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Update 55: March 21, 2008

1. EU Commission Clears Google's DoubleClick Bid

On March 11, 2008, European regulators cleared Google's proposed $3.1 billion acquisition of DoubleClick. The EU Commission’s in-depth investigation, opened in November 2007, "concluded that the transaction would be unlikely to have harmful effects on consumers, either in ad serving or in intermediation in online advertising markets. The Commission has therefore concluded that the transaction would not significantly impede effective competition within the European Economic Area (EEA) or a significant part of it." The Commission did not believe that the merged entity would have the ability to engage in strategies aimed at marginalising Google's competitors, mainly because of the presence of credible ad serving alternatives to which customers can switch, in particular companies such as Microsoft, Yahoo! and AOL.

EU Commission Press Release


2. Utah Trademark Protection Act Amended

Last year I mentioned a proposed law in Utah (Utah SB 236, the "Trademark Protection Act,") that inter alia effectively prohibits the use of trademarked terms as keyword advertising triggers. The Trademark Protection Act was heavily criticized for being unconstitutional, because it would hurt free speech, with citizens being unable to run ads in protest of certain company's business practices, for example. Comparative advertising would also be prohibited under the Act.
In March 2008, the Utah legislature finally amended the bill  and removed the provisions of the law which prohibited this type of keyword advertising.

For more information on the bill, check out Eric Goldman's blog entries on" the Utah legislature, the Dr. Frankenstein of Internet regulation."


3. Google AdWords Lawsuits in the USA - Where do we stand at the beginning of 2008?

a. The Lanham Act

To prevail on a trademark infringement claim under § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)2, a plaintiff must establish that

  • (1) it has a valid mark that is entitled to protection under the Lanham Act; and that

  • (2) the defendant used the mark,

  • (3) in commerce,

  • (4) ‘in connection with the sale . . . or advertising of goods or services,’ 15 U.S.C. § 1114(1)(a),

  • (5), without the plaintiff's consent.”

The plaintiff must also show that the defendant's use of that mark “is likely to cause confusion . . . as to the affiliation, connection, or association of [the defendant] with [the plaintiff], or as to the origin, sponsorship, or approval of [the defendant's] goods, services, or commercial activities by [the plaintiff].” 15 U.S.C. § 1125(a)(1)(A).

b. "Use in Commerce"

Courts in the USA are split on the threshold question of whether the sale and purchase of another's trademark as a keyword constitutes a commercial use of the mark.

Courts in the Second Circuit have uniformly held that the use of a trademark in keywords, where the use is strictly internal and not communicated to the public, does not constitute a Lanham Act "use". See:

The district courts have adopted the reasoning of 1-800 Contacts Inc. v., 414 F.3d 400 (2d Cir. 2005) (10 ECLR 678, 7/13/05). The court had held that the use of a trademarked term to trigger browser pop-up advertising was not an actionable use of the mark in commerce: "A company's internal utilization of a trademark in a way that does no communicate it to the public is analogous to a individual's private thoughts about a trademark.  Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of such goods or services."

Merck & Co. v. Mediplan Health Consulting Inc., 431 F. Supp. 2d 425 (S.D.N.Y. 2006) (11 ECLR 375, 4/5/06): "In 1-800 Contacts, the Second Circuit emphasized that commercial use is not the equivalent of “use in commerce” for trademark purposes. It observed that, “while any number of activities may be ‘in commerce’ or create a likelihood of confusion, no such activity is actionable under the Lanham Act absent the ‘use’ of a trademark.” 414 F.3d at 412. Trademark use “ordinarily” involves placing a trademark on goods or services to indicate that the goods or services emanate from or are authorized by the owner of the mark. Id. at 408. Here, in the search engine context, defendants do not “place” the ZOCOR marks on goods, containers, displays, or associated documents, nor do they use the marks to indicate source or sponsorship. Rather, the marks are used only in the sense that a computer user’s search of the keyword “Zocor” will trigger the display of sponsored links to defendants' websites. This internal use of the keyword “Zocor” is not use of the mark in the trademark sense; rather, this use is more akin to the product placement marketing strategy employed in retail stores, where, for example, a drug store places its generic products alongside similar national brand products to capitalize on the latter's name recognition. See id. at 411. The sponsored link marketing strategy is the electronic equivalent of product placement in a retail store."


In 2004 the Ninth Circuit held - without adressing the "use in commerce" question - that the use of trademarks to trigger the display of banner advertising creates initial interest confusion (Playboy Enter. Inc. v. Netscape Communications Corp. 354 F. 3d 1020 (9th Cir. 2004) (9 ECLR 55 1/21/04)

Following this decision, several district courts found "use in commerce"

These courts distinguished the adwords cases from three pop-up ad cases (the above mentioned Second Circuit decision 1-800 Contacts Inc. v., 414 F.3d 400 (2d Cir. 2005) (10 ECLR 678, 7/13/05), U-Haul Int'l Inc. v. Inc. 279 F. Supp. 2d 723 (E.D. Va 2003) (8 ECLR 837, 9/10/03) and Wells Fargo & Co v. Inc., 293 F. Supp.2d 734 (E.D. Mich. 2003) (8 ECLR 1101, 11/26/03)). In the pop-up software cases the advertisers were only allowed to bid on categories of terms, not specific marks ("Such conduct is qualitatively different from the pop-up advertising context, where the use of trademarks in internal computer coding is neither communicated to the public nor for sale to the highest bidder.")


c. Likelihood of Confusion

Even if there is a use in commerce, the use also must be likely to cause confusion. Likelihood of confusion requires that “‘an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question, or “are likely to believe that the mark’s owner sponsored, endorsed, or otherwise approved of the defendant’s use of the mark,” Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414 (S.D.N.Y. 2002) (citing Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979)).

No likelihood of confusion:

Likelihood of confusion:

Edina Realty Inc. v., Civ. 04-4371, 2006, WL 737064 (D. Minn. March 20, 2006) (As evidence of confusion Edina Realty offered a handful of e-mails and phone calls received by MLSonline from consumers inquiring about Edina Realty: "It is unclear whether the phone calls and emails identified by plaintiff are evidence of actual consumer confusion caused by defendant’s use of plaintiff’s mark. A survey that could demonstrate actual confusion is unnecessary, however, because plaintiff need only show a likelihood of confusion. The Court determines that the phone calls and emails are sufficient to raise a genuine issue of material fact for the purposes of summary judgment.")


d. Pending lawsuits:

  • JP Enterprises Inc. v. Yahoo! Inc. et al, D.Colo., No. 1:06-cv-01046, 6/6/06

  • American Airlines Inc. v. Google Inc., N.D. Tex., No 4:07cv487, 10/24/07): The U.S. District Court for the Northern District of Texas denied Google Inc.'s motion to dismiss plaintiffs ellegations. For more court documents click here!

  • 1-800 Contacts, Inc. v., Inc., 2:08-cv-00015-SA (D. Utah complaint filed Jan. 8, 2008). For more information see: 1-800 Contacts Sues LensWorld for Keyword Advertising, Technology and Marketing Law Blog


4. In short

  • According to the Court of Appeal of Aix en Provence (2nd Chamber), 6 December 2007, TWD Industries v. Google France, Google Inc., the use of trademark protected terms as keywords is a trademark infringement. The court also held Google Inc. and Google France liable under trademark law. Brad Spitz writes about this decision: "They are supposed to verify that the commercial links do not infringe any rights of third parties. Moreover, they may not allege that prior verification is impossible for supposedly material, legal and economic reasons. The Court adds that even if it were established that it is impossible to verify, Google Inc and Google France would have to either simply abandon this activity or bear the consequences."
    The Court of Appeal of Paris (4th Chamber, Section B) also held Google liable (decision of February 1, 2008, De Dietrich, Electrolux, and others v. Google France and Google Inc.), see Google Adwords Condemned Again For Trademark Infringement

  • Steven Hirsch, one of the world's biggest porn producers wants Google and other search sites to put up barriers between kids and adult entertainment (The Register).

  • Google Korea started to comply with the local laws and asks for age verification if your search contains words that could trigger adult websites (Google System Blog)

  • An Israeli town is suing Google for slander, because a feature of the Google Earth service shows the town was built on the ruins of an Arab village (AP).

  • Still no legal certainty for advertisers in Germany. According to the Frankfurt Higher Regional Court the use of trademark protected terms as keywords is a trademark violation (decision of February 26, 2008). The Munich Higher Regional Court does not agree (decision of December 6, 2007).


5. New in Legal Resources

  • Schrader, Paul / Rautenstrauch, Birthe, Urheberrechtliche Verwertung von Bildern durch Anzeige von Vorschaugrafiken (sog. thumbnails) bei Internetsuchmaschinen, UFITA 2007, 761-781

  • Stenz, Sirko, Die Meinungsmacht von Suchmaschinen und rechtliche Möglichkeiten der Regulierung, E-Book

  • McKenna, Mark P., "Trademark Use and the Problem of Source in Trademark Law" (January 18, 2008). Available at SSRN:

  • Wilbur, Kenneth C. and Zhu, Yi, "Click Fraud" . Available at SSRN:

  • Ott, Stephan, Die Entwicklung des Suchmaschinen- und Hyperlink-Rechts im Jahr 2007, WRP 2008, 393-413





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!

Latest News - Update 71

Legal trouble for YouTube in Germany

Germany: Employer may google job applicant

EU: Consultation on the E-Commerce-Directive

WIPO Paper on tradmarks and the internet

The ECJ and the AdWords Cases



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