Google declines liability of unauthorized trademark use in new policy

Google has changed its Trademark Complaint Procedure to allow advertisers in the United States and Canada to purchase the right to have their advertisements appear in search results following search queries containing certain keywords, even if these keywords are trademarks owned by other parties. Google's previous Trademark Complaint Procedure allowed a trademark owner to prevent its competitors from purchasing rights to certain trademarked keywords. Google now plans only to review trademark complaints relating to the unauthorized use of trademarks in the text appearing in sponsored links.

Google justifies its policy as follows:

• Its liability for infringement should be analogized to liability in the world of print media. There, the publisher of an ad that infringes the trademarks of a competitor is generally held not to be liable for infringement in the absence of evidence of active engagement in the creation of the infringing materials.
  
  
• The use of a trademark as a keyword will not create consumer confusion as to the source of the goods - the touchstone of infringement analysis in the United States and Canada - as the users never (i) see which keywords an advertiser has bought, and (ii) know what keyword triggers any particular advertisement.
  
  
• The process of displaying competitors' ads in response to a trademark keyword search provides consumers with a broader base of comparison, thereby enriching consumer choice.
  
  
• Search results for the keyword are not affected by the unauthorized use of trademarks as keywords; the use of the trademarked term only causes sponsored links to show up alongside the search results.

Decisions of the US courts who have grappled with this semantic issue seem to indicate that allowing the display of the more aggressive pop-up and banner advertising triggered by a trademark keyword would constitute infringement and subject the publisher to liability (see for instance Keying has potential to infringe and dilute marks, rules Ninth Circuit and WhenU floored by pop-up ad u-turn).

Google will, however, continue to police (i) the text of the sponsored links ads for unauthorized trademark use upon request, as this text is fully transparent to the user and could arguably cause consumer confusion, and (ii) keywords for unauthorized use of trademarks in countries other than the United States and Canada, due to differing approaches to infringement in those jurisdictions.

Lara Holzman and Sarah Hsia, Alston & Bird LLP, New York