Trademark

Second Circuit: Google Keyword Ad Practices Are "Use in Commerce"

April 6, 2009

A few days ago I discussed a decision by Massachusetts U.S. District Court Judge Nancy Gertner holding that purchase of a trademarked keyword to trigger a sponsored link on a search engine constitutes a “use in commerce” of the trademark under the Lanham Act (the Federal Trademark statute). (Earlier post here). In that post I mentioned that among cases addressing this issues, only the Second Circuit had held otherwise. Now the Second Circuit seems to have changed its position on this issue. In Rescuecom v. Google, issued on April 3, 2009, the court reversed a motion to dismiss by the trial court, holding that Rescuecom properly alleged that Google’s keyword ad practices constituted a “use in commerce” under the Lanham Act. In a somewhat unusual step, the court attached to its opinion an Appendix entitled “On the Meaning of “Use in Commerce” in Sections 32 and 43 of the Lanham Act.” The Appendix, which is described as dicta, discusses at some length the statutory history of the “use in commerce” phrase in the Lanham Act. This decision appears to be a game-changer for Google, and will require it to modify its policies on selling key word search ads to competitors.

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Hearts on Fire v. Blue Nile: Judge Gertner Rules That Keyword to Trigger Search Engine Ads Is a "Use" Under Lanham Act

April 1, 2009

The issue here, presented in the context of a motion to dismiss, is whether adoption of a trademark as a search engine keyword constitutes a “use” under the Lanham Act.  The Lanham Act requires “use in commerce” as a condition of infringement, and as Judge Gertner points out, various courts have taken different positions on whether purchase of a trademarked keyword to trigger a sponsored link on a search engine is a “use” of the trademark.  Judge Gertner surveyed the field and noted that most of the courts that have considered this issue have found that utilizing a trademark in this manner does constitute “use” under the Act, and she sided with what she considers to be the majority view (the significant exception being the Second Circuit’s decision in 1-800 Contacts v. WhenU). Hearts of Fire v. Blue Nile For earlier postings on this issue click here and here.

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Decision Denying Dismissal in Jones Day v. Blockshopper

December 12, 2008

Here is a link to the decision of federal district court judge John W. Darrah (N.D. Ill.), denying the defendants motion to dismiss in the trademark suit brought by the Jones Day law firm against the web site Blockshopper.com, which reports on upscale residential real estate transactions in Chicago and other cities. I wrote about this case in some detail here. Jones Day’s assertion that a post on the site describing real estate purchases by two Jones Day attorneys could create confusion (and therefore constitute trademark infringement) has been widely ridiculed. The judge, however, disagreed. His decision is highly legalistic, and takes Jones Days’ allegations at face value, despite the fact that they are (in the opinion of many knowledgeable observers) implausible on their face (to put it mildly).  Go figure.

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A Great UDRP Decision Search Engine

October 17, 2008

USpeakWeType Technologies, LLC has done the trademark bar a big favor by creating a UDRP search engine. This is the first time we have had access to the enormous volume of material that has been decided in the UDRP arbitrations. An example: assume that you are involved in an arbitration that has been assigned to panelist Ian Bradshaw. A search on his name shows that he has decided nine cases, involving brands as well known as Volvo and Chivas. He has ruled in favor of the complainant (either via tranfer or cancellation of the respondent’s domain) in every case. It would be nice to know this, wouldn’t it?

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"Brandsucks.com"

October 17, 2008

Did you ever wonder how many large companies register their own “sucks” domain names (as in “microsoftsucks.com” or “AIGsucks.com”) in order to prevent someone else from doing so? Like, some unfriendly nasty that wants to use the site to bash the company? How many “CIOs” (“chief information officer,” for the uninitiated; don’t blame yourself if you didn’t know this), wish they had registered variations of their companies’ names before the “gripers” got ahold of them? Many, I suspect. Check out ebaysucks.com or alitaliasucks.com for example. Nasty stuff, for sure. Not good corporate publicity, for sure. Bet the folks at eBay and Alitalia wish they’d grabbed these domain names before they were picked up by gripers. The cost of buying “ebaysucks.com” before someone else does is close to zero. It’s just a matter of anticipation. Of course, its hard for companies to challenge the ownership of sites like these, since a clever owner can claim First Amendment protection as long as he or she doesn’t misstep and use the domain in a way that results in consumer confusion. We often tell clients to buy up all the “surrounding” names for their domain of choice. The dot-COM, dot-ORG, dot-NET top level domains, and any offensive variations.  Sometimes they do, sometimes they don’t. Occasionally, I’ve wondered how many of the large, Fortune 500-type U.S. companies create this kind of protection for themselves. Well,…

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The Laugh Test

September 22, 2008

[Update: decision denying Blockshopper's Motion to Dismiss] [Update: Jones Days' Opposition to Blockshopper's Motion to Dismiss] Blockshopper.com is one of many small web sites that have sprung up to follow local residential real estate markets. So far, the site highlights purchases in upscale neighborhoods in Chicago, St. Louis, South Florida and Las Vegas. The site identifies purchasers by name, street address of the property and the price paid. Of course, this information is available in local real estate publications (like Banker & Tradesman here in Boston) or at the local registry of deeds. Blockshopper also performs an Internet search on the person, and based on what it finds identifies the purchaser’s job title and employer. When it can, the site pulls a photo of the person from somewhere on the Internet (like the purchaser’s company site), and pastes it into the item. If the home purchaser has an online bio, the site will link to it. Example: I saw on Blockshopper that Juan Luis Goujon had recently purchased a property in Chicago. I Googled “Juan Luis Goujon,” and the first hit I got was to Blockshopper, profiling the property, linking to Mr. Goujon’s company, and posting a photo of him from the site. Mr. Goujon is not a celebrity or a politician, and he may not be thrilled with this publicity (if anyone truly cares). However, the information regarding the…

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White on White

September 9, 2008

Meta tags consist of words and phrases that are intended to describe the contents of a website. These descriptions are embedded within the website’s computer code. Although websites do not display their meta tags to visitors, Internet search engines utilize meta tags in various ways. First, when a computer user enters particular terms into an Internet search engine, the engine may rank a webpage that contains the search terms within its meta tags higher in the list of relevant results. Second, when a particular webpage is listed as a relevant search result, the search engine may use the meta tags to provide the searcher a brief description of the web page. Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1045 (9th Cir. 1999) —————– The First Circuit has affirmed a finding of trademark infringement based on the defendant’s use of meta tags to attract potential customers of the plaintiff using search engines to find the plaintiff’s web site. The case is Venture Tape v. McGill tried in U.S. District Court by Judge Morris E. Lasker. The defendant’s actions were described as follows by the First Circuit: The record contains numerous admissions that meta tags and invisible background text on [defendant's] website incorporated [plaintiff's] exact marks. … [Defendant] even admitted that he intentionally used [plaintiff's] marks for the express purpose of attracting customers … The background text used…

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"In case you aren't aware of this, MANY (over 60%) of the "100% guaranteed authentic" items you see on Ebay are 100% FAKE!"

July 15, 2008

“In case you aren’t aware of this, MANY (over 60%) of the “100% guaranteed authentic” items you see on Ebay are 100% FAKE! Replicas are sold all over the internet so they end up on Ebay. This guide is to show you some more information on the counterfeit situation and how easily these replicas are being purchased.” Warning on eBay website. [link] Yesterday’s New York U.S. Disrict Court decision exonerating eBay for trademark infringement based on the sale of counterfeit Tiffany products on its auction site is receiving a great deal of attention in legal (and particularly trademark law) circles. The decision is quite extensive, and will be of enormous interest to lawyers (and their clients) who deal with the problem of user-caused online trademark infringement. For a thoughtful discussion of the case I recommend Professor Eric Goldman’s discussion on his Technology and Marketing Law Blog. And watch for the appeal to the Second Circuit (the most influential trademark circuit), which I predict is a lead-pipe cinch. Of course, when it comes to eBay and Google, when one case ends another begins. In early July Rosetta Stone, the foreign language software-based learning company, sued several companies it accuses of “piggybacking”: paying Google to have their ads appear when someone uses Google to search for Rosetta Stone. Think, consumer searches Hertz car rentals, and along with Hertz sees paid ads for…

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Would You Like To Go On an Amphibious Sightseeing Tour?

July 2, 2008

Trademarks are meant to identify the source of products and services. Do you get confused between Coca Cola and Pepsi Cola? Between Payless Shoes and Comfort Shoes? Between Domino’s Pizza and Papa John’s Pizza? Probably not. “Cola,” “shoes” and “pizza” are what trademark law classifies as “generic” terms – they describe the product, not its source or origin. If someone started selling a drink called “Rockstar Cola,” Coke and Pepsi would have no legal grounds for objection. The “cola” part of their trademarks are generic, and in a trademark infringement suit a court’s focus would be on the first word in the trademark, “Rockstar.” On the other hand, if someone started selling Koka Cola or Popsi Cola, the lawyers for Coke or Pepsi would be working overtime to prepare their lawsuit. Now let me ask you a question that might be part of a “trademark survey” – a survey designed to determine how strong a trademark is, whether two trademarks are confusing, or whether a trademark is generic: What do you call a sightseeing tour that uses an amphibious vehicle to transport tourists on land and water? What other names, if any, do you use to refer to this type of sightseeing tour? Did you answer “duck tour” to the first question and “don’t know” to the second? If you did you went right to the heart of the First…

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Quick Hits: "In Hand" Service and Deceptive Advertising

May 8, 2008

What does it mean when a contract requires that notice be given “in hand”? Believe it or not, despite over 225 years of Massachusetts jurisprudence, until now no Massachusetts court had ever considered this question. In McMann v. McGowan, 17 Mass. App. Ct. 513 (2008), decided on April 7, 2008, the Appeals Court held that “in hand” means delivery into the hand of an authorized receipient. The Court rejected the argument that “in hand” includes delivery by hand, the position argued by the losing party. Of such things the law is built. Everyone knows that false or deceptive advertising is illegal, but a recent decision by Superior Court Judge Thayer Fremont-Smith provides a reminder of how difficult it is for a competitor allegedly harmed by false advertising to prove actual harm and damages, except in the rare case where there are only two firms in the market. Where there are more than two competitors, as Judge Fremont-Smith points out, “it cannot confidently be inferred that any customers procured by defendants’s false advertising were at plaintiffs’ expense.” While not dismissing the case outright, recovering any damages looks like a steep uphill fight for the plaintiff in this case. IDT Telecom v. Voice Distributors, Middlesex Superior Court, April 11, 2008.

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Courts Struggle With Search Engines' Use of Trademarked Keywords

December 1, 2006

Lawyers love to have cases on the “cutting edge” – they thirst for it in law school, and brag about it when they get into practice. No law, no precedents, difficult issues? Bring it on! they say. Clients, of course, feel exactly the opposite – no law, no precedents, no predictability? How is that possible?, they complain. For the last few years Internet search engines have repeatedly found themselves astride this proverbial cutting edge. One of the “issues de jour” faced by the search industry is the sale of advertising triggered by trademarks owned by a competitor. Is it a violation of trademark law for Nissan to pay Google to have ads for Nissan appear when you search for Ford? (The last time I checked this actually occurred). In evaluating legal challenges to this practice courts have focused on a somewhat narrow legal issue: is a search company’s sale of a company’s trademark as a keyword triggering third-party advertising “trademark use”? The answer to this question is critical because “trademark use” could give rise to legal claims, while its absence precludes them. This issue has confounded the courts, as several recent cases, summarized below, illustrate: In the recent case of 800-JR Cigar, Inc. v. Goto.com, Inc. the District Court of New Jersey ruled that Goto did make “trademark use” of JR’s “JR Cigar” trademark and allowed its claims for trademark…

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Lies, Damn Lies, and Statistics

October 19, 2006

I’ve been meaning to post some statistics reported by Price Waterhouse Coopers at the MCLE 9th Annual Intellectual Property Conference earlier this year. PWC has done a rigorous study of patent and trademark cases in the Federal District Courts and at the Court of Appeals for the Federal Circuit (CAFC) over the last 25 years. A few highlights and trends: In 2005, 4% of patent cases and 1.5% of trademark cases went through trial. (Presumably the balance were resolved via settlement or summary judgment). Juries award more damages in patent cases than bench trials. On the other hand, bench trials are more popular in trademark cases. The CAFC is a tough court: only 30% of damage awards are affirmed by the CAFC. Patent damage awards far exceed trademark damage awards. Patent awards’ fastest growth has been in the computer business services and electronics components sectors. Reasonable royalties (rather than lost profits) has become the most frequent measure of damages awarded in patent cases. (This may reflect the fact that more plaintiffs are nonpracticing inventors (sometimes referred to as “patent trolls“).

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