Click Time - Keywords And Intellectual Property Infringements

Copyright Sunday, June 22, 2008 Duncan Bucknell

Company

IP Review, issue 22

This article was first published in CPA's IP

Review, issue 22.

When Google launched its AdWords advertising programme

in 2003, keyword-linked advertising seemed to herald the future

of online advertising. If only it didn't infringe brand

owners' IP Rights in the process, says

Duncan Bucknell

It all seemed to make perfect sense. Companies looking to

ensure their details appeared at the top of a web search

results page simply had to purchase 'pay-per-click'

advertising banners that linked to particular industry-specific

search terms. So, for example, if a consumer was looking to

find 'trademark counsel', the law firm that had

sponsored those keywords with a search engine provider, such as

Google or Yahoo!, would appear next to the actual search

results. It sounds no different from selecting the appropriate

keyword terms as website metatags for your own website. That

is, after all, how search engines work.

And yet the potential for IP infringement has proved immense,

as businesses looking to cash in on their competitors'

goodwill have taken to purchasing trademark-protected terms

(for example, the brand or product names of their competitors)

as part of their sponsored keyword triggers in order to divert

some of the potential customers of their competitors to their

own websites. Worse still, say brand owners, Google and its

peers have chosen to turn a blind eye.

Trademark owners have started to protest, filing lawsuits

claiming trademark infringement, unfair competition, and

trademark dilution. To date, Google, AOL's Netscape search

engine, Yahoo! and Excite have all been sued for keyword

infringement, with mixed results. Most jurisdictions are clear

that trademark infringement exists if a company uses another

company's trademarks as metatags on its own website, but

they are divided as to whether the use of trademarks in

keyword-linked advertising is trademark infringement or simply

a fair means of competition.

France has already ruled that in 'some' circumstances

it does count as infringement, but UK courts have found the

opposite to be true: in their minds the sponsored ads are

clearly labelled as such, so the potential for consumer

confusion (necessary to prove the common law tort of passing

off) has been adequately reduced.

Google, for its part, argues that one of the critical steps in

effective advertising is placing the ad where interested

consumers may see it. It...