Transcript lsntap.org

Fighting the CyberPirates
Protection of Legal Aid
Organizations through Trademarks,
Domain Names, and Keywords
Hugh Calkins, Pine Tree Legal Assistance
Becky Levine, LSNTAP
Damien Riehl, Robins, Kaplan, Miller & Ciresi, LLP
Why Should Legal Aid Care About
Trademarks and Domain Names?
Why Should Legal Aid Care About
Trademarks and Domain Names?



Legal aid trademarks are often your most
valuable intellectual-property assets
Marks help clients obtain your services
Some entities may wish to capitalize on the
desperation of the vulnerable by
exploiting your marks
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Trademarks and “brands” distinguish your
services
Domain names are increasingly important in a
connected world
Search engines are often first-used referral
sources
ARLegalServices.org
ARLegalServices.com
CyberPiracy TIG project
CyberPiracy TIG project
Pine Tree Legal Assistance (PTLA) in
partnership with the Legal Services
National Technology Assistance Project
(NTAP), received $20,000 for 2007
from the Legal Services Corporation
(LSC)
 Funds a project that ensures the
poverty law community adequately
protects its entire client community
from predatory websites posing as
legal aid services

CyberPiracy TIG project

Primary goal

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Protect low-income website consumers
from fraud and confusion by predatory
websites
Second goal
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Ensure legal aid organizations’ statewide
websites are protected from cyber-piracy
Types of Cyberpiracy

Domain-name Disputes
(Cybersquatters)
E.g., pinetreelegal.com
(Domain Grabbing)
 E.g., South Bronx Legal Services
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Deceptive Keywords
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E.g., Search engine results for “legal aid”
include ads for-profit firms or matching
services
To Learn More
Stay current on issues in CyberPiracy
as well as updates on the TIG project
 Visit the Cyber Piracy section of the
LSNTAP website:


http://lsntap.org/techlibrary
Impact on Legal Aid
Programs/Clients

Points to Ponder:
What is the impact of Cyberpiracy on legal
aid clients or potential clients?
 Has your program experienced complaints
from people misdirected to commercial
sites?
 How do you think we as a community can
measure the impact of these non-legal
service websites?

Process and Importance of
Trademark Registration
Federally Registered Trademarks
Trademarks: Federal Benefits
Federal Registration: Best way to
protect your organization’s marks
 Governed by the Lanham Act
 Provides nationwide protection
 Provides presumption of a mark’s
ownership and validity.
 Provides prima facie evidence of
registrant’s exclusive right to use
the mark in commerce

Trademarks: Federal Benefits
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Gives constructive notice of the
registrant’s claim.
Provides protection for entire class of
related products and services
Permits for treble damages for “willful”
infringement
Permits attorney’s fees in some cases
After five years, mark becomes
“incontestable,” which is the highest status
trademark law can provide
Trademarks: Federal Registration

Process for registering marks with
Patent & Trademark Office (PTO)
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May file online at
http://www.uspto.gov/teas/index.html
If an application is approved, registrants will
usually receive a filing receipt in approximately
six months, though the process may take as
long as several years
Cost varies between $275 and $375


http://www.uspto.gov/go/fees/
Legal Services are categorized under
Class 42 (computer, scientific & legal)
Trademarks: Federal Registration
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Registrations have a 10-year term
To remain valid, registrants must file
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Affidavit of Use (§ 8)
1. between the 5th and 6th year following
registration and
2. within the year before the end of every
ten-year period after registration
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Renewal Application (§ 9)
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Within the year before the expiration date of
registration
State Registration of Trademarks
Trademarks: State
What if you haven’t registered yet and
have an issue now?
 Some states also provide trademark
protection
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State trademark protection is often more
limited legally than under the
Lanham Act
 Protection is also often limited
geographically to that state’s borders
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Trademarks: Common Law
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Even if you haven’t registered a trademark,
you may be entitled to common-law
trademark protection
However, common-law protection is also
often limited to the geographic area in
which the mark is used
Under the common law, a plaintiff bears the
burden of proving it is entitled to
exclusive use of the mark
Trademarks: Common Law
Use similar analysis. Often,
common-law trademark claims apply
similar principles to Lanham Act
 Use similar caselaw. State and
federal courts often rely upon each
other’s cases, providing a “common
reservoir” of trademark precedent
 Accordingly, common law actions often
hinge upon Lanham Act analyses

Trademarks: Common Law
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Unregistered common-law marks are
protected locally even if someone
later federally registers the mark
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Generally, “the national senior user of a
mark cannot oust a geographically
remote good-faith user who has used
the mark first in a remote trade area.”
 McCarthy
on Trademarks § 26:4 at 26-9
Pro Bono Trademark Registration
As part of the TIG funded project,
NTAP is organizing a group of pro
bono attorneys willing to assist legal
aid programs with trademark
registration
 For more information on how to
receive pro bono assistance visit:


www.lsntap.org/cyberpiracy_probono
Domain-Name Disputes
(Cybersquatting)
Cybersquatting: PineTreeLegal.com
Domain Names
In today’s world, domain names are
often the most important use of an
organization’s trademarks
 Malicious entities often have
incentive to infringe on trademarks
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To directly mislead customers to their
competing or related sites or
 To obtain “click-through” payments for
their advertisements.
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Domain Names: Remedies
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If you find that someone has a domain
name that infringes on your mark, you
have several remedies:
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Request voluntary transfer through
direct contact with owner
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Bring UDRP action to transfer URL
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Bring ACPA case in Federal Court
Domain Names: Direct Contact
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Requesting voluntary transfer of a domain
name is often the most cost-effective
resolution of domain-name disputes.
If a cybersquatter obtains your mark
through an automated process, this may
likely lead to an easy resolution.
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They may wish to avoid the time/expense of
litigation and simply transfer domain name.
Even if the registration was deliberate, a
bad-faith registrant may have a change of
heart when receiving a pre-litigation
request.
Domain Names: UDRP
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If a direct request is not successful, you may
wish to bring a Uniform Dispute
Resolution Proceeding (UDRP).
Most common remedy sought
Streamlined system honed by thousands of
cases over several years
Effective through the ICANN registration
system, providing for immediate
transfer of infringing domain names
Domain Names: UDRP Process
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UDRP Process:
Complaint filed with UDRP provider
 UDRP provider sends copy of complaint to
domain-name registrar and to respondent
 Respondent files response within 20
days of commencement of proceeding
 Provider appoints a panel, which renders
a decision within 14 days
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Domain Names: UDRP Process
If, within 10 business days, the adversely
affected party does not “appeal” by filing
suit, the registrar will cancel or
transfer the domain
 Entire process takes approximately
45 days
 Plaintiffs almost always win
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More Information on UDRP Process:
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http://www.icann.org/udrp/
http://cyber.law.harvard.edu/udrp/process.html
Domain Names: UDRP Process
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UDRP Fees:
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WIPO
 $1,500
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http://www.wipo.int/amc/en/domains/fees/index.html
National Arbitration Forum
 $1,300
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for one panelist (1-5 domains)
for one panelist (1-2 domains)
http://domains.adrforum.com/main.aspx?itemID=631&hideBar=False&navID=237&news=26
Asian Domain Name Dispute
Resolution Centre
 $1,000
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for one panelist (1-2 domains)
http://www.adndrc.org/adndrc/hk_schedule_fees.html
Domain Names: ACPA
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Alternatively, may file suit in Federal Court
under the Anticybersquatting Consumer
Protection Act (ACPA),
When to file under ACPA?
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When you seek remedies over and above
cancellation or transfer of a domain name
If you anticipate the cybersquatter will
challenge the UDRP result in court anyway
Drawbacks to ACPA filing:
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Much more expensive than UDRP proceeding
Often takes much longer to complete
Domain Names: ACPA
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Remedies under the ACPA
Cancellation or transfer of domain
name to mark’s owner
 Defendant’s profits, actual damages,
costs, and attorney fees
 Possible treble damages
 In lieu of actual damages, plaintiffs may
elect for statutory damages of between
$1,000 and $100,000 per domain name
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 15
U.S.C. § 1117(d).
Domain Names: ACPA “In Rem”
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Plaintiffs may bring ACPA suit even if
the defendant cannot be found, by
bringing an “in rem” suit against the
domain name:
If the domain name violates the rights of
a registered mark’s owner
 If the court finds that
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 the
owner cannot obtain in personam
jurisdiction over defendant, or
 through due diligence, owner was unable to
find prospective defendant
Domain Names: ACPA “In Rem”
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Remedies for “In Rem” suits are limited to
court orders for
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domain’s forfeiture or cancellation or
domain’s transfer
Money damages are not available.
Accordingly,
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if you cannot find a prospective defendant, or
if you cannot obtain jurisdiction over them,
then it may be best to simply file a UDRP
action
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remedies are the same.
Search Engine Results
Search Engine Results
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Trademarks also important in context of
search engine “sponsored links”
Companies purchase ads to accompany
search-engine queries
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e.g., search for “flower” gets FTD ad
These ads are referred to as “keyword”
advertising or, in marketing circles,
“pay-per-click” (PPC)
For example, a for-profit entity may buy
advertising space when someone enters the
query “legal aid” or “legal assistance”
Search Engine Results
 Search
engines often combine
several keywords (possibly
including marks), sometimes called
“broad matching”

https://adwords.google.com/select/expanded_matching.html
 Other
search engines require
advertisers to purchase bundles
of several keywords

Playboy Enters., Inc. v. Netscape Communications
Corp., 354 F.3d 1020, 1023 (9th Cir. 2004).
Deceptive Keyword Advertising
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Can Coke buy ads for “Pepsi” searches?
Similarly, may a for-profit site legally
purchase keyword ads for “legal aid”?
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Or “Pine Tree Legal”?
A French court has criticized Google for
suggesting third-party marks as keywords
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Société des Hotels Meridien v. S.A.R.L. Google
France, NRG 04/3772 (T.G.I. Nanterre, Dec. 16,
2004), available at
http://www.juriscom.net/documents/tginanterre20041216.pdf
Search Engine Results: IIC
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Courts have held that diverting
consumers through keyword searches
may result in liability under the
doctrine of Initial Interest
Confusion (IIC)
 Professor
McCarthy states that
“[i]nitial interest confusion can be
viewed as a variation on the
practice of ‘bait and switch.’”

3 J. Thomas McCarthy, McCarthy on Trademarks
& Unfair Competition § 23:26 (4th ed. 2003).
Search Engine Results: IIC
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The Ninth Circuit in Brookfield defined
IIC as
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“the use of another’s trademark in a
manner calculated to capture initial
consumer attention, even though no
actual sale is finally completed as a
result of the confusion.”
 Brookfield
Commc’ns, Inc. v. West Coast
Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999).
Search Engine Results: IIC
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A recent district court criticized
Brookfield’s analysis, holding
Keyword advertising is a “use in
commerce,” but
 Criticizing Brookfield, holding instead that
use of keyword-triggered ads and
metatags cannot confuse consumers if
the ultimate search results do not
display plaintiff’s trademarks.
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 J.G.
Wentworth SSC Ltd v. Settlement
Funding LLC, No. 06-0597 (E.D. Pa. Jan. 4,
2007).
Search Engine Liability
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In 2004, just before its IPO, Google
agreed to investigate trademark
complaints “as a courtesy” and would
“require the advertiser to remove
the trademarked term from the content
of the ad.”
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http://www.google.com/tm_complaint_adwords.html
Search Engine and Competitor Liability
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So are search engines and competitors
liable for competitive keywords?
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The state of the
law is a mess
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Cases are all
over the map
Prevalence of deceptive Keywords in
Legal Aid:
Research searching 75 legal aid
program names in the major search
engines (Google, Yahoo, MSN and
AOL) revealed over 1,000 instances
of deceptive keyword use
 5-10 “common offenders”
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Companies who repeatedly use legal aid
program names as ad-words
Legal Match Lawsuit and Settlement
Legal Match Lawsuit and Settlement
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LegalMatch Shall Not Use the Disputed
Marks.
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LegalMatch Shall Remove Legal Aid
Organizations’ Marks.
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LegalMatch agrees that it shall not use any of the
Pine Tree Marks.
Any legal aid organization can request that their
name be removed.
LegalMatch Shall Not Use the Term
“legal aid” in Advertising.
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* * * because “legal aid” is a term of art
meaning “aid provided by an organization
established especially to serve the legal needs of
the poor.”
Search Engine Results
Keywords and Search Engines
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Points to Ponder:

What is the best approach to the
“keyword issue”:
 Go
after individual violators?
 Work with search engines on a possible
solution?
 Pros and cons of both approaches.
Dangers of Clients’ Online Activities
Other Impacts of Online Activities
Other Impacts of Online Activities
Relevance to Legal Aid
Relevance to Legal Aid
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How is this relevant to legal aid orgs?
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It’s the money. Legal services is big business;
many attorneys and organizations will gladly pay
for click-through client referrals.
Vulnerable clients. Legal aid serves those who
may not be as Internet savvy, making them an
easier target for such deception.
Fight back? Advertisers who infringe on a Legal
Aid mark may know that those organizations may
have few resources to allot to vindicate their
rights.
Relevance to Legal Aid
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How can Legal Aid orgs protect
themselves?
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Think about registering your organization’s
name as a federal (and possibly state)
trademark/servicemark
Auto-renew domain names so others do not
swoop in when they expire (registrars often
provide for free)
Ensure domain-name registrar lists your
name as both
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(1) Registrant and (2) Admin
(3) Tech can stay third-party
Purchase domain-name variations clients
may likely use
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Domain names are as economical as $8/year
Relevance to Legal Aid

How can Legal Aid orgs protect
themselves?
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Query search engines to see if any entity is
trading upon your organization’s goodwill
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Enter different top-level domains for your URL

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E.g., lsc.gov vs. lsc.com vs. lsc.org vs. lsc.net
Do quick “typosquatting” searches to see if
anyone has a domain name that intentionally
misspells your name
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E.g., LegalServiceCommunity.org
(no “s” in “services”)
E.g., LegalServiceComunity.org
(misspells “community”)
Relevance to Legal Aid
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How can Legal Aid orgs protect
themselves?
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If those preventative measures prove
unsuccessful:
 Contact
responsible party for possible
amicable resolution
 If domain names are involved, bring
UDRP action
 If UDRP unsuccessful, may choose to bring
suit under ACPA
Practical Steps: Trademarks
 Federally
register your
trademark
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http://www.uspto.gov/teas/index.html
Possibly obtain volunteer IP
attorney to do this for you

Visit www.lsntap.org/cyberpiracy_probono
for more information about availability of
pro bono attorneys
Practical Steps: Deceptive Keywords
1.
2.
3.
4.
Search for your own name
Follow up with Advertiser
If that fails, follow up with Search
Engines themselves
Might be more sympathetic for
Legal Aid organizations

(PR sensitivity to misleading low-income
persons)
Practical Steps: Deceptive Keywords

Add this to your intake
questionnaire
Did you have trouble finding us?
 Did you look on the Internet?
 Were you misdirected?


Ask community resources, which
may have seen such misdirection
Libraries
 Community Centers (e.g., women’s
shelters, homeless shelters, courts)

Questions?
Appendix of Legal Citations
Search Engine Results

Good law review analysis of keyword
advertising liability:

Eric Goldman, Deregulating Relevancy in Internet
Trademark Law, 54 Emery L.J. 507 (2005),
available at
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=635803
Search Engine Results
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Relevant cases:
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Savin Corp. v. The Savin Group, 2004 WL 2829324, at *17
n.13 (2d Cir. Dec. 10, 2004) (“Internet initial interest confusion
requires a showing of intentional deception.”)
Google v. American Blind, 2005 WL 832398 (N.D. Cal. Mar. 30,
2005) (trademark-triggered sponsored links satisfy required
trademark-infringement element of commercial use).
Bayer HealthCare, LLC v. Nagrom, Inc., 2004 WL 2216491
(D. Kan. Sept. 7, 2004) (holding metatag use of mark to heighten
search-engine rank created initial interest confusion).
Netbula v. Distinct, 2003 U.S. Dist. LEXIS 1019 (N.D. Cal. Jan.
15, 2003) (in suit against competitor for initial interest confusion
based on metatags and Google keyword purchases, allowing
counterclaim for initial interest confusion because plaintiff’s
posted stories about the lawsuit were picked up by search
engines).
Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812
(7th Cir. 2002) (enjoining metatag use of mark and requiring
defendant’s home page to include disclaimer).
Search Engine Results

Relevant cases (cont.):
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Reed Elsevier v. Innovator, 105 F. Supp. 2d 816 (S.D. Ohio
2000) (in suit alleging defendant’s purchase of trademarked
keywords in banner-ad placement, denying motion to transfer
venue).
Horphag Research, Ltd. v. Pellegrini, 337 F.3d 1036, (9th Cir.
2003) (holding that competitor’s use of mark in metatags and on
website was neither “classic” nor “nominative” fair use).
Bayer Corp. v. Customs School Frames, LLC, 259 F. Supp. 2d
503 (E.D. La. 2003) (gray-market reseller’s use of mark in
keywords impermissibly resulted in initial interest confusion).
J.K. Harris & Co. v. Kassel, 253 F. Supp.2d 1120 (N.D. Cal.
2003) (keywords permitted as nominative fair use where
defendant used marks to make statements about plaintiff’s
business practices, though court prohibited “excessive” use of
mark).
Nissan Motor Co., Ltd. v. Nissan Computer Corp., 204 F.R.D.
460 (C.D. Cal. 2001) (stating in dicta that trademark infringement
could result from purchasing trademarked search engine
keywords to manipulate results).
Search Engine Liability: Netscape


Four years after it decided Brookfield, the
Ninth Circuit held in Playboy that unlabeled
banner ads tied to keyword trademarks
may constitute infringement, since
consumers may believe, if only initially, that
the ads are sponsored by (or related to) the
trademark owner.
But the panel limited its holding to
unlabeled ads, suggesting that it may have
held differently if the ad’s source had been
clearly identified.

Playboy Enters., Inc. v. Netscape Commc’ns
Corp., 354 F.3d 1020 (9th Cir. 2004).
Search Engine Liability: Wallpaper


In a pair of cases, American Blind &
Wallpaper Co. sued Google, arguing that the
search engine unlawfully sold the company’s
trademarks as keywords
Google responded that it was not required to
block third parties from purchasing keywords
of generic or descriptive phrases


Google v. Am. Blind & Wallpaper Factory,
Inc., No. C-03-5340 (N.D. Cal. filed Nov. 26,
2003) (decl. jgmt. action)
Am. Blind & Wallpaper Factory, Inc. v.
Google, No. 04-cv-00642 (S.D.N.Y. filed Jan. 27,
2004).
Search Engine Liability: Geico
Insurer GEICO sued Google, claiming
that the search engine improperly sold
“sponsored links” for its trademarks
 Court:

No infringement if ad does not
contain mark;
 If ad contains mark, then likelihood of
confusion


Gov’t Employees Ins. Co. v. Google, Inc., No.
1:04cv507, 2005 WL 1903128 (E.D. Va. Aug. 5,
2005).
Competitor Liability: Office Depot

Competitors’ liability for keyword
advertising is currently being tested


Office Depot, Inc. v. Staples, Inc., No. 0580901 (S.D. Fla. filed Oct. 4, 2005).
Staples allegedly contracted with
Google to display Staples’ ads when
users searched for “Viking,” which is
the name of a subsidiary of Office
Depot.
Competitor Liability: Office Depot

Staples counterclaimed that Office
Depot purchased keywords “staples”
and “staples tv ad”