Monday 8 January 2007

Trademarked Keywords Don't Lead to Confused Consumers: J.G. Wentworth SSC Ltd v. Settlement Funding LLC

Another court has ruled in favor of the advertiser in a keyword/trademark violation lawsuit.

In the case, J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007) (Opinion in PDF format), the court for the Eastern District of Pennsylvania ruled that the defendant's use of the plaintiff's trademarks as keywords for Google AdWords advertisements and in the keywords meta tags of their web sites did not violate the plaintiff's trademark rights. The court dismissed the case because it believed the defendant's use of the trademarks "create[d] no likelihood of confusion as a matter of law."

However, although the court dismissed the case, in its opinion the court did hold that the "defendant’s participation in Google’s AdWords program and defendant’s incorporation of plaintiff’s marks in its keyword meta tags constitute trademark use under the Lanham Act."

In other words, in contrast to some court rulings, this court ruled that using trademarked terms as AdWords and meta-tag keywords meets the "use in commerce" requirment of a trademark violation despite the fact that the defendant's use of the marks was "invisible to potential consumers" and therefore did not actually directly identify any goods or services.

Interestingly, their very invisibility really underpinned the court's rationale for its finding that there was no likelihood of consumer confusion because the trademarks themselves appeared nowhere in the defendant's advertisements and also did not appear on the defendant's web sites. In addition, the court stated the very nature of search engine results precluded such a finding:

Due to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant’s services, goods, advertisements, links or websites for those of plaintiff.

The court's opinion (PDF) is (mostly) very readable, even for non-lawyers, and thoroughly recommended.

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