Trademark Protection for Keywords

In class we discussed how competitors can advertise on search results of other’s trademarked terms (i.e. it would be akin to searching for Nike running shoes with the top result being a suggested link for Addidas shoes. It would be a paid ad by Adidas). We discussed how it is not illegal to do this and as such trademarks for keywords do not exist. However, my IP Survey class discussed this issue with a case called Playboy Enterprises, Inc. v Netscape Communications Corp.. In it, a competitor adult site paid for ads in search results for trademark protected keywords “playboy” and “playmate”. This meant when someone searched these terms on Netscape, their banner ads would appear. Playboy sued claiming trademark infringement for initial interest confusion. The court found that, “‘Keying’ constitutes initial interest confusion (trademark infringement) where the search engine uses trademarks in the keying lists to generate banner advertisements and such banner advertisements are not labeled or identified.” Thus, when ads are based on the “keying” of a competitor’s term, it is not legal unless the ad is sufficiently labelled as a competitor as to not confuse the customer. I found this interesting as it solves several of the “keying” issues with trademark that the class expressed concerns about.

As a personal test, I attempted to find an example of getting a competitor’s ad while keying a trademarked term of a rival product. On Google I was unable to do so. As such, the fears raised over being unable to protect trademark with keywords may be overstated.

The case can be found here:

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