IP Law Bulletin

What is the key to keywords?

Let’s see if we can pick the lock (last play on words, I promise!) about whether and when it is OK for you to buy someone else’s trademark (or something close to it) as a keyword in order to attract eyeballs to your web site.

Can you even do this legally? Answer: probably yes, with one major proviso and one minor one. The minor one is that you should check with your lawyer because different courts around the country are still grappling with this issue and you might be living where the courts have taken no, or a dim, view of keyword-buying.

The major proviso is to make sure the purchased keyword does not appear misleadingly in the text of your sponsored link(s) (or your own web pages). In other words, “invisible” use of someone else’s trademark as a keyword is permissible, but the trademark cannot be visible in your sponsored link(s) yielded by the search. There’s a rationale for such a bright-line rule that permits use of a competitor’s trademark as a keyword but prohibits its use in your sponsored link. It derives from (a) human nature, and (b) modern technology.

As to human nature, we (humans) are lazy. We love shortcuts and abbreviations. How else do you explain the word “thingamajig?” If you want to buy a pocket-size telecommunication device that doubles, triples, quadruples, etc., as a camera, music player, GPS, television, calculator, etc., etc., you’re not going to fill in all the “etc.’s” and go looking for something that takes a paragraph to describe. Instead, your lazy mind is going to cast around for something much shorter…I’ve got it…iPHONE!

As for life in The Digital Millennium, you’re going to go shopping online and start with a search.

So into the search field goes “iPHONE” as your search term.

Steve Jobs already sells a lot of iPhones. Yeah, he’s a genius, and he’s entitled to the fruits of his labor. But let’s say all use by third parties of iPHONE (or any variant) as a keyword were illegal.

Then the lazy online shopper would land in a sponsored link universe that was all Apple Computer all the time. The average human shopper (this is based on this writer’s self-knowledge) would say, “OK, that’s it. I guess I’ll buy an iPhone.” Steve Jobs would quickly figure this out (remember, he’s a genius) and the price of an iPhone would move (I’ll let you figure out in which direction). In other words, the pro-competition, anti-monopoly, benefit of keyword-buying outweighs the burden on a trademark owner of the free and ephemeral “bask in reflected glory” that purchased keywords afford to the owner’s competitors.

Or at least it’s defensible to make this analysis and reach this conclusion. “Old law” and “new technology” can be ships that pass in, or ignorant armies that clash by, night. Why not try to reconcile the old and the new by the light of day?

Consider a homo sapiens (as opposed to digital) analogy. You walk into a Wal-Mart store looking for blue jeans and tell the greeter, “I need some Levi’s.” If you think of the greeter as your corporeal search engine, you’ve given him “Levi’s” as your keyword. Does this mean that the greeter has to take you directly to the shelves that display only LEVI STRAUSS & CO. dungarees, or, if Wal-Mart doesn’t carry Levi’s, that he has to escort you back out to the parking lot and tell you to look elsewhere?

Would he be barred from taking you down the aisles where jeans from LEE, WRANGLER, GUESS, EDDIE BAUER, etc., were on sale?

Good Lord, you could end up wearing khakis for the rest of your life!

For a recent example of these issues, see the District of Utah’s December, 2010 decision in 1-800 Contacts, Inc. v. Lens.com, Inc.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.