Infringing Sale of Trademarks As Keyword Triggers for Internet Advertisements

Abstract

On April 3, 2009 the U.S. Court of Appeals for the Second Circuit issued its long-awaited decision in Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2 nd Cir. 2009)(Rescuecom). It represents a major victory for brand owners in their battle to prevent the unauthorized of trademarks as keyword triggers for internet advertising. The Second Circuit found that Google's practice of both recommending the purchase of and actually selling Rescuecom's trademark as a keyword search term to paying advertisers in Google's AdWords and Keyword Suggestion Tool programs constitutes an actionable use in commerce for purposes of the Lanbam Act. In so ruling, the Second Circuit distinguished and greatly narrowed its earlier appellate decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d. Cir. 2005) (1-800 Contacts) and provided an in-depth Appendix on how the use in commerce phrase should be interpreted and applied to infringing activities under the Lanham Act. This Court of Appeals ruling eliminates a significant split between the Second Circuit and other Circuits over the use in commerce issue and is likely to have a significant effect on keyword advertising practices and related litigation. The article discusses the significance of the Second Circuit's Rescuecom ruling and comments on its likely effect on litigation relating to the of trademarks as keyword triggers for internet advertising.