The keyword results are in Internet search engine companies rejoiced a few years ago when a federal district court dismissed a lawsuit against Google, Rescuecom Corp. v. Google, Inc., which alleged the company had infringed a trademark by selling the mark as a search keyword. Now it seems their excitement may have been premature, as the Second U.S. Circuit Court of Appeals has vacated the dismissal. The key facts Google offers a program called “Ad Words” that lets advertisers purchase keywords that Google users might enter as search terms. When a user enters a purchased keyword, a “sponsored link” to the advertiser’s Web site will appear in the search results. With its Keyword Suggestion Tool, Google recommends specific keywords to advertisers. It recommended the Rescuecom trademark to competitors, and as a result, some bought the mark as a keyword. A previous case The district court based its dismissal on the Second Circuit’s decision in 1-800 Contacts v. WhenU.com, a case involving software that provided contextually relevant advertising to users by generating pop-up ads based on a Web site’s address or a search term entered in a browser. If a user entered the name of an eye care company, for example, the software would display a pop-up ad for a company engaged in eye care, with the defendant’s brand displayed in a window frame surrounding the ad. The Second Circuit held that this practice didn’t constitute a “use in commerce” of the plaintiff’s trademark “likely to cause confusion, or to cause mistake, or to deceive,” as required to establish infringement under the Lanham Act. The Second Circuit distinguished 1-800 on two grounds. First, the defendant made no use whatsoever of the plaintiff’s trademark. It was the plaintiff’s Web site address that triggered the ads, not its trademark. In contrast, Google recommends and sells Rescuecom’s trademark to advertisers. Further, the defendant in 1-800 didn’t “use or display,” much less sell, trademarks as search terms to its advertisers. On the other hand, Google displays, offers and sells Rescuecom’s trademark to its customers when selling its advertising services and encourages the purchase of the mark through its Keyword Suggestion Tool. Google’s retort Google argued that 1-800 suggested that including a trademark in an internal computer directory cannot constitute trademark use. The Second Circuit rejected that notion, pointing out also that Google’s recommendation and sale of the mark weren’t internal uses. It emphasized that 1-800 “did not imply that use of a trademark in a software program’s internal directory precludes a finding of trademark use.” Rather, in light of the fact that the defendant didn’t use the trademark at all, the court had held that the particular use before it in 1-800 didn’t constitute a use in commerce. To accept Google’s argument would free search engine operators to use trademarks in ways designed to deceive and cause consumer confusion. The Second Circuit ultimately concluded that Rescuecom’s allegation — that Google’s practice of recommending and selling Rescuecom’s trademark to trigger display of competitors’ sponsored links in response to a search for the trademark creates a likelihood of confusion — properly states a claim under the Lanham Act. But, the court added, “whether Google’s actual practice is, in fact, benign or confusing is not for us to judge at this time.” The search continues Although the Second Circuit’s ruling is more in line with decisions in similar cases by other courts, search engine companies need not despair just yet. Rescuecom still must prove that Google’s use of its trademark caused a likelihood of confusion or mistake. • |