Appendix A: Legal Citations Relevant to Search Engine and Keyword Advertising Liability

Readers seeking a good analysis of keyword advertising liability should consult Eric Goldman’s "Deregulating Relevancy in Internet Trademark Law," which was published in the Emory Law Journal in 2005.

Initial Interest Confusion and Trademark Infringement:

• 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 Industries, 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)

• 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 Cases:

• Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)

  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.

• Google v. American Blind & Wallpaper Factory, Inc., No. C-03-5340 (N.D. Cal. filed Nov. 26, 2003) (decl. jgmt. action) and American Blind & Wallpaper Factory, Inc. v. Google, No. 04-cv-00642 (S.D.N.Y. filed Jan. 27, 2004).

  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.

• Government Employees Insurance Company v. Google, Inc., No. 1:04cv507, 2005 WL 1903128 (E.D. Va. Aug. 5, 2005).

  Insurer GEICO sued Google, claiming that the search engine improperly sold “sponsored links” for its trademarks. The court ruled that there was no infringement if the ad did not contain the plaintiff’s trademark; if, on the other hand, the ad contained the mark, there was a likelihood of confusion.

Competitor Liability:

• Office Depot, Inc. v. Staples, Inc., No. 05-80901 (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. Staples counterclaimed that Office Depot purchased keywords “staples” and “staples tv ad.”