Keying Up Keywords The Role of Intellectual Property in Keyword Searching R ONALD D. C OLEMAN

Keying Up KeywordsKeying Up KeywordsThe Role of Intellectual The Role of Intellectual

Property in Keyword SearchingProperty in Keyword SearchingRONALD D. COLEMAN

First Principles

• The First Amendment– “Congress shall make no law…”

• Axiom: Trademark rights are a limitation on “speech” (expression)

• “Commercial speech” is also SPEECH

© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

First Principles

[W]e cannot indulge the facile assumption that one can forbid particular words

without also running a substantial risk of suppressing ideas in the process.

Cohen v. California, 403 U.S. 15, 26 (1971)


THE ANCIENT TEST FOR TRADEMARK INFRINGEMENT vel non

LIKELIHOOD OF

CONFUSION© Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

PROCEED CAUTIOUSLY

Courts are not to stake out new territory in the

trademark domain at the expense of curtailing the

ability of a speaker to communicate his message.

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)


WEIGH EFFECT ON SPEECH

In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of expression may tip the scales against trademark

protection.

Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d Cir. 1989)


BE RELUCTANT TO USE FORCE

Courts are to be particularly reluctant to issue an injunction, even in a Lanham Act case, where there are delicate questions implicating First Amendment rights.

Stop Olympic Prison v. United States Olympic Committee, 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980)


TRADEMARK NOT A DEVICE TO SILENCE DISSENT

A trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion, and is forbidden.

• United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied, 118 S. Ct. 1521 (1998)

• L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 31-33 (1st Cir.), cert. denied, 483 U.S. 1013 (1987)

• Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-03 n.8 (8th Cir 1987)


THE TEST FOR TRADEMARK INFRINGEMENT

LIKELIHOOD OF

CONFUSION©Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

“INITIAL INTEREST” CONFUSION

As of 1998, it could fairly be said that:Initial interest confusion has been applied only where a potential purchaser is initially confused such that the senior seller may be precluded from further consideration by the buyer. Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990)(emphasis added).


The consumer as idiotThe consumer as idiot

– Minimum level of discernment and intelligence on the part of consumers was presumed.

– Yet consumers were expected to distinguish between the use of a mark to draw attention, and the use of a mark to indicate source.

Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112 (S.D.N.Y. 1980); Girl Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969).


INITIAL INTEREST CONFUSION

“You've probably never heard of the Initial Interest Confusion Doctrine. You probably don't want to hear about it now. You probably should turn the page. But let's face it, even reading

this drivel is better than drafting that motion for summary judgment that's hanging over your head. So sit back and relax.

It's almost quitting time anyway.”—JONATHAN PINK

July 6, 2005; Found at http://www.ipfrontline.com/depts/article.asp?

id=4697&deptid=4

Second Circuit 2010“Google, supported by amici, argues that 1-800 suggests

that the inclusion of a trademark in an internal computer directory cannot constitute trademark use. Several district court decisions in this Circuit appear to have reached this conclusion. . . This over-reads the 1-800 decision. First, regardless of whether Google’s use of Rescuecom’s mark in its internal search algorithm could constitute an actionable trademark use, Google’s recommendation and sale of Rescuecom’s mark to its advertising customers are not internal uses.

“Furthermore . . . [w]e did not imply in 1-800 that an alleged infringer’s use of a trademark in an internal software program insulates the alleged infringer from a charge of infringement, no matter how likely the use is to cause confusion in the marketplace. If we were to adopt Google and its amici’s argument, the operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion. This is surely neither within the intention nor the letter of the Lanham Act.”

Keyword Keyword advertising advertising MAY INDEED MAY INDEED BE “trademark BE “trademark use” under use” under the Lanham the Lanham ActAct

Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. April 3, 2009)



Second Circuit“What Rescuecom alleges is that by the manner of Google’s

display of sponsored links of competing brands in response to a search for Rescuecom’s brand name (which fails adequately to identify the sponsored link as an advertisement, rather than a relevant search result), Google creates a likelihood of consumer confusion as to trademarks.

If the searcher sees a different brand name as the top entry in response to the search for “Rescuecom,” the searcher is likely to believe mistakenly that the different name which appears is affiliated with the brand name sought in the search and will not suspect, because the fact is not adequately signaled by Google’s presentation, that this is not the most relevant response to the search.

Whether Google’s actual practice is in fact benign or confusing is not for us to judge at this time. We consider at the 12(b)(6) stage only what is alleged in the Complaint.

“We conclude that the district court was mistaken in believing that our precedent in 1-800 requires dismissal.”

Keyword Keyword advertising advertising MAY INDEED MAY INDEED BE “trademark BE “trademark use” under use” under the Lanham the Lanham ActAct




“Affiliation”

“If the searcher sees a different brand name as the top entry in response to the search for “Rescuecom,” the searcher is likely to believe mistakenly that the different name which appears is affiliated with the brand name sought in the search and will not suspect, because the fact is not adequately signaled by Google’s presentation, that this is not the most relevant response to the search. ”


• In 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of “purchasers as to the source of origin of such goods and services.”

• In 1989 Lanham Act Section 43(a) was amended to describe as unfair competition any act causing a likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association or approval.


GOOGLE search for term AUSTRALIAN GOLD

“ “Likely to cause confusion”

“Whether Google’s actual practice is in fact benign or confusing is not for us to judge at this time. We consider at the 12(b)(6) stage only what is alleged in the Complaint. ”


“At a minimum, a plaintiff alleging initial interest confusion on the Internet should be required to show that consumers, when presented with a choice that may potentially divert them, (1) are likely to mistake the mark holder as the source of the alternative choice; and (2) have actually been diverted. This evaluation must be made on a choice-by-choice (in this case, an ad-by-ad) basis because consumers will respond to each ad differently depending on the contents of the ad.

“With respect to the former requirement, this is exactly the conclusion that Judge Berzon recently arrived at after reexamining the Brookfield case, see Playboy v. Netscape, 354 F.3d at 1034-36 (Berzon, J., concurring), and simply recapitulates this Court’s requirement that there have been a misleading “credibility transfer” to the defendant, see Mobil Oil v. Pegasus, 818 F.2d at 259 (defendant gained “crucial credibility during the initial phases of a deal” by using confusingly similar mark).

“The second requirement cabins the initial interest confusion doctrine, already unmoored from the traditional question of product source confusion (as opposed to advertisement source confusion), to situations where empirical evidence of harm is presented. In this situation, “diversion” is being used as a proxy for harm caused by a likelihood of confusion. Thus, as a proxy, the “diversion” requirement needs some rigorous proof if traditional standards are to be discarded. After all, in the absence of evidence that any shopper has actually been diverted, trademark law should not lightly rush in to regulate market behavior.

EFF Amicus Brief urging reversal in 1-800 Contacts v. WhenU.com



“Likely to cause confusion” So what DID the Second Circuit decide in 1-800 Contacts?

Exemplifying the conceptual difficulty that inheres in this issue, the district court’s decision suggests that the crux of WhenU’s wrongdoing -- and the primary basis for the district court’s finding of “use” -- is WhenU’s alleged effort to capitalize on a C-user’s specific attempt to access the 1-800 website. As the court explained it,

WhenU.com is doing far more than merely “displaying” Plaintiff’s mark. WhenU’s advertisements are delivered to a SaveNow user when the user directly accesses Plaintiff’s website--thus allowing Defendant Vision Direct to profit from the goodwill and reputation in Plaintiff’s website that led the user to access Plaintiff’s website in the first place.

Absent improper use of 1-800’s trademark, however, such conduct does not violate the Lanham Act. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001); Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 122 (1938) (holding that Kellogg’s sharing in the goodwill of the unprotected “Shredded Wheat” market was “not unfair”); see also William P. Kratzke, Normative Economic Analysis of Trademark Law, 21 Memphis St. U. L. Rev. 19 199, 223 (1991) (criticizing importation into trademark law of “unjust enrichment” and “free riding” theories based on a trademark holder’s goodwill). Indeed, it is routine for vendors to seek specific “product placement” in retail stores precisely to capitalize on their competitors’ name recognition. . . .1-800 Contacts, Inc. v. Whenu.Com, Inc., 414 F.3d 400 (2d Cir. 2005)


GOOGLE search for term AUSTRALIAN GOLD




“Keyword advertising - Adwords opinion favours Google”

Thanks for having

me!

@roncoleman

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Keying Up Keywords The Role of Intellectual Property in Keyword Searching R ONALD D. C OLEMAN