Keywords are words (or phrases) commonly used by individuals in search engine queries in order to search for information about a particular topic, or to locate providers of a particular good or service. Since customers look for a certain product or service by using a search engine, keyword advertising has become a growing marketing method for online retailers. It is also a growing revenue source for search engines. However, like many rewarding activities, keyword advertising comes with certain legal risks!
Keyword Trademark Infringement
If you use keywords that are registered trademarks of some third party in any Internet advertising, or when optimizing your website, you can potentially be liable for keyword trademark infringement. Trademark owners can assert several trademark claims in keyword advertising, including claims for infringement, contributory infringement and dilution. Also, as you will learn, claims for false advertising may be able to be asserted relating to keyword advertising. As a refresher, infringement occurs when a person uses another’s mark or a similar mark in a way that is likely to confuse consumers. Dilution occurs when a person uses a trademark that is identical, or nearly identical, to a famous mark in a way likely to tarnish the mark or blur its distinctiveness.
The problem, as with many other areas of Internet law, is that this issue and any potential liability for keyword trademark infringement is far from clear. Trademark laws have been interpreted and applied inconsistently by the courts. Specifically, the Courts have been inconsistent with how they have analyzed the two key elements of trademark infringement: (1) whether the sale of a trademarked term as a keyword is a “use in commerce” as defined under the Lanham Act and (2) whether the use of a trademark as a keyword is likely to cause consumer confusion.
Using Keywords in Commerce
Both types of trademark claims stemming from keyword advertising require “use in commerce.” This means that a person must use the allegedly infringing or diluting mark as a keyword in connection with the sale, distribution, or advertising of goods or services. Most courts hold that sale of a keyword that is also a trademark qualifies as a trademark “use in commerce.” Rescuecom Corp. v. Google, Inc., (2009) has been the pivotal case regarding this issue. The federal district court (2nd Circuit) held that a computer program generating pop-up advertising based on the terms typed into a browser was not a use in commerce. The appellate court reversed this decision and found that the display, offer and sale of a trademark by Google’s AdWords and other Keyword advertisers are in fact a “use in commerce.”
Lesson: Many other courts following the decision in the Rescuecom case will now probably find that your purchase of a keyword which happens to be a protected trademark does qualify as a “use in commerce.” This means you’re not automatically liable for trademark infringement by purchasing and using a keyword that is a trademark. What it does mean is that the use in commerce element of trademark infringement is probably satisfied and any claim won’t just be left to die for failure to satisfy that single element.
Keywords Causing Consumer Confusion-The Initial Interest Confusion Doctrine
It remains unsettled whether the use of a registered trademark in keyword advertising creates a likelihood of confusion. Many plaintiffs in trademark infringement actions involving keyword advertising often attempt to meet the likelihood of confusion element by relying on the “Initial Interest Confusion” doctrine. Under this doctrine, although the consumer is not ultimately confused, a plaintiff may suffer harm because the consumer was initially confused and was therefore led to the plaintiff’s competitor’s website as a result of that initial confusion.
For example, suppose another business has purchased a competitor’s trademark as a keyword and then used it in a pay-per-click advertising campaign. The consumer actually clicks on the link in the ad and is directed to that company’s website, not the website of the trademark owner. While browsing that company’s website, the customer buys a product that competes directly with the company who has trademarked the keyword being used to sell competing products. The customer is likely not confused when the purchase is ultimately made. But, the initial confusion led the consumer to the competitor’s website because the competitor used the trademark of the original company. The result is a lost sale for the trademark holder because it did not have control over its trademark.
Some courts hold that the Initial Interest Confusion Doctrine may not be appropriate in e-commerce. They have reasoned that Internet users are very aware of the nature of pay per click keyword advertising and are free to hit the back button on their browsers. However, other courts have actually held that Initial Interest Confusion Doctrine can form the basis of a trademark infringement claim. Hearts on Fire Company, LLC v. Blue Nile, Inc. is one example. A federal district court in Massachusetts found that Blue Nile’s purchase of the “Hearts on Fire” trademark as a keyword which triggered Blue Nile’s advertisement, together with the search engine’s organic results, amounted to trademark infringement. The infringement was based on Initial Interest Confusion.
Infringement from Metatags
Meta elements provide information about the content contained on a given webpage. Usually, they are included to help search engines index the pages properly. A meta tag is a coding statement in the HTML that describes some aspect of the contents of a webpage. The information that you provide in a meta tag is used by search engines to index your webpage. Keyword meta tags list the keywords or keyword phrases that describe the contents of the webpage. These tags are placed near the top of the web page as part of the heading. As any SEO guru would tell you, proper meta tags can help your website obtain higher search engine rankings.
But, if you use any protected trademarks of any of your competitors as metatags, you might be liable for trademark infringement. Infringement can occur in this situation because your website was listed in the search engine results by using someone else’s protected mark. There are different kinds of meta tags, but the most important tags used for search engine indexing are keyword meta tags and the description meta tags. The description meta tag includes a brief description of the webpage. Potential customers of your competitor will naturally use the brand name or trademark as a keyword when they use search engines to find that competitors’ products. So, if you try to achieve rankings by essentially diverting your competitor’s customer stream, you could do so at your own peril.