Copyright Sunday, June 22, 2008 Duncan Bucknell Company
This article was first published in CPA's IP Review, issue 22.
When Google launched its AdWords advertising programme
in 2003, keyword-linked advertising seemed to herald the future
of online advertising. If only it didn't infringe brand
owners' IP Rights in the process, says
Duncan Bucknell
It all seemed to make perfect sense. Companies looking to
ensure their details appeared at the top of a web search
results page simply had to purchase
'pay-per-click' advertising banners that linked
to particular industry-specific search terms. So, for example,
if a consumer was looking to find 'trademark
counsel', the law firm that had sponsored those
keywords with a search engine provider, such as Google or
Yahoo!, would appear next to the actual search results. It
sounds no different from selecting the appropriate keyword
terms as website metatags for your own website. That is, after
all, how search engines work.
And yet the potential for IP infringement has proved immense,
as businesses looking to cash in on their competitors'
goodwill have taken to purchasing trademark-protected terms
(for example, the brand or product names of their competitors)
as part of their sponsored keyword triggers in order to divert
some of the potential customers of their competitors to their
own websites. Worse still, say brand owners, Google and its
peers have chosen to turn a blind eye.
Trademark owners have started to protest, filing lawsuits
claiming trademark infringement, unfair competition, and
trademark dilution. To date, Google, AOL's Netscape
search engine, Yahoo! and Excite have all been sued for keyword
infringement, with mixed results. Most jurisdictions are clear
that trademark infringement exists if a company uses another
company's trademarks as metatags on its own website,
but they are divided as to whether the use of trademarks in
keyword-linked advertising is trademark infringement or simply
a fair means of competition.
France has already ruled that in 'some'
circumstances it does count as infringement, but UK courts have
found the opposite to be true: in their minds the sponsored ads
are clearly labelled as such, so the potential for consumer
confusion (necessary to prove the common law tort of passing
off) has been adequately reduced.
Google, for its part, argues that one of the critical steps in
effective advertising is placing the ad where interested
consumers may see it. It is not to blame, it suggests, if
companies nominate the brand names of their competitors as
search terms: 'As a provider of space for
advertisements, we cannot arbitrate trademark disputes between
advertisers and trademark owners... We encourage trademark
owners to resolve their disputes directly with our advertisers,
particularly because the advertisers may have similar
advertisements on other sites.'
It has good reason to fight its corner: Google receives the majority of its revenue through pay-per-click keyword advertising. Prior to 2004, it denied advertisers the ability to link their ads to the trademarks of others; however, it modified its ad-linking policy in January 2007 to allow advertisers to bid on the chance to have their ads associated with any keyword, even if those keywords were trademarks owned by a competitor. That is not to say that Google is allowing unbridled use of trademarks, as the company still 'reviews trademark complaints that relate to the content of the keyword ads, just not the keywords purchased to trigger the ads'. But that is small comfort to brand owners.
An online scorecard
Faced with such legal uncertainty, it's no surprise
that brand owners are unsure of how best to face this new
challenge. Few have time to check search results for their
brand names on all search engines in all jurisdictions in order
to check the sponsored ads that result.
This is a perfect example of the issues that led IP strategist
Duncan Bucknell to invent his online 'global IP
scorecards' – a website, e-mail and RSS feed
which allow anyone to view (and contribute) the latest
developments in a range of global IP issues, including the
infringing use of Internet keywords.
'The scorecards (found at
http://www.duncanbucknell.com/scorecards), are simple to
navigate and work on a straightforward process,' says
Duncan. 'But it is also a joint effort and relies on
input from the global IP community. The scorecards are set up
like a wiki (a piece of software that allows users to
collaboratively create, edit, link and organise content for
reference), so anyone can add information to them or even
suggest new scorecards. The scorecards are organised under
three areas important to the global IP landscape: key issues
(such as paid keywords), products and companies. The idea is to
build the knowledge base collaboratively.'
The global nature of the Internet lends itself perfectly to
this kind of initiative. 'The online keyword scorecard
tackles one of the most controversial topics in IP: the
invisible use of another's brand to attract hits on an
unrelated site. The controversy often centres around the fact
that use of the brand, as a paid keyword, which is not readily
visible to people, is not deemed by some courts to be "use
in commerce", or is not "use as a
trademark".'
Consumers recognise trademark-protected brand names, and react
to that recognition, as a result of corporate investment in
that name. With keyword ads, the computer undertakes the
recognition step and presents the results to the consumer, who
may assume that those results are associated with the brand.
For brand owners on the receiving end of a competitor's
paid keyword strategy, Duncan argues that by gathering evidence
of actual deception of customers, companies can, depending on
the jurisdiction, add anti-trust and anti-competition law suits
as part of their response.
Samsung, Yahoo! and Microsoft are just three of the bluechip
companies whose activities are covered in scorecards on the
site, which allow users to search by territory for updates on
relevant IP law. And, for those wishing to update the website,
each scorecard has a 'contribute' button, which
allows the user to add relevant updates (such as new
legislation or legal rulings) pertinent to that issue, product
or company.
This information is obviously invaluable in that it can alert
companies to issues concerning the infringement of their
trademarks. It might also help to educate on how best to
protect certain parts of an IP portfolio. 'With the
help of the IP community, the scorecards can help businesses
large and small to track and develop strategic responses to
these important issues,' says Duncan.
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