As of yesterday, Google’s new policy concerning registration of trademarks as keywords for triggering contextual advertisement in many European countries went into effect. The new policy, which strongly relies on the recent ECJ decision on Google’s potential liability for TM infringement via its adwords practice, demonstrates a notable shift in Google’s approach.
The closely watched battle over the use of trademarks as keywords for purpose of triggering advertisements on Google’s search result pages (AdWords) reached high peak today with the release of the European Court of Justice’s ruling on the French cases. In what appears to be a resounding win for Google, the ECJ managed to avoid some of the critical questions in a decision that, in fact, projects little new light on the multibillion dollars question: Is AdWording that involves marks as keywords legal in Europe?
ICANN’s recent initiative to open the generic domain names space to an application, register-your-favorite-gTLD process struck me as very problematic from the moment I had first heard about it. Ars technica has a great post on the topic, which marks the end of the period during which ICANN has been receiving comments concerning its ambitious plan.
Declining to follow similar cases in other circuits, a federal district court for the Eastern District of Pennsylvania ruled that a website’s attempt to increase its ranking in search engine listings through invisible use of a competitor’s trademarks, either through hidden meta tags or as a keyword to trigger its own paid advertisements, does not violate federal trademark law under the Lanham Act. The court’s decision rests on its determination that consumers who enter a trademarked term into a search engine should be aware that the search results contain sites which are related to the trademark, but may not be about the subject of that trademark or belong to the trademark owner. Because of this, the court concluded that consumers should investigate any site listed in the search results before concluding that it belongs to the trademark owner, avoiding any likelihood of confusion and any violation of the Lanham Act.
J.G. Wentworth, S.S.C. v. Settlement Funding LLC
Plaintiff, SFX Motor Sports, Inc. (now Live Nation Motor Sports, Inc.), sued Robert Davis for providing a link to audio webcasts of its motorcycle racing events on his website, alleging trademark infringement, copyright infringement, and unfair competition. The Court analogized Davis’s unauthorized website link for audio webcasts to the unauthorized satellite transmission of live television broadcasts in National Football League v. PrimeTime 24 Joint Venture, 211 F.3d 10 (2d Cir. 2000). As a step in the process by which copyrighted works made their way to an unintended audience, either unauthorized act should be considered a public display or performance for the purposes of a copyright claim. Accordingly, the Court held that Davis’s unauthorized website link likely constituted copyright infringement and granted Plaintiff’s motion for preliminary injunction.
Live Nation Motor Sports, Inc. v. Davis, No. 3:06-CV-276-L (N.D. Tex. 2006).
For those of you who are interested in domain names issues I have made this piece available on my SSRN page.
Earlier this year the German Federal High Court held trademarks metatagging unlawful. The “impuls” holding (in German) available for download here. According to the full decision published recently, metatagging in the hidden source code of the web page is “trademark use” giving rise to infringement liability.
The Court further held that such use created likelihood of confusion (under a theory similar to the U.S. “initial interest confusion” doctrine), as the tag used by defendant was identical to the mark of plaintiff, both offering health insurance services. In other words, it did not matter that users could immediately be de-confused by clicking on defendant’s link and realizing that this is not where they had wanted to go.
I've just posted a new SSRN working paper on keywording advertising in search engines. Comments are welcome.
