I summarized three cases in my last post that seem to indicate there really is no uniform standard regarding infringement for keyword advertising. One court might view some factors as more important than another court will. However, a few general principles have seemed to emerge from each of these cases (and others) that should be identified and followed by your Internet business. I have summarized these below.
- The courts have generally applied the fair use defense in evaluating claims of trademark infringement with keyword advertising and comparative advertising is generally permitted;
- The first sale doctrine does not absolutely apply, as in cases where the material nature of the good may not be the same as the original-i.e. expired goods;
- The courts have looked predominantly at the sponsored links and the wording of the relevant ad to find any suggestion of affiliation or sponsorship;
- Using Disclaimers may help prevent liability, but they must be prominent and used properly (we discuss using website disclaimers in detail later);
- Determination of any trademark infringement by providers, like auction sites, has typically relied heavily on whether these providers have received notice and then subsequently taken down the infringing materials;
- The courts have favored service providers who do more than is legally required in dealing with trademark infringement claims. (The court in the eBay case noted eBay’s efforts at combatting counterfeiting and how it worked in good faith with third party owners to prevent infringement). This means if you’re a provider, you should have a comprehensive mechanism in place to combat counterfeit goods and infringing uses of another’s trademark on your website or platform;
- Using a someone else’s trademark as a meta tag may result in trademark infringement;
- Do not use the trademark as a source identifier on the packaging of any goods your business actually provides unless you’re an authorized reseller of those goods;
- Do not display the trademark (keyword) on your website or any other promotional materials used by your business.
Ultimately, the lack of appellate court decisions on this issue and the inconsistent analysis of the district courts who have decided this issue make it difficult to develop an effective strategy for reducing the risk of trademark liability. This means that all e-commerce businesses employing keyword advertising methods should proceed at their own risk. Accordingly, you should probably avoid using keywords that are known trademarks of someone else entirely to be completely safe.
You should stick with keywords natural to your own business or related to the goods/services your business offers. Content relating to your business should always be used over obvious trademarks in any keyword advertising campaign.