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Internet Search Engines Potential Liability For Trademark Infringement

The application of traditional trademark principles to the Internet has been confusing for many federal courts. However, in the past year, some federal courts have made rulings based on whether Internet search engines should be held liable for trademark infringement based on the sales of advertisements linked to trademarked keywords. The overpowering issue for the courts has been whether or not the search engine's sales of keyword trafficking constitutes a "use" necessary to bring a trademark infringement suit under the Lanham Act.

Presently, American Blind & Wallpaper Factory has brought suit in the Southern District Court of New York alleging that Google infringes their trademarked terms by allowing competitors to purchase keywords that are similar to its trademarks such as "American Blind," "American Blinds" and "Americanblinds.com." American Blind is also arguing that Google intentionally encouraged competitors to create brand confusion.

Earlier this year, the Ninth Circuit ruled that the owner of the trademarked terms "Playboy" and "Playmate," Playboy Enterprises, Inc. should survive summary judgment on its trademark infringement claims against Netscape Communications. Playboy Enterprises v. Netscape Communications, 354 F.3d 1020 (9th Cir. 2004). The Ninth Circuit held that advertisement banners of competing advertisers of Playboy Enterprises were displayed as a result of typing in "playboy" or "playmate" (among 400 other terms) into the search engine. These ads also had "click here" buttons and were not specifically identified, so as to identify the source of the advertisement. Playboy contended that this could lead the Internet user to another website, not knowing that they were being misled to a site other than Playboy Enterprises'.

While the Ninth Circuit held that this constituted "use" because the Internet user might stay at the misleading website, even after discovering it is not what they initially searched for, the Eastern District of Virginia has not been as sympathetic to plaintiffs in this context. In U-Haul Int'l v. WhenU.com, 279 F.Supp.2d 723 (E.D.Va. 2003), the district court in Virginia would not accept any of U-Hauls arguments that it was trademark infringement when WhenU.com used U-Haul's trademarks as a keyword trigger to display pop-up ads of U-Haul's competitors.

Another court in the Southern District of New York has distinguished WhenU.com's use of trademarked terms from the U-Haul case and allowed the plaintiff in that case, 1800 CONTACTS, to withstand a motion for summary judgment.

While the law is still up in the air on the issue of "use," it will certainly be interesting to see if the American Blinds v. Google case will make it past summary judgment and how the court will rule when the trademarked terms are as generic as "American" and "blind" - terms which are not nearly as strong as "Playboy," but the trend seems to be for increased trademark protection on the Internet.



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