Search engines offer advertising services to others. One service offered by many search engines is targeted advertising when a search term is entered into the search engine. A new, targeted method of advertising is to trigger the advertising based upon a computer user entering a competitor’s mark into a search engine. There are at least three ways search engines appear to sell this service. First, certain search terms may result in banner ads appearing on the search result screen. Second, sponsored advertisers may appear separate from the search results. Finally, the search results may be modified to allow sponsored advertisers to appear high in the search results screen.
Although showing a banner advertisement in response to a search engine query may be akin to placing a billboard that advertised a competitive store above or next to a store and was initially considered allowable, Playboy Enterprises, Inc. v. Netscape Communications Corp, 52 USPQ2d 1162 (D.C.D.Cal. 1999), on appeal, the Northern Circuit has held that this practice may be an infringement of the trademark owner’s rights. Playboy Enterprises, Inc. v. Netscape Communications, Inc., 354 F.3d 1020 (9th Cir. 2004). However, it is improper to use a competitor’s trademark or other famous trademarks not owned by the company as metatags in order to trade off the goodwill associated with them. Brookfield Communications. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). In Brookfield, the Court specifically found that using another‘s mark as a metatag is somewhat like posting a billboard with another‘s trademark directing traffic to one’s store and found this “initial interest” confusion actionable.
Recently litigated disputes regarding the use of another company’s trademark to trigger sponsored links should also be considered. In Government Employees Ins. Co. v. Google, Inc., 2005 U.S. Dist. LEXIS 18642 (E.D. Va. Aug. 8, 2005), the court denied Google’s motion to dismiss trademark infringement claims based on the use of sponsored links. While that case was eventually settled, the decision shows the use of a keyword to trigger an ad may create liability.
Other cases allege that third-party pop-up advertisements that obscure the advertisements of the web page being viewed violate the trademark rights of others. For example, Gator Corp., a pop-up advertiser, has been charged by various newspapers with trademark infringement for its pop-up ad service which is associated with various news web pages. Seven publishers, including the Washington Post, New York Times, and Dow Jones, reached a settlement agreement with Gator Corps after a federal judge ordered Gator to stop displaying pop-up advertising on the publisher’s web pages without permission on the grounds that the advertisements infringed their copyrights, trademarks and stole revenue from potential ads. In another case, the Court found that a pop-up advertising scheme did not support a claim of trademark infringement, unfair competition, trademark dilution, or copyright infringement. U-Haul v. WhenU.com, Inc., 279 F. Supp.2d 723 (E.D. Va. 2003)
When can one use a competitor’s mark in search engines? There are no hard and fast rules in this area. The relevant claims, primarily for trademark infringement and dilution, are fact intensive. Unaffiliated websites should ideally be distinctly presented to the user as unaffiliated with the trademark owner. One should try to separate one’s trademark from the actual search engine results. In this regard, it is likely better to appear as a banner ad appearing on the search result screen or as a sponsored advertiser separate from the search results than modifying the search results so that your web page appears in the search results or higher up in the search results. The domain name should not itself create confusion, as it is typically listed in the results. Any description that appears in the search results should also avoid language suggesting affiliation or sponsorship by the trademark owner. Content found at the website should also be truthful, unlikely to exacerbate confusion, and devoid of misappropriated photographs or images. And again, the general rules of using a competitor’s mark discussed above should also be followed.
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