased key words does not violate any applicable laws. Wisconsin Statutes section 995.50 isone 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 bysubsection (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 isprecisely what Defendants are doing, and to contend that our Courts should bless this asreasonable conduct not only runs counter to the letter and spirit of our privacy law but itpromotes a misguided notion of sound public policy. At minimum, this presents an issue thatcannot be resolved at the motion to dismiss stage.

There is no absolute or qualified legal “privilege” giving Defendants any right to dismissal as amatter of law. Moreover, while “incidental” or trivial uses of a living persons name should not beactionable 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 infront 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 “advertisingpurposes” 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 asuggestion of endorsement or sponsorship of the Defendants' services by the Plaintiffs or ashowing that members of the public who are confronted with the advertising result of theDefendants' use of the Plaintiffs' names are likely to be misled or confused. If the legislature hadintended to require these as elements to sustain a privacy claim, it would have said so. Thequotations selected by Defendants from cases in other jurisdictions do not support the notion thatit 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 shouldconclude that one or more of these are required elements of proof, they are adequatelyencompassed within the four corners of Plaintiffs' Complaint given the statement of theunderlying facts and the allegation that the Defendants' conduct violates Wisconsin StatutesSection 995.50. And if these are relevant questions under these circumstances (which they arenot), then they present factual issues that cannot be resolved on a motion to dismiss, wherePlaintiffs' 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 cannotbe forfeited simply because his name is incorporated into that of his law firm. Nor is there anysense to the incredible suggestion that anyone who puts a website on the internet has waived hisor 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 justifyDefendants' 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 inthe 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 individualPlaintiffs 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” intheir 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 seekingto 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 personalinjury 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 benefitthey derive from trading off of the these names. Defendants at least implicitly acknowledge thisin their brief and, to the extent Defendants are attempting to deny it, this also is a factual issuethat cannot be decided on a motion to dismiss.

Defendants' actions cannot reasonably be compared to the placement of advertisements in theyellow pages. An advertiser in the yellow pages does not “use” the names of others to obtain theplacement of its advertisements in the yellow pages. In fact, contrary to the unsupportedassertion of the Defendants outside the allegations of the complaint, an advertiser in the yellowpages 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 fora copy of any letter addressed to Mr. Habush or Mr. Rottier so the competitor can forward asolicitation to the writer of the letter. Defendants should not be free to accomplish the sameresult 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 additionalelements onto the plain language of this privacy statute and construe it so narrowly as to permitthis intrusive advertising practice of Defendants. Notwithstanding Defendants' mantra of “freecompetition” and the virtues of the free flow of information to the contrary, this advertisingpractice of Defendants is personally invasive and offensive. Free competition means faircompetition that does not violate any individual rights. Although lawyers have the right toadvertise, that does not give them license to violate the rights of others in doing so (in fact thereis even a greater need for professional responsibility and dignity in lawyer advertising). Nohigher public interest compels the Court to essentially amend our privacy statute to fitDefendants' 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, whichclearly serve legitimate public interests. Nor will the application of our privacy statute toDefendants' conduct in any material way chill their ability to compete with the Plaintiffs. Andeven if it does have some chilling effect on competition, this cannot override the will of thelegislature 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 gettheir advertising in front of members of the public who may be looking for “personal injuryattorneys in Wisconsin” or “mesothelioma attorneys” or “asbestos attorneys” or “multi-milliondollar jury verdicts” What they should not be permitted to do, however, and what our privacystatute forbids, is the use (here through the purchase of) the names of living persons so that anytime a member of the public seeks information specifically about such persons, they areconfronted 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 achoice. But these consumers are looking for the Plaintiffs, not the Defendants. That is what theDefendants 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 andhonorable ways to compete without doing that? What public interest is served by permittingsellers of goods or services to populate the search results for internet users looking forinformation by name about, for example, Wisconsin's leading heart surgeon, with ads fromcompeting 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 bestappellate lawyers in the state or from purveyors of assorted products that a person mayreasonably not want to be associated with?

Our Privacy Law gives individuals the right to be free from others trading on their names. Thelegislature 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 substantiallyoutweighs any interest competitors or others, including the public, may have in invading suchindividually 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 complaintis legally sufficient to put forth a claim for which relief can be granted.” Below v. Norton, 2008WI 77, ¶ 18, 310 Wis. 2d 713, 751 N.W.2d 351 (citation omitted). A complaint should bedismissed under this standard “only if there are no conditions under which the plaintiff canrecover.” Id. (citation omitted). “The facts pleaded and all reasonable inferences from thepleadings are admitted to be true” for purposes of considering a motion to dismiss for failure tostate a claim. Id. (quoting citation omitted).

Defendants' Brief in support of their motion to dismiss substantially ignores the above standardset forth by the Wisconsin Supreme Court. The issue on this motion to dismiss is not whether theCourt should grant relief in response to Plaintiffs' claim, but rather whether the Court could grantrelief to Plaintiffs, having accepted the allegations in Plaintiffs' Complaint as true. Defendants'Brief improperly introduces numerous factual assertions in support of their motion. They alsodevote pages of argument as to why Defendants' keyword advertising practices are not unfair orotherwise improper. However, the sole issue on this motion to dismiss is whether the allegationsof 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 section995.50(2)(b), as it alleges that Plaintiffs' names were used for advertising purposes or purposesof trade without consent and that Defendants' conduct violates Wisconsin Statutes section995.50(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 theirnames. The name “Habush” is associated by members of the public with Mr. Habush'sprofessional accomplishments and his philanthropic efforts. The name “Rottier” has similar

notoriety among the public because of Mr. Rottier's professional accomplishments andphilanthropic efforts. Further, Mr. Habush and Mr. Rottier have garnered further publicrecognition 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' advertisementsprominently displayed as the first entry a searcher sees anytime information is sought on searchengines about Mr. Habush or Mr. Rottier. (Compl. ¶¶ 20, 21.) This is an intentional and illegaleffort 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 misleadconsumers of legal services by, among other things, leaving the impression that Mr. Habush andMr. Rottier are endorsing the Defendants and the promotional statements made in theirpurchased search result. The harm to Mr. Habush and Mr. Rottier cannot be readily compensatedfor in damages. ( See Compl., ¶¶ 24-26.)

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

3. The Scope and Interpretation of Wisconsin Statutes Section 995.50Although 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), WisconsinStatutes section 995.50(2)(b) is really a derivative of the common law appropriation tort. JudithEndejan, The Tort of Misappropriation of Name or Likeness Under Wisconsin's New PrivacyLaw, 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 Courtdefined the relevant interest being protected this way:

“Because the right of publicity - the right to control the commercial exploitation of aspects of aperson's identity - differs from other privacy rights, it is appropriate for this court to recognize acause of action to protect this right, although other privacy rights were rejected in prior decisionsof this court. Protection of the publicity value of one's name is supported by public policyconsiderations, such the interest in controlling the effect on one's reputation of commercial usesof one's personality and the prevention of unjust enrichment of those who appropriate thepublicity value of another's identity.”



Defendants' contend that the Wisconsin Privacy Statute should be narrowly construed becausethe New York statue is. But this must be evaluated in light of the fact that, whereas WisconsinStatutes section 995.50 seeks to protect three common law privacy categories [See, 995.50sections (2)(a),(b) and (c)], the New York statute only addresses the “misappropriation invasionof 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 actionableunder the New York privacy statute. That is why New York courts have commented that itsstatute should be narrowly confined to the “commercial appropriation mold”; i.e. to avoidspilling into the other privacy invasions. See id. at 1042. In reality, in the realm of casesinvolving commercial appropriation, New York has been anything but strict. “Except forprivileged 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 beconstrued narrowly. The “far more restrictive treatment” of the right to privacy noted in Paulsen

applies to constitutionally protected “activities involving the dissemination of news orinformation concerning matters of public interest.” Paulsen, 299 N.Y.S.2d at 505-506. Incontrast, 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 becharacterized as ‘public figures.’ ” Id. at 505. The New York trial court's denial of relief toplaintiff and comedian Pat Paulsen hinged on the fact that - seriously or not - he was presentinghimself 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 Amendmentprotection, not a commercial misappropriation. Id. at 507-08. This is the so-called strictapplication 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 aperson's name or photograph and the failure to procure the person's written consent for suchuse.” 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 fornarrow application of the statute, overlaid with numerous jurisdictional and proceduralrequirements, has no basis when all a right of publicity plaintiff needs to show in New York isthat the defendant's use was “a blatant ‘selfish, commercial exploitation.’ ” Id. *5 (emphasisadded).

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. Generallythese approaches reveal that the use of a name or picture for commercial gain should beactionable in nearly every case .... Both privacy and publicity interests should be furthered by thetort. These dual interests can be protected by granting relief even if there is no adverse economiceffect on the plaintiff.



Endejan, supra, at 1057.

4. The Alleged Conduct is a “Use” Within the Meaning of Section 995.50a. Plain Meaning of StatuteDefendants' 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 Stateex rel. Kalal v. Circuit Court, 2004 WI 58, 271 Wis.2d 633, 681 N.W.2d 110. Interpreting astatute begins with the language of the statute, because it is assumed that the legislature's intenthas been expressed in the language of the statute. Kalal, 2004 WI 58, ¶¶ 44-45. The language isgiven its “common, ordinary, and accepted meaning,” except for technical or specially definedwords. Id. Where the statutory language is unambiguous, there is no need to consult extrinsicsources 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 statuteprohibits “[t]he use, for advertising purposes or purposes of trade, of the name ... of any livingperson” 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 usedto 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 acceptedmeanings. 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 triggeredanytime an internet user seeks information about the living persons Robert L. Habush or DanielA. Rottier. This plain language interpretation of “use” is confirmed by reference to dictionarydefinitions. Kalal at ¶ 53 (the term at issue had “a common and accepted meaning, ascertainableby reference to the dictionary definition”). Black's Law Dictionary defines “use” as “[t]heapplication 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 Dictionary3531 (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 thepurpose 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 thepurchase of keywords for internet searches, in an attempt to construct an argument thatDefendants' conduct is not a “use” for purpose of advertising or trade. In so doing, theycompletely ignore the most analogous cases on this subject. As of now, virtually all casesinvolving disputes regarding a defendant's choice and use of particular keywords that areassociated 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 thatthe 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 inconfirming that the purchase of a particular word as part of a keyword advertising campaignconstitutes a “use” of that word. Further, since Defendants relied on trademark treatises and caselaw in various sections of their brief, it is important that the Court be properly informed on theactual 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 thedefendant'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 useof a trademark by the internet search engine provider, the substantial majority of Courts that haveconsidered the question have found this practice of purchasing keyword names to be acommercial use in disputes between competitors as well. In fact, Plaintiffs are not aware of anytrademark 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 courtremarked that “[t]he Lanham Act's use requirement is not so narrow” to preclude a finding of usein “[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 placeadvertisements 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” inthis 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 servicesin 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), thecourt granted a preliminary injunction to the plaintiff, finding that the defendant had “gained anunearned advantage and ha[d] misappropriated [the plaintiff's] goodwill” by purchasing theplaintiff's trademarks as keywords from internet search engines. Id. at 1164-65. In that case, thedefendant, like Defendants in this case, defended its advertising practices by arguing that theywere merely competitive advertising. See id. at 1167-68. In considering the plaintiff's likelihoodof success in order to grant preliminary injunctive relief, the court concluded that “purchasingkeywords containing a plaintiff's trademarks constitutes a ‘use in commerce’ under the plainmeaning of the Lanham Act.” Id. at 1173. The court found that the defendant had “used” theplaintiff's trademarks in keyword advertising on two different levels: first, the defendant used themarks to purchase advertising from the search engine providers; and second, the defendantprofited from using the plaintiff's marks when it conducted business with internet users whowere 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. Habushand Mr. Rottier both to purchase advertising from search engines and also to conduct businesswith customers who had initially searched for Plaintiffs' names. Analogous to the court'sconclusion in Finance Express, Defendants' use of Plaintiffs' names in this manner properlyconstitutes 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. ExperianInfo. Solutions, Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009) (“purchasing keywordscontaining a trademark to generate advertising from internet searches constitutes ‘use incommerce’ 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 toits websites. Courts have held that such use constitutes commercial use for purposes of theLanham 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 sponsoredlinking 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 FundingLLC, No. 06-0597, 2007 U.S. Dist. LEXIS 288, at *17 (E.D. Pa. Jan. 4, 2007) (despite thedefendant's argument that “use of plaintiff's marks in a method invisible to potential consumersprecludes a finding of trademark use,” the court found that “defendant's use of plaintiff's marksto trigger internet advertisements for itself is the type of use consistent with the language in theLanham 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'smark tied to the promotion of [defendants' goods and retail services, but the mark was used toprovide 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 purchaseof trademarked keywords from search engine providers constitutes a commercial “use” SeeMorningware, Inc. v. Hearthware Home Prods., Inc., No. 09 CV 4348, 2009 U.S. Dist. LEXIS106615 (N.D. Ill. Nov. 16, 2009). If the vast majority of federal courts, including in the SeventhCircuit, have concluded that the practice of purchasing trademarked keywords for Internetadvertising is a commercial “use,” then it follows that the purchase of a living person's name as akeyword is a “use” under Wisconsin Statutes Section 995.50(2)(b). A living person deserves atleast the same--if not more-- protection against the unauthorized use of that person's name, as atrademark 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 byDefendants in purchasing the names of Mr. Habush and Mr. Rottier, confirms that the allegedconduct of Defendants is a “use.” In describing the program's “Keyword Tool,” Google remarksthat “You [(the keyword purchaser)] are responsible for the keywords you select and for ensuringthat your use of the keywords does not violate any applicable laws.” See Exhibit A (emphasisadded). “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 anActionable UseIn arguing that no “use” has occurred in this case, Defendants state that courts have required thatthe 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 NewYork 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 casewhere the defendant falsely asserted on the internet (Craigslist) that the plaintiff was seeking jobapplications 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 issuein that case did not turn on any issue of name visibility. In fact, it could not have, because thecourt noted that there was not even any allegation in the complaint that the employee's actualname 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 wassufficient for the person's name to used “in connection with” the offending material. The courtwent on to note that “[i]n any event, [defendant's] alleged conduct does not fall within the reachof 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 thatthe defendant's activity was for an advertising or trade purpose. These facts are in no respectcomparable 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 (2dCir. 1977), support Defendants' argument. First, Meeropol involved the privacy right to be leftalone, rather than the privacy right against commercial misappropriation of a living person'sname that is at issue in this case. Meeropol, 381 F. Supp. at 36 (“[P]laintiffs also allege thatdefendants 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 theRosenbergs, rather than the Meeropols--the name they had used for the past twenty years. Id. Inthis case, it is obvious that Mr. Habush's and Mr. Rottier's actual names are the names that havebeen used.

Defendants then assert that the alleged use of the names of Mr. Habush and Mr. Rottier in thiscase is analogous to an attorney using the name “Habush” in a Westlaw search to findinformation 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 “atechnical reading” of section 995.50(2)(b) because the use of the name would be “for profit” ismisplaced. Aside from the fact there is no “for profit” standard in section 995.50(2)(b), in anynexus between the use of the “Habush” name in connection with a search to find informationabout the Miller Park Crane accident and a “trade purpose” (attempt to draw trade to theattorneys firm) is at best incidental and trivial. And, in this irrelevant example, the attorney is notusing the name of Mr. Habush in order to benefit from his reputation, good will, and prestige asis alleged in this case.

Defendants' contention that because the names “Habush” and “Rottier” are inputted by theinternet 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 thestatute requires that the “use” be visible to the public. The trademark keyword cases illustratethis. 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, eventhough Defendants would contend that the “uses” in those cases were not visible either. ( Seesupra 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 cursoryreview of the Exhibits attached to Plaintiffs' Complaint. Consider Exhibit A to the Complaint, forexample, 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 internetuser “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 displayedto 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 analogoustrademark case involving keyword advertising, the court considered precisely this issue infinding 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 searchresults, because the display included the text “results for [the searched-for trademark].” Heartson Fire, 603 F. Supp. 2d at 282-83 (emphasis added). The court remarked “[i]ndeed, this displayis exactly what the [d]efendant paid for: the association of [the defendant's] sponsored link withthe 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 asuggestion 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 theirposition that does not actually exist. Contrary to Defendants' representation, Vinci actually heldthat the alleged use was merely incidental to the promotion of the Dixie cups, and that thereference to the athletes and their accomplishments “was purely informational”. Vinci, 591N.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 itin connection with legitimate mention of [the plaintiff's] public activities; nor is the value of [aplaintiff'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'sbenefit 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 namethat 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 thenames in order to derive a benefit from the “reputation, prestige, and other value” associatedwith 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]alseendorsement is not the issue.” See 5 J. Thomas McCarthy, MCCARTHY ON TRADEMARKSAND UNFAIR COMPETITION; § 28:7 (4th ed. 2009). Thus, despite Defendants' arguments tothe contrary, an indication of endorsement or sponsorship is not required to demonstrate anactionable 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 aproduct or service was just one of the ways that an advertiser can violate the right of publicityinterest being protected.)

5. Defendants' Use of Plaintiffs' Names in Keyword Advertising is “For Advertising Purposes orFor Purposes of Trade”

Contrary to Defendants' arguments, Defendants' use of Plaintiffs' names as part of its keywordadvertising campaign is “for advertising purposes” or “for purposes of trade” within the meaningof Wisconsin Statutes section 995.50(2)(b). Under any plain or ordinary meaning of the statutorylanguage, the use of the names of Mr. Habush and Mr. Rottier is for “advertising purposes”. NoWisconsin 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 theadvertising 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, anadvertisement 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 becausePlaintiffs 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 otheradvertisement. (Defs.' Br. at 36.) However, in advancing this conclusory argument, theDefendants focus only on the “appearing in” component of the definition and completely ignorethe “as part of” component.

It is self-evident that the use of Plaintiffs' names in Defendants' keyword advertising campaign isa use that is undertaken “as part of an advertisement or solicitation for patronage.” When aninternet 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 useof Plaintiffs' names is intimately tied to the very existence of the sponsored link advertisementspurchased by Defendants, the argument that such a use is not “part of an advertisement orsolicitation of patronage” is untenable. Therefore, the cases cited by Defendants offer nopersuasive support for their contention that their use of Plaintiffs' names is not “for advertisingpurposes.”



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); seealso Flores, 164 N.E.2d at 857. Defendants' use of Plaintiffs' names is clearly a use that wasintended 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 lookingfor a personal injury attorney. The problem is with the method by which Defendants haveadvertised for and attempted to divert customers--by illegally using the names of Mr. Habushand Mr. Rottier without their consent.

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

Defendants first cite to Loft v. Fuller, 408 So. 2d 619 (Fla. Dist. Ct. App. 1981) to support theirargument that some expression of endorsement or promotion is necessary. The alleged use inLoft 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 moneyfrom the sale of his book that contained the name of the deceased pilot was not enough to findthat 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 theunauthorized 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 aprofit, but rather because of the way it associates the individual's name or his personality withsomething else.” Id. at 622-23. Contrary to Defendants' argument, the quoted language from Loftdemonstrates that the use alleged by Plaintiffs in this case is a use for advertising purposes orpurposes of trade. Defendants are using Plaintiffs' names to “directly promote” their business, by“associat[ing] [Plaintiffs' names] ... with something else,” that is, with Defendants' sponsoredlink advertisements.

Defendants also cite Namath v. Sports Illustrated, 371 N.Y.S.2d 10 (App. Div. 1975), aff'd 352N.E.2d 584 (N.Y. 1976) and Almeida v. Amazon.com, Inc., 456 F.3d 1316 (11th Cir. 2006) todefend their argument that an expression of promotion or endorsement by the plaintiff of thedefendant's services is necessary to constitute “for purposes of trade.” This is not correct. LikeLoft, these cases merely stand for the proposition that the mere use of a name or image in apublication, 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, 371N.Y.S.2d at 12. With regard to the endorsement issue, the court simply said that if there was anindication of endorsement a different issue would have been presented (likely because it wouldhave indicated that the defendant was trying to take advantage of the reputation, prestige, orother value at that time associated with the Namath name). Id. The court did not say that anindication of endorsement by Namath was a required element of a cause of action, or that it wasthe 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 directlypromote a product or service to be a commercial use, not that the person whose name isimproperly 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 becausethe 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 againstDefendants under our statute either. However, the use of Plaintiffs' names by the Defendants inthis case is far different. Defendants are wrongfully using Plaintiffs' names in a way that drawspotential clients to Defendants' advertisements by capitalizing upon the potential clients' originalintention to search for information regarding Mr. Habush and Mr. Rottier. Such use, regardlessof 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 byPlaintiffs, this is sufficiently pled by the allegations in the Complaint and is an issue of fact thatcannot be resolved on a motion to dismiss.

6. “Unreasonableness” is not a Separate Element of an Invasion of PrivacyContrary 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 threeactionable types of invasion of privacy that are described in Subsection (2). The language of thedescriptions in Subsection (2) confirms that each invasion of privacy described has beendetermined to be per se unreasonable if the elements of the particular privacy invasion have beensatisfied. 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 aplace that a reasonable person would consider private or in a manner which is actionable fortrespass.

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 areasonable person, if the defendant has acted either unreasonably or recklessly as to whetherthere was a legitimate public interest in the matter involved, or with actual knowledge that noneexisted. It is not an invasion of privacy to communicate any information available to the publicas 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 distinctunreasonableness element to be alleged and proved in actions for invasion of privacy underSubsections (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 orpurposes of trade without that person's consent.

7. Even If Plaintiffs Must Ultimately Demonstrate Unreasonableness, This is Encompassed in theScope of Plaintiffs' Complaint and The Invasion of Privacy Alleged in This Case is Clearly anUnreasonable One.As demonstrated above, “unreasonableness” is not a separate and distinct element of an invasionof 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 entitledto relief.” Wis. Stat. § 802.02(1)(a). Though the word “unreasonably” was not explicitly allegedin Plaintiffs' Complaint, it need not be, because the Complaint alleges a violation of section995.50 (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 muchspeculation leaving too much to the imagination of the court.” See Wilson v. Cont'l Ins. Cos., 87Wis. 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 wordsthat 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 toshow 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 section995.50(2)(b), this standard should only be applied to exclude invasions which are “incidental” ortrivial, or those which is covered by an established legal privilege. Otherwise, the reasonablenessstandard 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 tocloak 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. InNew Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 2002), theCourt dismissed the Plaintiff's claim because of the existence of a statutory privilege in theCalifornia Privacy law which provided a complete defense if the name was used “in connectionwith any news, public affairs, or sports broadcast or account”. The Wisconsin statute contains nosuch privilege and, in any event, the use by the defendants in this case (buying Plaintiffs namesto gain their advertisements access to internet searches specifically seeking information about thePlaintiffs) is in no reasonable respect a news event, a comment on public affairs, or a sportsbroadcast or account.



Furthermore, Defendants' use of Plaintiffs' names is not a trivial use that can escape the statutoryprohibition of section 995.50 under the “incidental use” doctrine. Rather, it is a persistent andongoing use of Plaintiffs names to promote Defendants' services that occurs every time anInternet user searches for the words “Habush” or “Rottier.”. Defendants cite a number of caseswhere 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 searchengine can hardly be analogized to a four-second appearance in an hour-long televisionbroadcast 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 thiscase is merely incidental demonstrate just the opposite-- the continuous, repeated, and purposefuluse 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.2d504, 505 (Sup. Ct. 1956) (alleged use was statement in motion picture to go to “Stillman's Gymand 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 inpaid 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 currentsurname 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 televisiontelecast); Almeida v. Amazon.com, Inc., 456 F.3d 1316, (11th Cir. 2006) (alleged use by onlineretailer 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 asa contact person); Vinci v. Am. Can Co., 591 N.E.2d 793, 794 (Ohio Ct. App. 1990) (alleged usewas 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 FoxFilm Corp., 256 N.Y.S.2d 301, 304 (App. Div. 1965) (alleged use was two mentions of plaintiff'sname 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 defendantwithout plaintiff's objection, in defendant's advertisement).

The Restatement of the law of “Appropriation of Name or Likeness”, which is the invasionprohibited by 995.50, has set forth a bright line test for whether the unauthorized use of aperson'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) OFTORTS § 652C, “Appropriation of Name or Likeness,” cmt. d. (1977). The complaint allegesthat the Defendants have used the Plaintiffs' names to deliberately exploit their value foradvertising purposes. This is more than sufficient to meet the pleading requirements and, giventhis 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 whetherthe use is “incidental”, the Defendants' practice is clearly unreasonable. The only reasonDefendants purchase the names of Mr. Habush and Mr. Rottier is because they know thereputation and good will of these lawyers is such that their name recognition results in largenumbers 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 goodwill and prestige in this fashion? The more accomplishments and philanthropy tied to aprofessional name, such as that of Mr. Habush, the more attractive a target the name will be forthose seeking to benefit from that name recognition. Validating this activity as reasonable willencourage the proliferation of advertisements on sites of well-known professional people that notonly “reaps what they have sown” but breeds confusion and interferes with the intent of theinternet search. Although sponsored sites based on keyword names of prominent professionalsmay be limited to three today, they could be ten or more tomorrow. Ever increasing ransom mayhave to be paid to the search engines in order to protect the value built up in a professional'sname 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 gooutside the Complaint and contend that the use (purchase) of living person's names for keywordsearches 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 thispractice, or worse, this hardly should be the measure for the standard of care for reasonableservice providers in this state. And even if it is factually true that advertisers are using Oprah'sand President Obama's names in connection with interest keyword searches with impunity, thathas nothing to do with the question of whether such use is an actionable invasion of privacyunder our statute.

In addition, Defendants improperly introduce extrinsic evidence, in the form of an advertisementby Plaintiffs, to support the false analogy drawn by Defendants that its conduct is comparable toplacing 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 apersons name. Nor does the placing of plain generic aspirin on the shelf next to Bayer haveanything to do with the “use” of a living persons name to accomplish that result. Even if anadvertiser has the right to direct where its advertisement is specifically placed in these directoriesor in a newspaper or precisely where its product is placed on the shelf (which Plaintiffs disputeand which in way outside the scope of the complaint), this practice does not run afoul of section995.50(2)(b) because another person's name is not used to place the advertisement or theproduct. 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 assistinternet searchers who are looking for attorneys in areas of the law in which Defendants practicein order to steer the searchers to them or to give their legal practices more public visibility, aslong as the names of living persons are not used. However, it is not reasonable for Defendants topurchase the names other living persons to trigger Defendants' advertisement anytime an internetuser 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 isnot), 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 hasbeen alleged by Plaintiffs, claim that possible deception of the public and indication of source ororigin 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 abundantlyclear. Although these “requirements” may be elements of offenses under unfair competition andtrademark law, they are not a necessary element of proof under our privacy statute. In fact, noneof 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 duLac v. Twentieth Century-Fox Film Corp., 256 N.Y.S.2d 301 (N.Y. App. Div. 1965) was a rightof 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 privacystatute. 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 namehad occurred, and right of privacy statutes were “not passed with the idea of interfering with thecirculation of newspapers or the publication of books within proper limits.” Flores, 164 N.E.2d at857. Defendant's have cited no case in which a Court has held that confusion or deception (orsource/origin) is a required element of proof in a privacy claim premised on the commercialmisuse of an individuals name.

In the portion of the Restatement of law of unfair competition that deals the appropriation of thecommercial 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 oncmt. b. (1995).

Nowhere in the Wisconsin Supreme Court's decision in Hirsch v. S.C. Johnson & Sons, Inc., 90Wis. 2d 379 (1979), which discussed Wisconsin's common law cause of action for appropriationof a person's name for trade purposes prior to the adoption of 995.50, is there contained even ahint that these are required elements for this privacy claim. Defendants' attempt to transferelements of other causes of action to what is a clear and straightforward statutory prohibition onthe use of a person's name for advertising or trade purposes without that person's consent has novalid legal basis.

In any event, even if they are required elements of proof, it is specifically alleged thatDefendants practice serves to confuse and mislead consumers and any source/origin element isadequately pled by the allegation that section 995.02 (2) (b) has been violated. If they arerelevant (which they are not), these are not issues that can be resolved by the Court on a motionto dismiss. In asking the Court to rule as a matter of law that no internet searcher could possiblybe confused, the Defendants improperly ask the Court to make numerous assumptions that havenot been proven, including that users of the internet are sophisticated enough to know exactly



Defendants rely heavily upon the New York statute, but fail to note an important distinction. TheNew York statute specifically states that violations must occur “within this state.” NY CivilRights 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 lawDefendants cite for this point does not apply. ( See Defs.' Br. at 33, relying on citation to “withinthis 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 providedmay maintain an equitable action in the supreme court of this state against the person, firm orcorporation 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 thedefendant shall have knowingly used such person's name, portrait, picture or voice in suchmanner as is forbidden or declared to be unlawful by section fifty of this article, the jury, in itsdiscretion, 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,” theSupreme 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 thefallacy of their position. New York's intermediate appellate court ruled that a dance modelsatisfied New York's “within this state” pleading requirement under § 51 New York simply byalleging 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 wasavailable 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 ismaintained.” Id. “[P]laintiff's assertion of a website's global accessibility sufficiently meets therequired statutory element of use within New York State.” Id. So Defendants attempt to avoidthe application of the Privacy Statute on this technicality would not fly even in a state like NewYork 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, 280N.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 thewronged person.” Hirsch, 90 Wis. 2d at 397. In this case, the names “Habush” and “Rottier” thathave 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 theplaintiff, “the name as used by the defendant must be understood by the audience as referring tothe 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 “thenature 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 theabove 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 theuse of “Habush” or “Rottier” otherwise. The Defendants are not attempting to link generically toanyone who happens to be named Habush or Rottier, in the way someone might buy a keywordand attempt to link to generic searches for “Milwaukee lawyer.” The Defendants, before pickingthese 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 obviousconclusion in purchasing the names “Habush” and “Rottier” makes it incongruous for them tonow 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 fromvarious search engines for a purposeful reason-- to gain access to potential clients who werelooking for a particular high profile personal injury attorney. It is beyond belief that Defendantshave spent valuable advertising dollars in order to gain exposure to the pool of consumerssearching for “Joel Habush Productions” or “Arthur Rottier chaise lounges.” ( See Defs.' Br. at25.) The Defendants clearly intended that the names they purchased and used would place theirsponsored link advertisements with the search results for Robert Habush, Dan Rottier, and theirlaw 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 akey legal principle that is clearly demonstrated by basic trademark law, but equally applicable toprivacy 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 andUnfair 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 secondarymeaning in the surname “Gallo”).

That is, at least in Wisconsin, the names of the individual Plaintiffs have come to stand for morethan just the named individuals but have also come to be associated by consumers with aparticular 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 resultsthat 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). WhenProfessor Kritzer conducted a survey asking Wisconsin residents if they could name a personalinjury lawyer, Habush was named more than any other, and more than three times as often as thenext-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 largesettlements for their clients.” Id. at 219.[FN4]

FN4. As a concrete example of the Habush reputation, Professor Kritzer recounts a report fromthe National Law Journal about one of the workers killed in the “Big Blue” crane accident in1999. “Some days before his death, in a premonition of what was to happen, [Jeffrey] Wischlerhad told his wife, ‘If anything ever happens to me, I want you to call Bob Habush.’ Withintwenty-four hours of the accident, his wife had called Habush and set in motion what would endin 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, atC9. Prof. Kritzer reported hearing anecdotally that the Habush reputation was so strong itcommanded higher settlement payments than other firms could obtain, often enough more to paythe entire Habush contingent fee. Kritzer, id. at 220. While Prof. Kritzer said he could notconfirm 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 notpreclude an invasion of privacy claim. The court stated:

The fact that the name, ‘Crazylegs,’ used by Johnson, was a nickname rather than Hirschs actualname does not preclude a cause of action. All that is required is that the name clearly identify thewronged 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 bythe 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 clearlydemonstrated by Defendants advertising purpose in selecting them, it does not matter that otherindividuals have these same last names.

b. Statutorily-Prohibited Use is Not Limited to the Use of a Full NameDefendants' 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 thatWisconsin statute prohibits the use of a person's “name;” there is no requirement that a person'sfull 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 acompany, named the “Pfaudler Company,” from continued use of that name. Pfaudler, 186N.Y.S. at 725. In the present case, Plaintiffs are seeking to prevent Defendants, who are notnamed “Habush” or “Rottier,” from continued use of those names for purposes of promotingDefendants' business. There is an obvious difference between a business named “Pfaudler” usingthat 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 distinguishablefrom the present case because the name used in Swacker did not identify the plaintiff. Theplaintiff's name was used in Swacker to refer to a minor character in a book. Swacker, 277N.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 theplaintiff had not stated a claim because “there is not a single parallel between the plaintiff andthe character depicted in the books” and “[n]o person familiar with the plaintiff could possiblyinfer from a reading of the books that the secretary to the district attorney was intended toportray 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 arelooking for a particular personal injury attorney in conducting searches. Certainly, to thisaudience, “Habush” is more than adequate to identify Mr. Habush, and “Rottier” is more thanadequate to identify Mr. Rottier. And this is clearly what Defendants intended by purchasingthese keyword names. This is in no material respect comparable to the facts in Pfaudler andSwacker.

Defendants' continued arguments in this regard further illustrate the difference between apermissible and impermissible uses of a name. ( See Defs.' Br. at 28-29.) Of course there isnothing 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 toown 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 theirnames 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 evidentiaryrecord.

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 thisaction 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 isbeing 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 isbeing protected. Clearly the living person with the name is “one” whose privacy right is beinginvaded by any such misuse of his or her name. Wis. Stat. § 995.50(2)(b). The Complaint clearlyalleges 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 precludedby section 995.50(2). It is unreasonable to contend that a attorney, or the law firm in which he orshe 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 orotherwise, has to be proven to obtain injunctive relief for a violation of the statute. “These dualinterests [(privacy and publicity)] can be protected by granting relief even if there is no adverseeconomic 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 beenincurred by the firm is incorrect. No such allegation is found in the complaint. Defendants have itbackward. The initial harm is to Mr. Habush and Mr. Rottier. Harm to the firm follows on theirharm.

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

In shareholder and derivative lawsuits such as each of the Wisconsin cases relied upon byDefendants, the lawsuit is among adverse parties that already have a fiduciary or similarrelationship, whether as co-shareholders or as shareholder and corporate entity. Because they arefighting over the same harm, usually devaluation of the company for the personal profit of anindividual 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. 2d937 (W.D. Wis. 2009) ((shareholder suing company and co-shareholder); Rose v. Schantz, 56Wis. 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 suingshareholder, officer, director and company). Krier v. Vilione, 2009 WI 45, 317 Wis. 2d 288, 766N.W.2d 517, also cited by Defendants, does not apply because the plaintiffs there were notshareholders at all and were attempting to sue the accountants of a corporation they had donebusiness with.

Those cases involving related co-owners and the corporate entity have no application here wherethe 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 stockholderfrom the wrongdoer, having its origin in circumstances independent of and extrinsic to thecorporate entity, the stockholder has a personal right of action against the wrongdoer. Absentsuch independent duty, however, the wrong suffered by the shareholder is deemed to be the sameas the wrong suffered by the corporation and there is no shareholder right of action separate andapart 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 bythe individuals in Saxe were found not to state a claim based on the unique facts of that case. Buthere, Mr. Habush and Mr. Rottier have claims against the Defendants, and can bring them. TheHabush firm has a claim, too, and it can also bring it.[FN5] It's the same as if a corporate officialwas the victim of a traffic accident while driving a company car. The official has an individualclaim against the other driver, and so does the corporation. Both can bring them. This is not aneither/or situation such as found in the shareholder suits.

FN5. Other than Saxe, the Defendants cite only one case in which the shareholder plaintiffs weresuing 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'slaw firm. The result was logical: the law firm's client had been the corporation, not theshareholders, and so only the corporation had the fiduciary duty claim to allege. An attorneydoes not owe a fiduciary duty to someone who is not a client. This case is entirely different. Allof 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 theirconsent by the law firm in which they practice law, the right of Mr. Habush and Mr. Rottier toequitable relief should include not only a restriction against further use of their namesindividually but also against use of the name of the firm that incorporates their names. Allowinguse 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 PublishingCo. 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 indirectlythat it could not do directly, a result that is not consistent with the purpose of our statute or soundpublic policy.

Defendants' argument is like one rejected in a New York case. Billionaire Howard Hughesalleged a right-to-publicity violation against the maker of an unauthorized adult educationalcareer 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 exclusiveassignment to his co-plaintiff, Rosemont, of the right to exploit the Hughes name andpersonality. Id. at 145. The court rejected the defendants' argument that the assignment barredHughes from bringing an action under NY Civil Rights Law § 51 in his own name. “Plaintiff isfree to protect himself from the exploitation of his name and likeness against all the world exceptRosemont,” the court said. Id. at 147. So here, even if Mr. Habush and Mr. Rottier are seensomehow to have assigned rights to the firm, they are still free to protect themselves againstexploitation of their names from all others, including Defendants.

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

Furthermore, with regard to the right of the firm to obtain the injunctive relief requested, “thelaw of standing in Wisconsin should not be construed narrowly or restrictively.” Wisconsin'sEnvtl. 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 italleges facts that demonstrate that a member of the organization has standing to sue in its ownname, despite arguments that standing could not exist because the alleged injury related solely tothe member's individual interests. Id. at 19-20.

Wisconsin Statutes section 995.02(1) entitles “one” whose privacy right has been invaded toobtain equitable relief. In so doing, it does not expressly or implicitly preclude an employer orany other third person from joining in the request for injunctive relief to protect the interest itmay have resulting from the misuse of a living person's name. Section 995.50 does not say thatonly the living person can obtain relief; it only says that anyone seeking relief has to have aprivacy (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 PlaintiffsRobert L. Habush and Daniel A. Rottier in the claim for injunctive relief. By obtaining at least animplied 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 thoughthe 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). Thisis 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 inureto 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 disparateclaims 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 thecontinued misappropriation of Mr. Habush's and Mr. Rottier's names would “inure to the benefitof 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 partof the corporate name of the law firm Habush Habush & Rottier S.C., the firm has a legallyrecognized interest in seeking injunctive relief along with the individuals whose right of privacyhas been invaded.

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

CONCLUSION

Plaintiffs have clearly stated a claim in their complaint which, if proven, gives them the right toenjoin Defendants' violation of Wis. Stats. Sec. 995.50 (2) (b). For purposes of this motion, theCourt must accept as true all of the allegations in the complaint. To the extent any materialfactual issues exist, they are not resolvable on a motion to dismiss. The Defendant's cry for theCourt to ignore the language of the statute and erect artificial barriers to recovery isunsupportable. There is no good reason for the Court to construe the statute as narrowly asDefendants 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 exploitnames 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 theiradvertising is not inconsistent with any persuasive judicial authority and finds ample support inthe plain language and intent of our Privacy statute and the authorities Plaintiffs have cited to theCourt. The application of our Privacy law to these facts is consistent with the policy establishedby 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'sname.

The fact that this is an advertising strategy employed on the internet is immaterial. It is notimportant 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 differentmeans of appropriating identity merely challenges the clever advertising strategist to come upwith 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



[email protected]

habush v cannon response to motion to dismiss

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