Washington Journal of Law, Technology and Arts Volume 8, Issue 5 Spring 2013
Bidding on Trademarked Keywords in Search Engines: A Trademark Law Update
Ryan Baker(fn*)© Ryan Baker
ABSTRACT
In March 2011, the Ninth Circuit modified the list of the most relevant factors for courts to consider when evaluating whether a business's keyword bid on a competitor's trademark causes a likelihood of confusion under the Lanham Act. Over ten years earlier, in Brookfield Communications v. West Coast Entertainment, the Ninth Circuit had held that using a competitor's trademark in a website metatag for the purpose of achieving a more prominent place in search results creates "initial interest confusion" for consumers in violation of the Lanham Act. The Brookfield opinion formed what became known as the "Internet troika" test: a three-factor test for evaluating initial interest confusion in Internet cases. In a 2011 case, Network Automation, Inc. v. Advanced Systems Concepts, Inc., the Ninth Circuit reversed a lower court decision that applied the "Internet troika" test and held that the test fails to discern whether there is a likelihood of confusion in keywords cases. Instead, the Ninth Circuit adopted a new four-factor test for analyzing the likelihood of confusion in keyword bidding cases: (1) the strength of the mark, (2) the evidence of actual confusion, (3) the type of goods and degree of care likely to be exercised by the purchaser, and (4) the labeling and appearance of the advertisements and surrounding context on the page displaying the results. This Article examines the new four-factor test and discusses the importance of the Network Automation decision in affirming the legality, in most instances, of bidding on trademarked keywords in Google and Bing search engine advertising.
TABLE OF CONTENTS
Introduction..................................................................................544
I.The Swiftly Antiquated Internet Troika Test........................545
II.The New and Improved Keyword Test (The Keyword Quadruple)............................................................................547
A.The Strength of the Mark.................................................549
B.The Evidence of Actual Confusion..................................550
C.The Type of Goods and Degree of Care Likely to Be Exercised by the Purchaser............................................551
D.The Labeling and Appearance of the Advertisements and the Surrounding Context on the Screen
Displaying the Results Page..........................................552
Conclusion...................................................................................553
Practice Pointers...........................................................................553
INTRODUCTION
The Ninth Circuit recently reversed a district court decision applying the "Internet troika" test in a case involving bidding on trademarked keywords in Google Adwords,(fn1) and held that a new four-factor test should be used to analyze whether there is a likelihood of confusion in cases where a business bids on a competitor's trademarked keyword. The court concluded that the Internet troika test is best restricted to domain name disputes.(fn2) The troika test is ill equipped to adjudicate trademark violation claims in the search engine keyword context because two out of the three factors will always weigh against online search engine advertisers, resulting in a nearly per se rule against bidding on trademarked keywords.(fn3) The new four-part test espoused in Network Automation, Inc. v. Advanced Systems Concepts, Inc. (the "keyword quadruple" test), rather than stymieing keyword advertisers, facilitates online advertising by providing more clarity to companies on how to construct keyword ads in a fashion that will not expose them to liability under the Lanham Act.(fn4) This Article examines the keyword quadruple test's factors and discusses how the factors instruct keyword advertising best practices.
I. THE SWIFTLY ANTIQUATED INTERNET TROIKA TEST
The Internet troika(fn5) test originated over a decade ago, in Brookfield Communications, Inc. v. West Coast Entertainment Corp.(fn6)and quickly became untenable as Internet use grew commonplace. To prevail on a trademark infringement claim under the Lanham Act, a plaintiff must prove two elements: (1) that the plaintiff has a protectable ownership interest in the mark, and (2) that the defendant's use of the mark is likely to cause consumer confusion.(fn7) The internet troika test is designed to determine whether a defendant's use of a word is likely to cause consumer confusion with a valid mark. The three factors of the test are (1) the similarity of the mark and the infringing word, (2) the relatedness of the goods or services, and (3) the simultaneous use of the Web as a marketing channel.(fn8)
Not long after its 1999 inauguration, the Internet troika test became incompatible with the realities of Internet commerce and search engine advertising. The test failed to allow for a realistic evaluation of whether the defendant's use of a mark was likely to cause consumer confusion among Internet users.(fn9) The Ninth Circuit inadvertently...
