AIPLA Spring Meeting 2010: Keying Up Keywords Ronald Coleman

Keying Up Keywords The Role of Intellectual Property in Keyword Searching RONALD 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) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

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

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

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

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

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

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

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

INITIAL INTEREST CONFUSION Second Circuit 2010 Keyword “Google, supported by amici, argues that 1-800 suggests that advertising the inclusion of a trademark in an internal computer directory cannot constitute trademark use. Several MAY INDEED district court decisions in this Circuit appear to have BE “trademark reached this conclusion. . . This over-reads the 1-800 decision. First, regardless of whether Google’s use of use” under Rescuecom’s mark in its internal search algorithm could constitute an actionable trademark use, Google’s the Lanham recommendation and sale of Rescuecom’s mark to its Act 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 Rescuecom infringement, no matter how likely the use is to cause Corp. v. confusion in the marketplace. If we were to adopt Google and its amici’s argument, the operators of search Google Inc., engines would be free to use trademarks in ways 562 F.3d 123 designed to deceive and cause consumer (2d Cir. April 3, confusion. This is surely neither within the intention nor the letter of the Lanham Act.” 2009) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

INITIAL INTEREST CONFUSION Second Circuit “What Rescuecom alleges is that by the manner of Google’s Keyword display of sponsored links of competing brands in response to a search for Rescuecom’s brand name (which advertising fails adequately to identify the sponsored link as an MAY INDEED advertisement, rather than a relevant search result), Google creates a likelihood of consumer confusion as to BE “trademark trademarks. use” under If the searcher sees a different brand name as the top entry the Lanham in response to the search for “Rescuecom,” the searcher is likely to believe mistakenly that the different name Act 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. Rescuecom Whether Google’s actual practice is in fact benign or Corp. v. confusing is not for us to judge at this time. We consider at the 12(b)(6) stage only what is alleged in the Google Inc., Complaint. 562 F.3d 123 “We conclude that the district court was mistaken in believing that our precedent in 1-800 requires dismissal.” (2d Cir. April 3, 2009) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

“Affiliation” • In 1962 the Lanham Trademark Act was amended “If the searcher sees a different brand name by striking language requiring as the top entry in response to the confusion, mistake or search for “Rescuecom,” the searcher is deception of “purchasers as to likely to believe mistakenly that the the source of origin of such different name which appears is goods and services.” affiliated with the brand name sought in • In 1989 Lanham Act Section the search and will not suspect, because 43(a) was amended to the fact is not adequately signaled by describe as unfair competition Google’s presentation, that this is not the most relevant response to the any act causing a likelihood of search. ” confusion not only as to Rescuecom Corp. v. Google Inc., 562 F.3d 123 source, but as to affiliation, (2d Cir. April 3, 2009) connection, sponsorship, association or approval. © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

GOOGLE search for term AUSTRALIAN GOLD

INITIAL INTEREST CONFUSION “ “Likely to cause confusion” “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. “Whether Google’s actual practice is in fact benign or “With respect to the former requirement, this is exactly the conclusion that Judge Berzon recently arrived at after reexamining the Brookfield case, confusing is not for us to see Playboy v. Netscape, 354 F.3d at 1034-36 (Berzon, J., concurring), and simply recapitulates this Court’s requirement that there have been judge at this time. We a misleading “credibility transfer” to the defendant, see Mobil Oil v. Pegasus, 818 F.2d at 259 (defendant gained “crucial credibility during consider at the 12(b)(6) the initial phases of a deal” by using confusingly similar mark). stage only what is alleged in “The second requirement cabins the initial interest confusion doctrine, the Complaint. ” 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 Rescuecom Corp. v. Google needs some rigorous proof if traditional standards are to be discarded. After all, in the absence of evidence that any shopper has actually been Inc., 562 F.3d 123 (2d diverted, trademark law should not lightly rush in to regulate market behavior. Cir. April 3, 2009) EFF Amicus Brief urging reversal in 1-800 Contacts v. WhenU.com © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

So what DID “Likely to cause confusion” the Second Exemplifying the conceptual difficulty that inheres in this issue, the Circuit decide district court’s decision suggests that the crux of WhenU’s in 1-800 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 Contacts? 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) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

INITIAL INTEREST CONFUSION GOOGLE search for term AUSTRALIAN GOLD

INITIAL INTEREST CONFUSION

INITIAL INTEREST CONFUSION On 22 September 2009, the long anticipated Opinion in the three joined Google France references to the European Court of Justice (ECJ) was published. This is the first judicial comment from the supervising courts in Luxembourg on the legality of paid for 'keyword' advertising and a negative outcome could force search engines such as Google to dramatically alter the way they do business. In an Opinion which will disappoint brand owners, Advocate General Poiares Maduro concludes that Google France should not be found guilty of trade mark infringement by offering trade marks for sale as Adwords. He also concludes that there is no European provision for contributory infringement and therefore, search engines, such as Google cannot be found liable under the harmonised European trade mark laws. However, they may be vulnerable to an action for contributory infringement under national laws of liability. Furthermore, in the AG's view, Google would not be able to defend itself from liability under national law by relying on the hosting safe harbour contained in Article 14 of the E-Commerce Directive. In respect of the potential liability of advertisers, the AG was of the view that the purchasing of trade marks as keywords is not trade mark infringement, on the basis that it is not use 'in the course of trade'. This was because it was a private act between the advertiser and the search engine operator (Google) and not an act with a view to commercial activity. “Keyword advertising - Adwords opinion favours Google”

Thanks for having me! @roncoleman

AIPLA Spring Meeting 2010: Keying Up Keywords Ronald Coleman

by Ronald Coleman on May 11, 2010

Accessibility

Upload Details

Usage Rights

Statistics

AIPLA Spring Meeting 2010: Keying Up Keywords Ronald Coleman — Presentation Transcript