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ABSTRACT: The issue of whether search engine proprietors can sell the rights to use registered trademarks as keywords to trigger sponsored advertisements to a mark owner's competitors without violating the Lanham Act is unsettled. Recent cases demonstrate conflicting outcomes and policy rationales in this area, but in combination, the cases offer a potentially fair resolution to the infringement question. A useful framework for resolving these cases and a fair compromise for both search engine proprietors and trademark owners emerges from combining the narrow view of trademark use articulated in Rescue.com Corp. v. Google, Inc., 456 F. Supp. 2d 393 (N.D.N.Y. 2006) with the court's analysis of contributory trademark infringement and the distinction it draws between the search engine's advertising methods and displayed advertising content, as suggested in 800-JR Cigar, Inc. v. Goto.com, 437 F. Supp. 2d 273 (D.N.J. 2006).
"Google: Gored in Court and Going Bankrupt, says Good-bye." "Frustrated Trademark Litigator Falters from near-Fatal Heart Attack and Sells his Ferrari to Find His Soul in the Himalayas."1 "Trademark Owners Riot after Controversial Supreme Court Decision Favors Search Engines."2 However unlikely these sensational headlines might be, trademark scholars would agree that a two trillion dollar annual U.S. e-commerce market3 has driven a host of evolving trademark challenges as complex as the technology from which they emerged.4 In particular, Search Engine Optimization ("SEO") technologies, on which corporations spend huge advertising dollars5 for increased Web presence during a consumer's Internet search, have created ongoing conflicts between search engine advertisers and trademark owners.6 These conflicts arise when trademarks are used either within the SEO technology and programming language to trigger contextual advertisements or within the triggered advertisement display itself.7
Although courts addressed some earlier controversial SEO techniques such as metatag and Web page text manipulation8 and pop-up advertising,9 search engines continue to develop new SEO that changes the legal boundaries defined by prior case law. A recent controversial SEO technique used by search engines10 is selling specific keywords, including trademarks, to trigger sponsored advertisements that appear along with the standard search results during a computer user's search for that keyword. This practice, known as keyword-triggered sponsored advertising,11 incenses trademark owners when it displays competitor-sponsored advertisements after their mark is used as a search term.12 In response to...