Links & Law - Information about legal aspects of search engines, linking and framing

Hyperlink & Search Engine Law News  Decisions & Court Documents Worldwide Legal Resources (Hyperlink & Search Engine Law Articles) Linking Law Cases Search Engine Law Publications by Dr. Stephan Ott Technical    Background

 Edina Realty Inc. v.

The U.S. District Court for the District of Minnesota held that the use of a rival real estate broker's trademark as a keyword term, as well as in the text of sponsored links, is not a fair use of the mark where there are other opinions for describing the market the defendant serves.

Without lengthy analysis, the court found that the defendant's purchase of search terms like “Edina Realty,” “Edina Reality,” “,” “EdinaRealty,” “,” “” and “”  on both Google and Yahoo did constitute use of the plaintiff's mark in commerce. The court held that although defendant's use was not "conventional," the purchase of terms comprising the marks, in order to generate sponsored link advertisements, satisfied the definition of use in commerce as provided in 15 U.S.C. §1127.

The court briefly evaluated the standard likelihood of confusion factors and found enough dispute about several factors to require a trial. Edina Realty proffered as evidence of actual confusion several e-mails received by MLSonline from consumers inquiring about Edina Realty.

MLSonline also sought dismissal of the trademark infringement claims advanced against it on the ground that its use was a permitted nominative fair use: 

The Court holds that defendant's use of the Edina Realty mark does not constitute nominative fair use as a matter of law.  Defendant uses the mark as an Internet search term, in its Sponsored Link advertisements, and in hidden text and hidden links on its website.  None of these uses requires the Edina Realty mark.  In its advertisements and hidden links and hidden text, defendant could easily describe the contents of its website by stating that it includes all real estate listings in the Twin Cities.  Similarly, defendant could rely on other search terms, such as Twin Cities real estate, to generate its advertisement.  In addition, defendant's use of the Edina Realty mark in its advertisement does not reflect the true relationship between plaintiff and defendant.  Defendant's advertisement that has appeared on Yahoo, for example, places the Edina Realty mark in the headline, which is underlined and in bold font.  The name of defendant's company is listed in much smaller font at the bottom of the ad.  Defendant could have done more to prevent an improper inference regarding the relationship.

In May 2006, the case settled. Lawyers representing Edina Realty and confirmed that a deal has been reached but said its terms were confidential.

Also see: Goldman, Eric, Competitor's Keyword Ad Purchase May Be Trademark Infringement--Edina Realty v. TheMLSonline, Technology & Marketing Law Blog

Edina Realty Inc. v., Decision of March 20, 2006, U.S. District Court for the District of Minnesota





The Links & Law website is updated regularily, so  check back for updated information and resources about search engine and linking issues.

You are currently in the archive with older news. A complete list of the updates can be found here!


Masthead/Curriculum Vitae
Copyright © 2002-2008 Dr. Stephan Ott 

All Rights Reserved.