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Paid Placement = Trademark Use

So the case was just decided.  I will have to parse it carefully, but my initial impression is that it brings the Second Circuit into harmony with the other federal circuits.  As I argued in my Google’s Law article, I think this is the right result on the doctrinal issue of trademark use (I agree with Dinwoodie and Janis) as well as the right result in keeping the law involved in Google’s most lucrative and important function: acting as the central index of information online.

If you’re not up on the issue of trademark use on the Internet, the essential problem I saw with Google’s argument in this case was that under its interpretation on the Lanham Act, as Judge Leval explained: “the operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion.” That just can’t be right.

Yet just because Google uses keywords for their trademark value does not mean it causes consumer confusion by doing so.  The next step in search engine litigation (and in this case unless Google settles it) is to clear up the mess created by Brookfield and initial interest confusion doctrine on the Internet, which threatens to turn trademark into a property right in gross if overextended.  During this part of the case, I’ll likely be on the side of Google’s lawyers and amici.  If we can trim back initial interest confusion, the intersection of trademark law and search will be in a far better place.

Eric doubts we’ll see an appeal of this issue to the Supreme Court.  I agree.  I’d love to see a Supreme Court decision on search engines and trademark use, but I really doubt Google will see this as worth the effort/risk and I doubt the Supreme Court would want to take this case up, given the judicial consensus that this decision seems to establish.  The suggestion in the appendix that Congress should make the registration/infringement distinction in the 1127 definition clear is dead on, I think.  However, I don’t agree with Eric that a Google advertising safe harbor is warranted, as that would essentially create what this decision says is bad policy.

p.s. As a stylistic matter, the court’s move of putting an extended discussion of trademark use in a non-precedential appendix is very interesting.

p.p.s. I agree with the EFF’s take on many IP issues, but not this time.  Still, here’s how they read the decision.