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Keyword Ads and Trademark Infringement in 2009

Keyword Ads and Trademark Infringement in 2009. Update on the latest case-law in the US and Europe which could make or break the search engine industry Alexander Tsoutsanis Stanford Law School – April 23 rd 2009. Topics. Introduction Keyword Advertising Overview 2008/2009 Infringement

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Keyword Ads and Trademark Infringement in 2009

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  1. Keyword Ads and Trademark Infringement in 2009 Update on the latest case-law in the US and Europe which could make or break the search engine industry Alexander Tsoutsanis Stanford Law School – April 23rd 2009

  2. Topics • Introduction • Keyword Advertising • Overview 2008/2009 • Infringement • by Advertisers • by Search Engines • Evaluation

  3. Portakabin v. Primakabin (NL) • Dispute between TM owner and Advertiser: Google not directly involved • 2008: Supreme Court refers to ECJ • Extensive questions: • Infringement • Fair use • First sale doctrine • Unfair competition

  4. 7 Questions pending before ECJ • 1(a) TM Use. Does the use of a third party TM as a keyword for advertising identical products constitute TM use by the advertiser? • 1(b) Presentation. Does it make a difference whether the ‘sponsored result’ is displayed in the ‘ordinary list of webpages found’ or ‘in an advertising section identified as such’? • 1(c) Actual offer. Does it make a difference whether the identical products are offered in the ‘sponsored result’ or in the linked webpage?

  5. 2. Fair use defense. Can an advertiser escape TM infringement by relying on fair use? • 3. First sale doctrine. Can an advertiser escape TM infringement by relying on the first sale doctrine? • 4.“Typo keywords”. Do the answers to the foregoing questions also apply for keywords in which the trade mark is deliberately reproduced with minor spelling mistakes ? • 5. Unfair competition. If there’s no TM use, can a TM owner invoke unfair competition pursuant to § 5-5 of the Directive?

  6. Keyword Advertising: possible TM use

  7. Overview 08/09: selected key cases EU + US Europe • 3 June 08: Google v LouisVuitton (C- 236/08) Google v Viaticum (C-237/08) Google v CNRRH (C-238/08) • 26 June 08: BergSpechte v G. Guni (C- 278/08) • 17 Dec 08: Portakabin v Primakabin (C- 558/08) • 22 Jan 09: Bananabay (I ZR 125/07)

  8. Overview 08/09: selected key cases EU + US United States • 18 June 08: Finance Express v Nowcom (C.D.Cal, 07-01225) • 1 Aug 08: Hysitron v MTS (D. Minn., 07-01533) • 27 March 09: Hearts on Fire v Blue Nile (D. Mass, 08-11053) • 3 April 09: Rescuecom v Google (2nd Cir, 06-4881)

  9. Re. infringement by advertisers: Google v CNRRH BergSpechte v G. Guni Portakabin v Primakabin Bananabay *** Fin. Express v Nowcom Hysitron v MTS Hearts on Fire v Blue Nile Re. infringement by search engines: Google v Louis Vuitton Google v Viaticum Google v CNRRH *** Rescuecom v Google Overview (2): relevance re. defendants

  10. TM Infringement Three issues: 1. Use in commerce 2.A Likelihood of confusion 2.B Dilution 3. Defenses

  11. (1) Establishing ‘use’

  12. (2a) “Likelihood of confusion”

  13. (3) Defenses - selection

  14. Evaluation Towards ‘sustainable’ (and profitable) keyword advertising • More clear lay-out • Drop “Suggestion Tool” for third party TM’s • Consistent uniform complaint policies • “Towards best practices” ?

  15. Any questions ? • alexander.tsoutsanis@dlapiper.com

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