Originally posted 2009-03-19 15:28:05. Republished by Blog Post Promoter

“Google makes money not by reason of the nature of the keyword, but by someone clicking on the keyword,” Google lawyer Alexandra Neri told a 15-judge panel of the European Court of Justice in Luxembourg today. “The decision to click or not to click belongs to who — clearly to the Internet user.”

Do you buy that argument by Google in the LVMH keyword lawsuit in the EU?  I think it sounds a lot like, “Guns don’t kill people, people kill people.”  Which is to say it is literally true, but does not address the argument.

Say the magic word and...
Say the magic word and...

In litigation I have experienced, judicially speaking, both sides, or all three or four of them depending on how you count it, of the keyword advertising issue. And I have trouble with the assertion that keyword advertising is not “trademark use,” and therefore categorically cannot be the basis of an infringement claim.

Readers of the blog know how skeptical I am of “initial interest confusion,” which is ultimately the premise of keyword-based infringement claims.  (A lot skeptical.)  But while the LIKELIHOOD OF CONFUSION piece of claims are not logically  sustainable, I have trouble with the view, which is predominent among federal courts that sit where I sit (New York), that using a competitor’s trademark to trigger a competitive ad is not trademark use.  The argument, typically, is that because the public does not know that the advertiser has bought the keyword — it is not displayed — there is no confusing association.

Like the courts across the river and out my window (i.e., in New Jersey), where I also practice, I don’t buy that, because the user (the consumer) has brought the original trademark to the table.  The mark doesn’t need to be visible — it’s already in his head, whence it descended through his nerves and into his fingers as he typed it into the search field form.

I do agree with Alexandra Neri that the sale or purchase of a trademark for keyword advertising is not infringement (or contributory infringement).  The infringement question may or may not be answered at the level of what indeed the ad triggered by the search term itself displays, or possibly where it goes and what you see when you click it.

Now, I don’t think that the question of contributory infringement, which is Google”s immediate problem, is satisfactorily addressed by saying “it’s not us, even though we sell keywords and make billions on their use,” any more than I buy that argument when eBay makes it.

But the use of a trademark — for this is how anyone speaking English would describe the the use of a trademark — to trigger an advertisement for a competing product?

Blogs don’t have opinions, though the people reading them may perceive bloggy opinions — so perceive this:  Subject to applicable defenses, or the failure to meet the other elements of an infringement claim, using the other guy’s trademark to sell your stuff sounds like  “trademark use” to me.

(Hat tip to David Milch!)

By Ron Coleman

I write this blog.

5 thoughts on “Key decision”
  1. Really? That’s the move? “[U]sing the other guy’s trademark to sell your stuff sounds like ‘trademark use’ to me.” That’s just a textbook example of begging the question.

    Starting at the end, you know better than to simply take the layman’s *use* of a term and willy-nilly smudge it over to comprehend the use of that term as a term of art. (The term in question, of course, is “use,” which makes this whole discussion weirdly self-referential.) A statute prohibiting “use” of a firearm within city limits would (presumably) not extend to the “use” of a decommissioned pistol used as a doorstop or an antique pistol used as a museum display.

    Use in the trademark sense means the term has to be doing – or interfering with – the thing that a TM is _supposed_ to do: Associating in the mind of a consumer a term with a source. (That’s not a cut-and-dried proposition, but it’s close enough.)

    You’re probably right that the simple fact that it’s the consumer (not the search engine) who brings the term “to the table” isn’t enough to make it not a trademark use. If I ask for a COKE and I’m silently served a PEPSI (and we’re in the Northeast, where “coke” means an actual cola-flavored beverage from the Coca-Cola company)… then the server is still using the COKE mark, because he’s tacitly representing that the beverage I have in my hand is a COKE, per my request. That’s pretty clearly a trademark USE (in commerce) of the term COKE, just as it would have been if the server had said, “Here’s your coke.”

    But if the server says “No Coke, Pepsi!” (http://is.gd/o5Of), then I think it’s clear that there’s no *external* use by the server of Coke in the TM sense. And here’s where the “user doesn’t see it” argument belongs… On an internal level, the server has parsed the trademark term (COKE) out of my order, ‘looked up’ the generic product to which the trademark might refer (COLA), and then named a comparable and competitive product (PEPSI).

    That’s pretty clearly NOT a Trademark USE, or if it is, it’s not a use IN COMMERCE – it’s purely internal to the server. In this metaphor the server is the search engine.

    But even if the server IS making a trademark use, and even if you want to say it is “in commerce,” it *still* doesn’t translate to the search engine context. Because the search engine isn’t even doing that!

    First of all, if anyone’s doing that little three-step jig, it’s the competitor (PEPSI in my example) who buys the advertising. They look at the term COKE, think to themselves… this guy wants a cola, and then respond with PEPSI.

    But more importantly, the competitor isn’t even really doing that. And the way to see that is to see that there’s no rule that it has to be a competitor (of that sort) at all who’s placing the ad.

    That is to say – sure, if it’s PEPSI is telling Google to offer (in the sponsored ads) Pepsi whenever it “hears” the work COKE, you might think it’s done that three-step… But what’s happening is really a much more trademark-true three-step, where the TM connects to the product (as the TM user wants it to) and then the product itself connects to the competitor or complementary product or whatever.

    Imagine it’s not PEPSI that’s buying the ad. If I had a health food drink that I wanted to market, or if I were selling Big Kahuna Milkshakes (a tasty beverage!) – those are competitors of a sort, but not direct. The further afield you go, the clearer it gets, though: If I think that people who like COKE would also be the sort of people that would buy my coolers (complementary goods, still arguably related to COLA not COKE), I could buy the ad (or bid on it, at least.) What if I just think that people who buy COKE, because of the brand identity of COKE, would also like my surfboards, or widgets or whatever. Now I’m avoiding the generic aspect totally. People who buy PEPSI would totally not go for my surfboards; people who buy generics couldn’t afford my surfboards; people who buy RC don’t know what a surfboard is… I’m basing my ad placement NOT on the generic but on the BRAND itself.

    In that light, you can see that PEPSI is less concerned with “cola drinkers,” but more concerned with picking off COKE drinkers.

    (Of course, the last four paragraphs are talking about the competitor, not the search engine anyway… The search engine is just doing a mechanical correllation of term-to-advertisement per the instructions of the advertisor.)

    And yes, I realize that’s a little babe-in-the-woods: It’s certainly quite likely that Google *approaches* PEPSI and points out the availability of COKE as a keyword… and just as UNlikely that they approach Ben’s Surfboards with that keyword. BUT (a) the keyword is still *available* to me, regardless of the affirmative approach (b) the fact that the two approaches are equally valid makes clear that whatever use is being made of the term in question is much more technical – and less trademark-y – than you would (apparently) claim.

    Moreover, as a matter of common practice, when magazine X is running a series of stories on whatever – call it a comparison of soft drinks – it’s entirely sensible that the ad sales folk should approach the purveyors of (a) any soft drink manufacturers, including the competition to any mentioned in the article, (b) purveyours of complementary and/or competitive goods, and (c) anyone selling to a demographic that might be particularly interested in a series of articles about soft drinks. To modify my running hypo for a minute, if the article mentions MOUNTAIN DEW, be sure that there will be ads for MOUNTAIN DEW, but also for JOLT (competitor), and also for CHEETOS (complementary), and also for World of Warcraft and (lifestyle/demographic) (See, e.g., http://is.gd/o7k1 – because the geeks and hackers, we love the Dew. Or at least pretending to do so is a weird social currency.)

    Now, it’s possible that, under the sway of the hobgoblin (http://is.gd/o7ln), you *might* argue that the conversation between the magazine ad sales rep and the Draenei marketing exec at Blizzard Entertainment is a trademark use (in commerce) by the magazine (via the ad sales rep)… and while I think of that as kind of a long stretch, it’s at least not entirely untenable.

    But it doesn’t seem reasonable that you would call the actual placement of the ads in the magazine a trademark use by the magazine.

    And it’s that placement of the ads to which keyword advertising is most readily – and properly – analogized.

    Here endeth the lesson. Or the rant. Or whatever. Can you tell this is an issue to which I’ve given some thought?

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