Keying Up Keywords
The Role of Intellectual Property in
Keyword Searching
RONALD D. COLEMAN
First Principles
• The First Amendment
– “Congress shall make no law…”
• Axiom: Trademark rights are a
limitation on “speech” (expression)
• “Commercial speech” is also SPEECH
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
First Principles
[W]e cannot indulge the facile assumption
that one can forbid particular words
without also running a substantial risk of
suppressing ideas in the process.
Cohen v. California, 403 U.S. 15, 26 (1971)
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
Goetz Fitzpatrick LLP
THE ANCIENT TEST FOR TRADEMARK
INFRINGEMENT vel non
LIKELIHOOD OF
CONFUSION
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
Goetz Fitzpatrick LLP
PROCEED CAUTIOUSLY
Courts are not to stake out
new territory in the
trademark domain at the
expense of curtailing the
ability of a speaker to
communicate his message.
Rogers v. Grimaldi, 875 F.2d 994
(2d Cir. 1989)
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
Goetz Fitzpatrick LLP
WEIGH EFFECT ON SPEECH
In determining the outer limits of trademark protection
the weight of the risks of confusion and suppression
of expression may tip the scales against trademark
protection.
Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d Cir.
1989)
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
Goetz Fitzpatrick LLP
BE RELUCTANT TO USE FORCE
Courts are to be particularly reluctant to issue an
injunction, even in a Lanham Act case, where
there are delicate questions implicating First
Amendment rights.
Stop Olympic Prison v. United States Olympic
Committee, 489 F. Supp. 1112, 1123 (S.D.N.Y.
1980)
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
TRADEMARK NOT A DEVICE TO SILENCE DISSENT
A trademark may frequently be the most effective means of
focusing attention on the trademark owner or its product, the
recognition of exclusive rights encompassing such use would
permit the stifling of unwelcome discussion, and is forbidden.
•
United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92, n.3
(2d Cir. 1997), cert. denied, 118 S. Ct. 1521 (1998)
•
L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 31-33 (1st Cir.), cert. denied,
483 U.S. 1013 (1987)
•
Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-03 n.8 (8th Cir 1987)
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
THE TEST FOR TRADEMARK INFRINGEMENT
LIKELIHOOD OF
CONFUSION
©Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
“INITIAL INTEREST”
CONFUSION
As of 1998, it could fairly be said that:
Initial interest confusion has been
applied only where a potential
purchaser is initially confused such
that the senior seller may be precluded
from further consideration by the
buyer. Weiss Assoc., Inc. v. HRL
Assoc., Inc., 902 F.2d 1546 (Fed. Cir.
1990)(emphasis added).
©
Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
The consumer as idiot
– Minimum level of discernment and intelligence
on the part of consumers was presumed.
– Yet consumers were expected to distinguish
between the use of a mark to draw attention,
and the use of a mark to indicate source.
Stop the Olympic Prison v. United States Olympic
Comm., 489 F. Supp. 1112 (S.D.N.Y. 1980); Girl Scouts
v. Personality Posters Mfg. Co., 304 F. Supp. 1228,
1231 (S.D.N.Y. 1969).
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP
INITIAL INTEREST CONFUSION
“You've probably never heard of the Initial Interest Confusion
Doctrine. You probably don't want to hear about it now. You
probably should turn the page. But let's face it, even reading
this drivel is better than drafting that motion for summary
judgment that's hanging over your head. So sit back and relax.
It's almost quitting time anyway.”
—JONATHAN PINK
July 6, 2005; Found at
http://www.ipfrontline.com/depts/article.asp?id=
4697&deptid=4
INITIAL INTEREST CONFUSION
Second Circuit 2010
“Google, supported by amici, argues that 1-800 suggests that
the inclusion of a trademark in an internal computer
directory cannot constitute trademark use. Several
district court decisions in this Circuit appear to have
reached this conclusion. . . This over-reads the 1-800
decision. First, regardless of whether Google’s use of
Rescuecom’s mark in its internal search algorithm could
constitute an actionable trademark use, Google’s
recommendation and sale of Rescuecom’s mark to its
advertising customers are not internal uses.
“Furthermore . . . [w]e did not imply in 1-800 that an alleged
infringer’s use of a trademark in an internal software
program insulates the alleged infringer from a charge of
infringement, no matter how likely the use is to cause
confusion in the marketplace. If we were to adopt
Google and its amici’s argument, the operators of search
engines would be free to use trademarks in ways
designed to deceive and cause consumer
confusion. This is surely neither within the intention nor
the letter of the Lanham Act.”
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
Keyword
advertising
MAY INDEED
BE “trademark
use” under
the Lanham
Act
Rescuecom
Corp. v.
Google Inc.,
562 F.3d 123
(2d Cir. April 3,
2009)
Goetz Fitzpatrick LLP
INITIAL INTEREST CONFUSION
Second Circuit
“What Rescuecom alleges is that by the manner of Google’s
display of sponsored links of competing brands in
response to a search for Rescuecom’s brand name (which
fails adequately to identify the sponsored link as an
advertisement, rather than a relevant search result),
Google creates a likelihood of consumer confusion as to
trademarks.
If the searcher sees a different brand name as the top entry
in response to the search for “Rescuecom,” the searcher
is likely to believe mistakenly that the different name
which appears is affiliated with the brand name sought
in the search and will not suspect, because the fact is
not adequately signaled by Google’s presentation, that
this is not the most relevant response to the search.
Whether Google’s actual practice is in fact benign or
confusing is not for us to judge at this time. We consider
at the 12(b)(6) stage only what is alleged in the
Complaint.
“We conclude that the district court was mistaken in
believing that our precedent in 1-800 requires dismissal.”
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
Keyword
advertising
MAY INDEED
BE “trademark
use” under
the Lanham
Act
Rescuecom
Corp. v.
Google Inc.,
562 F.3d 123
(2d Cir. April 3,
2009)
Goetz Fitzpatrick LLP
“Affiliation”
“If the searcher sees a different brand name
as the top entry in response to the
search for “Rescuecom,” the searcher is
likely to believe mistakenly that the
different name which appears is
affiliated with the brand name sought in
the search and will not suspect, because
the fact is not adequately signaled by
Google’s presentation, that this is not
the most relevant response to the
search. ”
Rescuecom Corp. v. Google Inc., 562 F.3d 123
(2d Cir. April 3, 2009)
© Ronald D. Coleman
• In 1962 the Lanham
Trademark Act was amended
by striking language requiring
confusion, mistake or
deception of “purchasers as to
the source of origin of such
goods and services.”
• In 1989 Lanham Act Section
43(a) was amended to
describe as unfair competition
any act causing a likelihood of
confusion not only as to
source, but as to affiliation,
connection, sponsorship,
association or approval.
WWW.LIKELIHOODOFCONFUSION.COM
Goetz Fitzpatrick LLP
GOOGLE search for term AUSTRALIAN GOLD
INITIAL INTEREST CONFUSION
“
“Likely to cause confusion”
“Whether Google’s actual
practice is in fact benign or
confusing is not for us to
judge at this time. We
consider at the 12(b)(6)
stage only what is alleged in
the Complaint. ”
Rescuecom Corp. v. Google
Inc., 562 F.3d 123 (2d
Cir. April 3, 2009)
“At a minimum, a plaintiff alleging initial interest confusion on the Internet
should be required to show that consumers, when presented with a
choice that may potentially divert them, (1) are likely to mistake the
mark holder as the source of the alternative choice; and (2) have
actually been diverted. This evaluation must be made on a choice-bychoice (in this case, an ad-by-ad) basis because consumers will respond
to each ad differently depending on the contents of the ad.
“With respect to the former requirement, this is exactly the conclusion that
Judge Berzon recently arrived at after reexamining the Brookfield case,
see Playboy v. Netscape, 354 F.3d at 1034-36 (Berzon, J., concurring),
and simply recapitulates this Court’s requirement that there have been
a misleading “credibility transfer” to the defendant, see Mobil Oil v.
Pegasus, 818 F.2d at 259 (defendant gained “crucial credibility during
the initial phases of a deal” by using confusingly similar mark).
“The second requirement cabins the initial interest confusion doctrine,
already unmoored from the traditional question of product source
confusion (as opposed to advertisement source confusion), to
situations where empirical evidence of harm is presented. In this
situation, “diversion” is being used as a proxy for harm caused by a
likelihood of confusion. Thus, as a proxy, the “diversion” requirement
needs some rigorous proof if traditional standards are to be discarded.
After all, in the absence of evidence that any shopper has actually been
diverted, trademark law should not lightly rush in to regulate market
behavior.
EFF Amicus Brief urging reversal in 1-800 Contacts v. WhenU.com
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
Goetz Fitzpatrick LLP
“Likely to cause confusion”
Exemplifying the conceptual difficulty that inheres in this issue, the
district court’s decision suggests that the crux of WhenU’s
wrongdoing -- and the primary basis for the district court’s finding of
“use” -- is WhenU’s alleged effort to capitalize on a C-user’s specific
attempt to access the 1-800 website. As the court explained it,
WhenU.com is doing far more than merely “displaying” Plaintiff’s mark.
WhenU’s advertisements are delivered to a SaveNow user when the
user directly accesses Plaintiff’s website--thus allowing Defendant
Vision Direct to profit from the goodwill and reputation in Plaintiff’s
website that led the user to access Plaintiff’s website in the first
place.
Absent improper use of 1-800’s trademark, however, such conduct does
not violate the Lanham Act. See TrafFix Devices, Inc. v. Mktg.
Displays, Inc., 532 U.S. 23, 29 (2001); Kellogg Co. v. Nat’l Biscuit Co.,
305 U.S. 111, 122 (1938) (holding that Kellogg’s sharing in the
goodwill of the unprotected “Shredded Wheat” market was “not
unfair”); see also William P. Kratzke, Normative Economic Analysis of
Trademark Law, 21 Memphis St. U. L. Rev. 19 199, 223 (1991)
(criticizing importation into trademark law of “unjust enrichment”
and “free riding” theories based on a trademark holder’s goodwill).
Indeed, it is routine for vendors to seek specific “product
placement” in retail stores precisely to capitalize on their
competitors’ name recognition. . . .
1-800 Contacts, Inc. v. Whenu.Com, Inc., 414 F.3d 400 (2d Cir. 2005)
© Ronald D. Coleman
WWW.LIKELIHOODOFCONFUSION.COM
So what DID
the Second
Circuit decide
in 1-800
Contacts?
Goetz Fitzpatrick LLP
INITIAL INTEREST CONFUSION
GOOGLE search for term AUSTRALIAN GOLD
INITIAL INTEREST CONFUSION
INITIAL INTEREST CONFUSION
On 22 September 2009, the long anticipated Opinion in the three joined Google France references to the European Court of Justice
(ECJ) was published. This is the first judicial comment from the supervising courts in Luxembourg on the legality of paid for 'keyword'
advertising and a negative outcome could force search engines such as Google to dramatically alter the way they do business.
In an Opinion which will disappoint brand owners, Advocate General Poiares Maduro concludes that Google France should not be found
guilty of trade mark infringement by offering trade marks for sale as Adwords. He also concludes that there is no European provision for
contributory infringement and therefore, search engines, such as Google cannot be found liable under the harmonised European trade
mark laws. However, they may be vulnerable to an action for contributory infringement under national laws of liability. Furthermore, in
the AG's view, Google would not be able to defend itself from liability under national law by relying on the hosting safe harbour contained
in Article 14 of the E-Commerce Directive.
In respect of the potential liability of advertisers, the AG was of the view that the purchasing of trade marks as keywords is not trade mark
infringement, on the basis that it is not use 'in the course of trade'. This was because it was a private act between the advertiser and the
search engine operator (Google) and not an act with a view to commercial activity.
“Keyword advertising - Adwords opinion favours
Google”
Thanks for
having me!
@roncoleman