The practice by which companies buy keywords from search engines to rank their web sites high when those keywords are used in searches is common. However, the law is unsettled as to whether that practice constitutes trademark infringement when the purchased keywords are someone else's registered mark. In some jurisdictions, including Maryland's federal District Court, this may be an issue of first impression. [1] Maryland's court, however, may have the chance to address the issue if the case Young Again Products, Inc. v. Vitamins Home [2] is adjudicated. The case involves Vitamins Home's alleged "engage[ment] in the unauthorized use of the Young Again™ Mark by utilizing the Mark in pay-for-placement and pay-for-rank search engine advertising to direct Internet customers to its on-line nutritional supplement store."
A sampling of other jurisdiction's decisions may reveal how Maryland's federal District Court may decide the issue today [3]: Government Employees Insur. Co. (GEICO) v. Google, Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) (finding Google's AdWords program a "use in commerce" under the Lanham Act); GEICO v. Google, Inc., 414 F.3d 400 (2d Cir. 2005) (finding that a paid-for advertisement that itself did not mention a mark used as the keyword search term either in the title or the text of the advertisement was not likely to cause confusion); 800-JR Cigar, Inc. v. GoTo.com, Inc. 437 F.Supp.2d 273 (D.N.J. 2006) (finding GoTo's conduct was a "use in commerce," but the issue of likelihood of confusion was not suitable for summary judgment because of disputed facts); Rescuecom Corp. v. Google, Inc. 456 F.Supp.2d 393 (N.D.N.Y. 2006) (granting motion to dismiss on the basis that Google's sale of other's trademarks as keywords was not a "use in commerce," and concluding that there must be an allegation of trademark use in the first instance to sustain a cause of action for trademark infringement); J.G. Wentworth SSC Ltd. v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. 2007) (rejecting infringement contentions based on theory of "initial interest confusion"). This is only a partial listing of cases.
Comments and references:
- [1] Brief Lexis search
- [2] Young Again Products, Inc. v. Vitamins Home, No. 07 Civ. 2073 (D. Md. filed Aug. 3, 2007)
- [3] See Allison McDade, Use of Competitors' Trademarks as Keywords: Corporate Considerations, 2007 ABA IP Law Conference (2007) for a recent comprehensive analysis of the pay-for-click issue and case law cites.
- Thanks to attorney David Weslow at Sutherland Asbill & Brennan for providing information for this blog post
.gif){kind=small}
.jpg)
