Trademark lawyers yearning for the Second Circuit to reconsider its position on keyword advertising might be wishing for a better case than the one that has landed on the court's docket, Rescuecom Corp. v. Google Inc. (No. 06-4881).
Rescuecom failed to persuade a district court that Google's sale of "Rescuecom" as a keyword to a competing computer repair services company was a "use in commerce." 456 F. Supp. 2d 393 (N.D.N.Y. 2006). But if Rescuecom wants the Second Circuit to reach a different conclusion, it must convince the court that controlling precedent, 1-800 Contacts Inc. v. WhenU.com Inc., 414 F.3d 400 (2d. Cir. 2005), is distinguishable.
To that end, Rescuecom tries to distance itself from the infamous pop-ups case, though not very convincingly.
It is helpful to review the facts of that earlier case to provide context to Rescuecom's arguments. WhenU.com's "SaveNow" adware featured a directory of many thousands of Web site addresses and generic search terms. That directory was invisible to users, its sole purpose to act as a trigger to display pop-up ads that corresponded to generic search terms or Web site addresses input by the user into the browser. While the URLs contained in the list undoubtedly incorporated trademarks of other firms, the Second Circuit reasoned that this invisible use was not a trademark use; such internal use of the mark is equivalent to an individual's private thoughts about the trademark, the court concluded, and is thus outside the reach of the Lanham Act.
But the situation here is much different, Rescuecom urges. The trigger is not merely a Web address but an actual trademark which, unlike WhenU.com, Google sells to competitors as keywords. Also, there was no direct exchange of information between the user and the SaveNow software, according to Rescuecom.
"This is markedly different from Appellee Google, which is an interactive service communicating with Internet Users and purporting to provide Internet Users with lists of websites related to their search queries," reasons Rescuecom.
Neither of these arguments is particularly strong. True, Google sells actual trademarks, but the usage is still invisible to the end user; there was no allegation in the complaint that the sponsored links displayed Rescuecom's trademark. The best Rescuecom could muster is that the display of the mark appears in the search query box, but that of course is the user's doing, not Google's. And in both WhenU.com and here, the resulting ads came about through the user inputting specific search terms. It is hard to see how Google is doing anything that is much more "interactive" than the operation of the SaveNow software.
Meanwhile, the Electronic Frontier Foundation has filed an amicus brief in the case. An overly rigid approach to keyword advertising could muffle speech on the Internet, EFF asserts in its brief. Sponsored links keyed to trademarks allow advocacy groups to get the attention of users searching for a particular company's name. Absent this option, the Web sites for these organizations might appear so far down the list of organic search results that they go unnoticed by all but the most diligent searchers. Forbidding the use of trademark-based keywords would stymie noncommercial, critical speech regarding the trademarked figures or entities, says EFF.
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