Trademarks and Search

[Andrew A. Adams]

While this may seem a little off-topic for this group, the issue of
trademarks and the web generally are a key element of DNS policy issues and
court opinions on related questions of online trademark term usage should,
IMHO, help inform the debate around the lines to be drawn in restricting or
not registration of domain names including trademarked terms.

There were recent court decisions in the EU and the US regarding the use of
trademarks in keywords for search advertising (* see below if you're
unfamiliar with the concept). These are reported on in the Society for
Computers and Law website, freely available articles here (sorry for the
necessity to shorten the URLs but otherwise my mail programme will split them
across lines):

EDVA, Judge Lee release memorandum opinion in Rosetta Stone v. Google
trademark infringement case:

http://tinyurl.com/28r696x

EU court clarifies trade mark infringement in use of Google AdWords

http://tinyurl.com/2b8lg7p

In both cases the courts ruled that potential customer confusion as to
financial links between the advertiser and the trademark owner (such as
joint ownership or a legitimate right to sell the trademarked goods) is the
key issue in deciding trademark infringement, and not simply the potential
"poaching" of customers who are not confused, but merely change "direction"
as it were.

In particular the detailed opinion in the US case makes it clear that keyword
purchase by those offering clearly marked "counterfeit" goods (where the user
is made fully aware that the goods are not genuine) is not infringement by
the advertising middleman.

These decisions on keyword searching and trademarks, I think, provide us with
good evidence to press for higher requirements than simply a collision of
words in a domain name with a trademarked term. The recent attempt to ban
"similar" words in domain name registrations is a clear example of where the
proposals of the trademark holders in ICANN discussions go well beyond court
practice in considering something to be trademark infringement. An offer to
provide a disambiguation link on a site, for example, on the grounds of these
cases, would be a strong argument against transfer of any domain name.





(*) Adverts in search engines, most notably Google, are at least partly
driven by specific key words. Once way of purchasing an ad from google is
that whenever someone types a search including the words "Steak" and "New
York" then your Fifth Avenue New York, NY steakhouse either will be, or may
be, listed as one of the adverts or sponsored links that come up in addition
to Google's page rank results. As with meta-tags (now pretty much useless due
to abuse) companies often purchase advertising for their competitors names in
the reasonable assumption that if you're looking for "Dell Computers" say,
you're int he market to buy a new PC and may be willing to consider a Lenovo
machine instead, if "Cheap, High Quality PCs from Lenovo" comes up in the ads
with your search results. Also obviously, Dell might feel aggrieved by this
and accuse both Google (or other search engines) and Lenovo (in this
hypothetical case) of infringing on their trademark.

--
Professor Andrew A Adams                      aaa at meiji.ac.jp
Professor at Graduate School of Business Administration,  and
Deputy Director of the Centre for Business Information Ethics
Meiji University, Tokyo, Japan       http://www.a-cubed.info/