Intellectual Property Law

An issue that has been building on the horizon for some time ? the use of competitors? names as keywords to trigger sponsored links on search engines ? is starting to percolate through the courts, with conflicting results.  As more cases reach trial or adjudication, we?re eager to see whether courts will entertain novel theories of trademark infringement based on use of keywords in this way.

In a recent decision, Merck & Co., Inc. v. Mediplan Health Consulting, Inc., __ F.Supp.2d __, 2006 WL 800756 (S.D.N.Y. Mar. 30, 2006), the court dismissed trademark infringement claims related to the purchase of search engine keywords by a pharmacy using the name of its competitor.  The Merck court found that the claim could not stand because the purchasing pharmacy did not use the rival?s mark on any products or services of its own : ?This internal use of the mark ?Zocor? as a key word to trigger the display of sponsored links is not use of the mark in a trademark sense.?  Id. at *9.

But another recent decision takes the opposite view.  In Edina Realty, Inc. v. TheMLSonline.com, 2006 WL 737064 (D.Minn., Mar. 20, 2006), the court ruled that a company?s purchase of a rival?s trademark as a search engine keyword did not constitute nominative fair use of the mark, and indicated that the cause of action should go to trial.  The case may be one the first to place a purchaser of such sponsored links at risk for trademark infringement liability.

Other cases are also percolating through the courts, including some actions brought against not only the purchasers of the keywords, but the search engines themselves.  Google settled one case against it ? GEICO v. Google, Inc., 330 F.Supp.2d 700 (E.D.Va. 2004) ? after its motion to dismiss the trademark infringement claims (asserting contributory and vicarious liability theories) was denied.   Yahoo has already adopted a policy of blocking purchases of rival?s names and marks as keywords, but Google so far has yet to follow suit. 

Companies would be wise to be cautious about purchasing search engine keywords using their rival?s names.  Until the law becomes clearer on this issue, ?wait and see? may have to be the keyword of the day. 

Today's Blogger: Eric Bass