Does Identifying a Search Result as an Advertisement Eliminate Confusion with a Trademarked Search Term?
Search engine operators and their advertisers have been locked in a decade-long battle over whether the use of trademarks as keywords to trigger links to competitor ads is actionable as confusion or deceit under federal trademark laws. This practice has often been attacked as a form of "initial interest confusion." Initial interest confusion occurs when a competitor uses a trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion. (Fn 1) The concept of initial interest confusion is recognized in the 9th Circuit, although it has been questioned by some courts.
Search engine operators have long used trademarks as keywords to trigger competitor advertising, by either requiring advertisers to link their ads to the trademarks, or by selling the trademarks as keywords to the advertisers. In either case, when a user enters the trademark as a keyword in the search engine, the search engine will return advertisements from competitors to the trademark owner. In some cases, these have appeared as banner ads. In several recent cases involving Google, the competitor ads have appeared in a list identified by Google as "Sponsored Links." (Fn 2)
Earlier 9th Circuit cases had suggested that clearly identifying competitor ads as such might eliminate initial interest confusion. For example, a banner advertisement from a competitor might eliminate confusion by identifying the source of the advertisement. Or the search engine could eliminate confusion by including a statement saying "If you are interested in Brand X, you might also be interested in a message from Brand Y."
Google recently performed a test of this defense to a claim of initial interest confusion in the 2007 case Google, Inc. v. American Blind & Wallpaper. In that case, it filed a motion for declaratory relief against American Blind & Wallpaper, seeking a judgment that its use of American Blinds' trademarks as keywords in its AdWords program did not constitute trademark infringement. Google argued that it identified "Sponsored Links" as such and that such links were "conspicuous and differentiated from its genuine search results."
On Google's motion for summary judgment, American Blind introduced expert testimony that Google's practices still created initial interest confusion. According to American Blind's expert, 29% of respondents in a survey "falsely believed, after being shown a Google search engine results page from the entry 'American Blinds,' that "Sponsored Links" appearing on that page were affiliated with [America Blinds]." Over numerous objections by Google, Judge Jeremy Fogel admitted this survey as providing evidence of possible confusion.
We don't know what a jury would have done with this evidence, because the parties apparently settled the case shortly after Judge Fogel's order was entered.
In a more recent decision dealing with Google's AdWords-related search practices, an Arizona District Court in Soilworks, LLC. V. Midwest Industrial Supply, Inc. (Fn 3), found that the use of trademarks to return links to competitor websites did constitute initial interest confusion. However, Google was not directly involved as a party in that case. This decision was also on a summary judgment motion, and the defendant did not appear to have provided significant evidence to the Arizona court on whether Google's and its practices created actual confusion. So this case also did not provide a full vetting on the issue of whether Google's practices really do result in consumer confusion.
Other Google cases dealing with this issue are still pending -- such as the Rescuecom Corp. case decision we blogged about on July 11. Unless Google decides to do what is necessary to dodge the issue, a serious examination of whether Google's practices create trademark confusion could well occur in that case.
David D. Johnson is a business lawyer whose practice focuses on litigation and other issues relating to digital media and consumer electronics companies. David can be contacted at (310) 785-5371 or DJohnson@jmbm.com.
Notes:
Fn1 See Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 941 (9th Cir. 2002).
Fn2 See, e.g., Google, Inc. v. American Blind & Wallpaper, 2007 WL 1159950 (N.D. Cal. 2007).
Fn3 Soilworks, LLC. V. Midwest Industrial Supply, Inc., 575 F. Supp.2d 1118 (D. Ariz. 2008).
