• 31
  • October
    2011

Most people can't make it through a single day without having to search for something on one of the internet's many search engines. Internet users count on search engines to not only answer their questions, but to do so in an effective and efficient manner. Unfortunately though, internet media and search engines have created a wide variety of issues when it comes to the protection of intellectual property - most notably trademarks.

Search Engines

Generally, internet search engines use advanced algorithms to process an internet user's search request to display results in order of relevance. However, not all search results will be based solely on relevance. For example, many search engines will also allow websites to bid on certain keywords that internet users may enter as they search the web.

So, if a particular purchased keyword or phrase is entered into the search engine, the website of that keyword purchaser will appear as a sponsored link. In addition, some search engines also offer programs that recommend to the website owner certain relevant keywords that they may purchase.

However, purchasing keywords that also happen to be a competitor's trademark has created some debate in the internet community, with some disputes leading to lawsuits.

Trademarks as Keywords

In order to prove trademark infringement, generally one of the elements a plaintiff must show is that the defendant has used the plaintiff's trademark "in commerce." This element can be problematic, especially in the case of internet searches - when much of the process is done behind the scenes and never actually seen by the consumer.

Although not expressly decided in the Eleventh Circuit, it has been discussed in other areas of the country. The leading case is a Second Circuit case entitled Rescuecom Corp. v. Google, Inc. In this case, a competitor of Rescuecom Corp. purchased the phrase "Rescuecom" as a keyword, so that when internet users entered the phrase "Rescuecom," the competitor's website would be prominently displayed.

The court in Rescucom determined that since Google recommended the mark as a keyword in one of its advertising programs that the mark was in fact being used "in commerce" - despite the argument that the search algorithm itself was invisible to internet users.

The court was careful to note that this does not mean the trademark was infringed, but just that it was used in commerce and that the lawsuit could proceed. As for the other elements of trademark infringement in the internet context, please check back for future blog postings.