AIPLA Spring Meeting 2010: Keying Up Keywords Ronald Coleman

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)


THE ANCIENT TEST FOR TRADEMARK
INFRINGEMENT vel non

LIKELIHOOD OF

CONFUSION

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)


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)


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)


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)


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).


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).


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
Keyword
“Google, supported by amici, argues that 1-800 suggests that advertising
the inclusion of a trademark in an internal computer
directory cannot constitute trademark use. Several MAY INDEED
district court decisions in this Circuit appear to have BE “trademark
reached this conclusion. . . This over-reads the 1-800
decision. First, regardless of whether Google’s use of use” under
Rescuecom’s mark in its internal search algorithm could
constitute an actionable trademark use, Google’s
the Lanham
recommendation and sale of Rescuecom’s mark to its Act
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
Rescuecom
infringement, no matter how likely the use is to cause Corp. v.
confusion in the marketplace. If we were to adopt
Google and its amici’s argument, the operators of search
Google Inc.,
engines would be free to use trademarks in ways 562 F.3d 123
designed to deceive and cause consumer (2d Cir. April 3,
confusion. This is surely neither within the intention nor
the letter of the Lanham Act.” 2009)


Second Circuit
“What Rescuecom alleges is that by the manner of Google’s Keyword
display of sponsored links of competing brands in
response to a search for Rescuecom’s brand name (which advertising
fails adequately to identify the sponsored link as an MAY INDEED
advertisement, rather than a relevant search result),
Google creates a likelihood of consumer confusion as to BE “trademark
trademarks. use” under
If the searcher sees a different brand name as the top entry the Lanham
in response to the search for “Rescuecom,” the searcher
is likely to believe mistakenly that the different name Act
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
Whether Google’s actual practice is in fact benign or Corp. v.
confusing is not for us to judge at this time. We consider
at the 12(b)(6) stage only what is alleged in the Google Inc.,
Complaint. 562 F.3d 123
“We conclude that the district court was mistaken in
believing that our precedent in 1-800 requires dismissal.”
(2d Cir. April 3,
2009)


“Affiliation”
• In 1962 the Lanham
Trademark Act was amended
“If the searcher sees a different brand name
by striking language requiring
as the top entry in response to the
confusion, mistake or
search for “Rescuecom,” the searcher is deception of “purchasers as to
likely to believe mistakenly that the the source of origin of such
different name which appears is goods and services.”
affiliated with the brand name sought in • In 1989 Lanham Act Section
the search and will not suspect, because 43(a) was amended to
the fact is not adequately signaled by describe as unfair competition
Google’s presentation, that this is not
the most relevant response to the
any act causing a likelihood of
search. ” confusion not only as to
Rescuecom Corp. v. Google Inc., 562 F.3d 123
source, but as to affiliation,
(2d Cir. April 3, 2009) connection, sponsorship,
association or approval.


GOOGLE search for term AUSTRALIAN GOLD

“ “Likely to cause confusion”
“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-by-
choice (in this case, an ad-by-ad) basis because consumers will respond
to each ad differently depending on the contents of the ad.
“Whether Google’s actual
practice is in fact benign or “With respect to the former requirement, this is exactly the conclusion that
Judge Berzon recently arrived at after reexamining the Brookfield case,
confusing is not for us to see Playboy v. Netscape, 354 F.3d at 1034-36 (Berzon, J., concurring),
and simply recapitulates this Court’s requirement that there have been
judge at this time. We a misleading “credibility transfer” to the defendant, see Mobil Oil v.
Pegasus, 818 F.2d at 259 (defendant gained “crucial credibility during
consider at the 12(b)(6) the initial phases of a deal” by using confusingly similar mark).

stage only what is alleged in “The second requirement cabins the initial interest confusion doctrine,
the Complaint. ” 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
Rescuecom Corp. v. Google needs some rigorous proof if traditional standards are to be discarded.
After all, in the absence of evidence that any shopper has actually been
Inc., 562 F.3d 123 (2d diverted, trademark law should not lightly rush in to regulate market
behavior.
Cir. April 3, 2009)
EFF Amicus Brief urging reversal in 1-800 Contacts v. WhenU.com


So what DID
“Likely to cause confusion” the Second
Exemplifying the conceptual difficulty that inheres in this issue, the Circuit decide
district court’s decision suggests that the crux of WhenU’s in 1-800
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
Contacts?
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)


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

AIPLA Spring Meeting 2010: Keying Up Keywords Ronald Coleman

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