Intellectual Property Law

Hearts on Fire v. Blue Nile: Judge Gertner Rules That Suit Alleging Use of Keyword to Trigger Search Engine Ads Can Withstand a Motion to Dismiss

By Lee.Gesmer

The issue here, which has arisen in a number of cases around the country, is whether adoption of a trademark as a search engine keyword consitutes a “use” under the Lanham Act.  The Lanham Act requires “use in commerce” as a condition of infringement, and as Judge Gertner points out, various courts have taken different positions on whether purchase of a trademarked keyword to trigger a sponsored link is a “use” of the trademark.  Judge Gertner found that most of the courts that have considered this issue have found that utilizing a trademark in this manner does consitute “use” under the Act, and she sided with what she considers to be the majority view (the significant exception being the Second Circuit).

The decision is on the court’s website, here.

Full post as published by Mass Law Blog on March 31, 2009 (boomark / email).