What is the state of the law concerning keyword advertising?

by Allen M Lee22. January 2010 12:18
Courts around the U.S. have arrived at very different conclusions on whether the purchase of a competitor's trademark as a keyword to trigger search engine advertising constitutes trademark infringement.  The vast majority of the cases thus far are by trademark proprietors versus the keyword advertisers.  In the minority are cases by trademark proprietors against the search engines like Google.  

As background, in order to prevail on a trademark infringement claim under the Lanham Act, 15 U.S.C. § 1114(1)2, a plaintiff must generally establish that:

(1) it has a valid mark that is entitled to protection under the Lanham Act;
(2) the plaintiff owns the mark;
(3) the defendant used its mark in commerce;
(4) “in connection with the sale . . . or advertising of goods or services,” 15 U.S.C. § 1114(1)(a);
(5) without the plaintiff's consent; and
(6) defendant's use of its mark “is likely to cause confusion . . . as to the affiliation, connection, or association of [the defendant] with [the plaintiff], or as to the origin, sponsorship, or approval of [the defendant's] goods, services, or commercial activities by [the plaintiff].” 15 U.S.C. § 1125(a)(1)(A).

Sometimes, the traditional likelihood of confusion analysis does not apply to keyword cases since consumers might only be confused into visiting a site without actually making a sale, or that the confusion is resolved at the moment of sale.  In these types of cases, some courts have applied the initial interest confusion theory.  Initial interest confusion refers to a potential customer’s temporary confusion about the actual source of goods or services under consideration, even though the confusion is later dispelled before the sale occurs.  The classic example is where a consumer sets out in search of one trademarked good, but then is diverted to a competing good, even if he or she is not confused about the source of the product he or she ultimately purchases.  Courts have found that initial interest confusion violates the Lanham Act because it impermissibly capitalizes on the goodwill associated with a mark.  In proving initial interest confusion, courts also apply the standard likelihood of confusion analysis. 

In keyword cases, there are two main issues: (1) whether there was a “use in commerce”; and (2) whether there is a likelihood of confusion.

A.     Use in Commerce

Until last year, plaintiffs in the Second Circuit were generally able to get cases dismissed on the theory that the purchase of a keyword does not constitute “use in commerce,”  a required element for a trademark action. Based on the Second Circuit’s opinion in 1-800 Contacts v. WhenU.com, 414 F.3d 400 (2d Cir. 2005), district courts in the Second Circuit relied on a very narrow definition of “use in commerce” found in § 45 of the Lanham Act, 15 U.S.C. § 1127, which states that a mark shall be deemed to be "used in commerce only when it is used or displayed in the sale or advertising of services and the services are rendered in commerce,” and thus excluded any use that did not involve the display of the actual mark.  However, the Second Circuit recently held in 2009 that the purchase of a keyword does indeed constitute “use in commerce.” Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009).  With the Rescuecomm decision, it appears that “use in commerce” defense will likely no longer be a viable defense.

Outside the Second Circuit, the consensus has been is that the purchase of trademarks to trigger advertisements does constitute “use” under the Lanham Act.  See, e.g., Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006); Playboy Enter. Inc. v. Netscape Communications Corp., 354 F. 3d 1020 (9th Cir. 2004) (holding, without addressing the "use in commerce" question, that the purchase of trademarks to trigger the display of banner advertising does creates initial interest confusion); J.G. Wentworth, S.S.C. Ltd. P'ship v. Settlement Funding LLC, 2007 WL 30115 (E.D. Pa. 2007) (finding trademark use in sponsored linking but allowing defendant's motion to dismiss on other grounds); Boston Duck Tours, LP v. Super Duck Tours, LLC, 527 F. Supp. 2d 205, 207 (D. Mass. 2007) (finding keyword-purchasing a "use" for trademark purposes); Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006); Gov't Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004); Hysitron Inc. v. MTS Sys. Corp., 2008 U.S. Dist. LEXIS 58378 (D. Minn. 2008); Google Inc. v. American Blind & Wallpaper, 2007 WL 1159950, * 6 (N.D. Cal. 2007); Edina Realty v. TheMLSOnline.com, 2006 WL 737064, *3 (D. Minn. 2006).

B.     Likelihood of Confusion

Even if there is “use in commerce,” for trademark infringement to exist such use must be likely to cause confusion.  The cases tend to fall into two main categories: (1) cases where the sponsored ad displays the exact trademarked phrase, and (2) cases where the sponsored ad does not display the mark.

Where the sponsored ad displays the exact trademarked phrase, courts have been more inclined to find infringement.  For example, in Google Inc. v. American Blinds & Wallpaper Factory Inc., 5:03-cv-05340-JF (N.D. Cal. settled August 31, 2007), the District Court found that there was no infringement where the claimant’s mark did not appear in the heading or text of the sponsored ads, but there was infringement where the mark did appear in the sponsored ads.  Google later settled this case.  In another case, Storus Corp. v. Aroa Marketing Inc., 2008 WL 449835 (N.D. Cal. Feb. 15, 2008), the court also found trademark infringement where the sponsored ad displayed the protected mark.  Indeed, in the recent case Hearts on Fire Company LLC v. Blue Nile, 2009 WL 794482 (D. Mass. March 27, 2009), defendant Blue Nile did not even challenge the allegation that its use of plaintiff’s trademark “HEARTS ON FIRE” alongside Defendant’s sponsored link, if true, constituted trademark infringement. 

It should be noted, however, that this category of cases does not address situations where the mark is used in a nominative manner to refer to the trademark or its owner, such as where the mark is used to reference the sale of products relating to the mark, or the advertiser is providing information about the products sold under the mark.  Google’s current policy is to allow such uses of marks in AdWords advertising.

In situations where the purchased keyword triggers advertising that does not contain the trademarked phrase, there is far less certainty.    At one extreme, at least one District Court has held that as a matter of law, the purchase of keywords does not constitute actionable likelihood of confusion.  J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007). 

In a fair number of cases, courts were not able to determine whether a likelihood of confusion existed due to insufficient evidence.   See, e.g., Fair Isaac Corp. v. Experian Information Solutions Inc., 2009 WL 4263699 (D. Minn. Nov. 25, 2009) (finding that the evidence presented was insufficient to prove whether the use of the Adwords in question was likely to confuse consumers); Fair Isaac Corp. v. Experian Information Solutions Inc., 2009 WL 4263699 (D. Minn. Nov. 25, 2009) (finding insufficient proof of consumer confusion).

A few other courts have found a likelihood of confusion based on a very weak showing. Essentially, arguably any purchase of a mark by a competitor in a related industry would be sufficient.  See, e.g., Soilworks LLC v. Nowcom Corp., 564 F.Supp.2d 1160, 1177 (C.d. Cal 2008) (finding a likelihood of confusion on applying the “internet trinity”: similarity in the marks, relatedness of goods, marketing channels used).

Then there are the courts that engage in a far more rigorous analysis. One such case is Hearts on Fire Co. v Blue Nile, Inc., 2009 WL 794482 (D. Mass. March 27, 2009).  In deciding a motion to dismiss, the court found that Blue Nile’s purchase of the HEARTS ON FIRE trademark as a keyword did support a claim for trademark infringement where the ads did not display the mark.  The court found that a key factor here was the context in which diamonds are sold:  a consumer who entered a search for Hearts on Fire diamonds might easily believe that the sponsored link that was returned was for an authorized dealer of Hearts on Fire diamonds.  Interestingly, the court held that likelihood of confusion would ultimately turn on the context in which consumers saw the ads, and outlined a number of case specific factors: (1) the overall mechanics of web-browsing and internet navigation, in which a consumer can easily reverse course; (2) the mechanics of the specific consumer search at issue; (3) the content of the search results webpage that was displayed, including the content of the sponsored link itself; (4) downstream content on the Defendant's linked website likely to compound any confusion; (5) the web-savvy and sophistication of the Plaintiff's potential customers; (6) the specific context of a consumer who has deliberately searched for trademarked diamonds only to find a sponsored link to a diamond retailer; and, in light of the foregoing factors, (7) the duration of any resulting confusion.

The Blue Nile case is a good indication of the way in which the courts may be heading, at least on the issue of ads that do not contain the protected mark, taking into account the content and context of each ad in question.

 

Allen M. Lee  Mr. Lee’s practice focuses on business, corporate and intellectual property matters, including the creation, protection and exploitation of intellectual property assets.  He counsels clients on business formation, general corporate matters, trademark, copyright, trade secret, patent, licensing, internet and domain name issues, among other things.  For more information contact: Allen M. Lee, a Professional Law Corporation, Tel: (650) 254-0758, Fax: (650) 967-1851, Email: allen@allenmlee.com, Internet: www.allenmlee.com.

 

 

 

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