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VOL. 126 | NO. 63 | Thursday, March 31, 2011

Roundtable Tackles Trademark Infringement

RICHARD J. ALLEY | Special to The Daily News

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The law firm of Baker Donelson Bearman Caldwell & Berkowitz PC will hold a roundtable discussion Thursday on the topic “Use of Competitor’s Trademark in Keyword Advertising: Infringement or Not?”

The event is part of the American Bar Association’s Intellectual Property litigation series.

The subject of keyword advertising is relatively new in the sphere of intellectual property law. According to a New York Times article by David H. Freeman, Google’s pay-per-click advertising program – AdWords – garners the search engine behemoth more than $20 billion per year. The popularity of the program and rampant use by consumers renders it, and others like it, ripe for trademark infringement.

When a consumer searches for a term in a search engine – whether Google, Yahoo, Bing or any other – sponsored links from advertisers’ websites may appear in a section to the right of the page while regular or natural findings to the left.

“When these keywords at issue are generic terms, there are few objections, but when the keywords include trademarks belonging to somebody else, the trademark owner is understandably upset,” said Grady Garrison, intellectual property attorney with Baker Donelson and moderator of the roundtable. “That’s where the real problem comes in, one competitor using the other competitor’s trademarks to get people to his website.”

While no one can own a word, a trademark may be held in connection with goods or services and the courts have grappled with the question of trademark infringement in cases of keyword advertising recently.

And while no definitive decision has been made, it has been shown that for there to be trademark infringement liability, there must be two basic elements: The plaintiff has to show that the defendant has made an unauthorized use of plaintiff’s trademark and has “used the mark in commerce,” and the plaintiff also has to show that the defendant’s use creates a likelihood of confusion.

It’s the likelihood of confusion that creates just that, confusion, and whether or not an end user understands on just what product or service’s website he has landed in a search. In some instances, courts have ruled that whether or not there is confusion depends on the sophistication of the user pertaining to the good or service searched for.

To further muddy the waters, trademark infringement is shaped by federal law and based upon the federal trademark statute, the Lanham Act, and the 11 circuits of federal court around the country have not necessarily agreed in their rulings. The inherent gossamer-like quality of cyberspace itself makes it difficult to locate where a possibly offending website is hosted.

“I’ve chased people in China and Romania that have purchased the keyword of a popular U.S. brand and when I click on that keyword, I’m taken to their site,” he said. “The problem is that so often all the stuff is outside the country, you may have a Romanian website owner who uses a Canadian hosting company that sells goods around the world.”

“In this situation, it’s only going to get more confusing if we don’t get a higher court ruling that consolidates everything under one roof because it does seem to have some varied decisions across the map,” said Bill Parks, attorney with Wyatt, Tarrant & Combs LLP and chairperson of the Memphis Bar Association’s intellectual property and entertainment law section.

Because of the varied decisions on cases concerning keyword advertising, Parks said, roundtable discussions such as this “are very helpful to get the chance to sit down and flesh out what the most recent decisions are and see if we can predict where it’s going to go.”

Grady and colleague Laura Merritt, along with Michael Lafeber with Briggs and Morgan in Pennsylvania, have written the paper that will be used to facilitate this discussion, as well as roundtables on the subject across the country.

The roundtable will be held in the Downtown office of Baker Donelson, 165 Madison Ave., on the 20th floor from noon to 1 p.m. There is no charge for the event, and lunch will be provided. One hour of continuing legal education credit is pending for the event.

RECORD TOTALS DAY WEEK YEAR
PROPERTY SALES 57 280 1,209
MORTGAGES 55 244 916
FORECLOSURE NOTICES 8 52 151
BUILDING PERMITS 158 699 2,751
BANKRUPTCIES 37 157 618
BUSINESS LICENSES 12 77 276
UTILITY CONNECTIONS 0 0 0
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