Google, Inc. v. American Blind & Wallpaper Factory, Inc.: a justification for the use of trademarks as keywords to trigger paid advertising placements in Internet search engine results.

• Author: Macaw, Misha Gregory

1. INTRODUCTION

   Internet technology has proven to be a sort of trial by fire for many areas of the law. One field of law in particular that has been prominently litigated in connection with Internet issues is trademark law. Courts considering trademark law issues that arise in the online environment often have been confronted with novel factual situations that simply do not occur in the offline world. (1) In many cases, this has resulted in decisions that push the boundaries of trademark law beyond that contemplated in real world precedent. (2) Many commentators have criticized these decisions as separating the online application of trademark law principles from the doctrinal foundation of trademark law as developed over many years prior to the advent of the Internet. (3) The result, these commentators say, is that trademark rights on the Internet have become greatly expanded beyond that justified by the policy underpinnings of traditional trademark law. (4)

   A recent area of trademark litigation in the Internet context relates to the use of trademarks as keywords to trigger paid advertising placements in Internet search engine results. (5) Essentially, this is the practice of search engines selling advertisements that are triggered to appear in search results generated when a user types in certain keywords. For example, the shoe company Reebok might purchase from a search engine an advertisement that is triggered to appear whenever a search engine user types in the word "Nike". A user seeking information on Nike shoes and typing in the word "Nike" in the search field would see two types of results--the unbiased results generated by the search engine's search algorithm, as well as a paid advertisement (or possibly even more than one) from Reebok. Trademark owners have complained this practice costs them interest from consumers and possibly lost sales to their competitors.

   To address their concerns over the use of trademarks as keywords to trigger paid advertising placements in Internet search engine results, trademark owners increasingly are looking to trademark law to provide a remedy. A prime example is the case of Google, Inc. v. American Blind & Wallpaper Factory, Inc. (6) At issue in the Google case was Google's AdWords program, an advertising platform offered by Google through which advertisers may purchase the fight to have a description of their Web site displayed on Google's search results pages when a user inputs a designated search term. (7) The Google case provides a convenient reference from which to discuss the use of trademarks as keywords to trigger paid advertising placements in Internet search engine results.

   This Article intends to use the Google case as an analytical framework to argue that the use of trademarks as keywords to trigger paid advertising placements in Internet search engine results does not constitute trademark infringement, so long as search engines take reasonable steps to prevent a likelihood of confusion among consumers using the search engine. More particularly, this Article proposes that such a use of trademarks actually serves the underlying policy goals of trademark law by promoting a free flow of information to consumers, and links this idea to the conceptual framework developed by other commentators arguing that the trend towards expansive trademark rights on the Internet exceeds the doctrinal underpinnings of trademark law.

   Part I of the Article provides an introduction to the topic. Part II of the Article reviews the technology associated with keyword triggered paid advertising on the Internet. Part III of the Article discusses the development of traditional trademark law principles and policies in the offline world prior to the advent of the Internet. Part IV of the Article highlights the application by courts of trademark law to issues arising on the Internet, with particular attention given to deviations from the application of traditional trademark law in the real world. Part V of the Article analyzes why the use of trademarks as keywords to trigger paid advertising placements in Internet search engine results does not constitute trademark infringement. Part VI of the Article provides a conclusion.

2. TECHNOLOGY REVIEW

   The Internet represents a revolution in the technology of human communication, perhaps on a scale not seen since the Gutenberg Bible. (8) To understand how trademarks are used on the Internet, a review of the technology is provided with focus on the World Wide Web, search engines, keywords, metatags, Web page optimization, and keyword-triggered advertising.

   The Internet is a system of linked computer networks, worldwide in scope, which allows data located on any one computer to be transferred to any other computer. (9) Every computer connected to the Internet is identified by a unique IP (Internet Protocol) address so that any two computers connected to the Internet can locate each other and exchange data. (10)

   A subset of Internet-based technology is the World Wide Web. The World Wide Web is a global hypertext system that uses the Internet as its transport mechanism. (11) Hypertext is a way of presenting information on computers that increases the user friendliness of the Internet in at least two ways. First, a hypertext-based computer code called HTML (hypertext markup language) allows information to be presented as Web sites or Web pages, which are user-friendly presentations of information incorporating text, graphics, sound, animation, and other multimedia elements. (12) Second, a hypertext-based computer protocol called HTTP (hypertext transfer protocol) allows data transported from one computer to another computer over the Internet to be displayed as a Web page. (13) More particularly, HTTP allows individual Web pages to be connected by hyperlinks. A hyperlink is a word, phrase, image, or other region of a Web page that, when clicked, directs a user to the content of another Web page. (14) This process of clicking from Web page to Web page may be referred to as navigation, and dramatically increases the ease with which users of the Internet may access information available on it.

   The massive amount of information available on the Internet combined with its relatively poor organization makes hyperlink-based navigation a generally inefficient choice for finding information on the Internet. Instead, most Internet users rely on search engines. Search engines are Internet-based services that allow users to search for information on the Internet. (15) Although individual search engines differ, they are all typically composed of three parts: a Web crawler, which is a computer program that navigates--or "crawls"--the Internet to gather information, a database, which contains all the information gathered by the Web crawler; and a search tool, which allows users to search for information contained in the database. (16) Moreover, search engines return results in different ways. (17) Some weigh the results to show the relevance of the documents with respect to a query posed by a user, while others may show only the title or first several sentences of the document. (18) In general, search engines treat the specific algorithms by which information is gathered and results are returned as highly proprietary and confidential. (19) For example, the high popularity of Google's search engine often is attributed to a perception by Internet users that Google's algorithm returns particularly relevant results.

   Keywords are the search tool of choice for most search engines. Keywords are words or phrases that describe or relate to a topic. To find information on such a topic, an Internet user may typically access a search engine's Web site and enter keywords appropriate to that topic into a search field. (20) Often, trademarks are used as keywords by Internet users seeking information on a topic to which the trademark is related. (21) A software program then searches information stored in the search engine's database to retrieve information relevant to the keywords entered by the user. (22) Again, the precise results returned vary from search engine to search engine and depend on the individual algorithm used by the search engine to rank the relevancy of the results obtained. (23) Results are typically displayed as a list of hits that may be reviewed by the Internet user. (24) Each hit may contain information summarizing the content of the Web site it describes to assist the user in assessing its relevancy, such as the Web site title and description. (25)

   Because search engines are currently the most efficient way to locate information on the Internet, they are extremely popular with Internet users. (26) In turn, Internet advertisers have focused their efforts on getting their products and services listed in search engine results. (27) These efforts may be described as falling into two categories: optimization and advertising. (28) Optimization focuses on designing Web sites that attract search engine Web crawlers, thus making it more likely that the Web site will appear in results returned by the search engine. (29) By way of contrast, advertisers simply pay a search engine in some form of value to have their Web site more prominently featured in search engine results. (30)

   One high profile (and highly litigated) method of optimization involves metatags. (31) Metatags are data about a Web site contained in the HTML computer code of that Web site. (32) Significantly, metatags are not visible to an Internet user on the displayed Web site itself, but rather reside only in the HTML computer code of the Web site. (33) However, metatags are extremely useful to search engines because they provide information about that Web page to a search engine's Web crawler, which in turn can influence how the Web site is indexed in the search engine's database. (34) Accordingly, one method of optimization involves writing keywords into a Web site's metatags, with the...