The Confusion Continues over Key Word Confusion

A. Michael Palizzi and Michael C. Simoni

©2012. Published in Landslide, Vol. 5, No. 1, September/October 2012, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In April 2012, the United States Court of Appeals for the Fourth Circuit weighed in on the now long-running battle between Google and trademark owners. The court reversed the district court’s controversial holding that Google did not infringe Rosetta Stone’s trademarks because the marks were a functional part of Google’s AdWords program.1 In doing so, however, the Fourth Circuit carefully avoided a more elemental issue: whether Google “used” Rosetta Stone’s marks at all. For several years, courts in the United States have grappled with the issue of whether selling or purchasing another’s trademark as a keyword can constitute trademark infringement with seemingly mixed results.

This struggle has expanded to Europe, where the Court of Justice of the European Communities ruled that trademark owners could not prevent Google from selling their trademarks as keywords because Google was not, in that court’s opinion, using the trademarks in the course of trade. The decision appears consistent with several decisions in the United States, which concluded that similar conduct did not amount to a “use in commerce” under the Lanham Act, but is directly at odds with other American courts that reached the opposite conclusion. Suffice it to say the Internet has proven itself to be a square peg, unfit for the round hole of trademark laws drafted before the modern computer age. Consequently, there continues to be a great degree of uncertainty surrounding the billion dollar keyword advertising business.


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