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Are They the Source of Trademark Infringement?
Academic affiliation: Oklahoma State University
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Today the internet is the source of a quick, free reference guide, which can find results on any topic one may choose. However, how reliable are the first few sources that are found? Are they exactly what was searched for? These search engines have begun to market their abilities to lead consumers to specific e-commerce locales, which bends the line between their "results" and their "advertisements" (Lastowka 143). The laws do not recognize paid placement ads as trademark infringement, therefore, the laws should not be rewritten to enforce the infringement issue.
Claims based on paid placement listings will only be worked out over time because search engines will eventually emerge as the primary source for locating products and information as e-commerce becomes more available. Also, some companies might use another company's name in its metatags in order to appear higher in the search results for that product or information. Early on, this was considered to be unlawful and as trademark infringement, but according to Lastowka he stated that, "notably, no recorded decision ever held a search engine liable for recognizing a Web Site's metatags, despite the fact that all metatag cases involved search engines" (144). After two influential Ninth Circuit Metatag Decisions: Brookfield and Welles, the conclusion was made that a competitor's use of trademarks may be actionable as infringement, and use of trademark in metatags may be allowed if the term is (1) not used in its trademark sense or (2) used to fairly describe the actual contents of a site so that search engines might locate it.
According to the article, "Winning the Search Bidding Wars," by David Pasternack and Kevin Lee, the two men argue that, "when it comes to winning over prospective customers who are seeking what you are selling, you need command of paid-placement search engines such as Overture, Google, FindWhat, and Sprinks, and the price-comparison search engines such as Dealtime, Pricegrabber, and MySimon" (35).
The two authors also assert their three-step campaign method to avoid being a casualty in the battle for customers: (1) Adopt the Right Strategy (2) Use the Right Technology
(3) Regarding Hired Guns (35-36). The article goes on to further explain each campaign strategy in greater detail but the gist that they are trying to get across is that search medias are different from most other online and offline medias: It has a limited yet replenishing inventory (35). This three-step strategy is relevant due to the fact that it describes the means necessary to achieve a high ad placement above search results. If these advertising strategies are followed, Pasternack and Lee claim the ad will emerge victorious in the online battlefield for paid placement listings. "Winning the Search Bidding Wars" further explains that, "the moment a visitor completes a search, the opportunity to capture that searcher is gone; either you got that click, or your competition did" (Pasternack and Lee 35). The competition is high when it comes to placing a paid-placement above search results, because the more money spent on a listing, the better chance the site will have of being placed high above common search results. But other companies can and are continuously "out buying" each other in order to get their business or information out to its visitors.
The question presented in the article by Lastowka, namely, "can search engines freely sell placements in search results for terms that are protected as trademarks?" has never been answered since it is still being debated. Prior cases have explored the issue of trademarks and search engines in some detail and suggest that paid placement search engines may be vulnerable to legal attack (143). All the search engines on the internet depend on these paid placement listings in order to produce their income. Companies are paying high priced dollars in order to see their site placed above the search result links, especially on pages that are often sought after by popular keyed phrase searches. Moreover, the laws concerning the issue of search engines and paid placements should not be rewritten since the online industry is rapidly increasing everyday. Setting up ad listings above search results is a simple part of the world of business in which companies use to increase their number of visitors, which ultimately increases their revenue. But whatever the ultimate shape of the law it will have a powerful effect on search engines, their business models, and Internet commerce.
A second argument that relates to search engines is the use of banner advertisements. These keyed banner advertisements are an advertisement that is displayed only alongside the results for certain search terms. A prime example Lastowka mentioned was the case, Playboy vs. Netscape, in which Playboy brought suit against the Excite and Netscape search engines, alleging trademark infringement and dilution. Playboy lost its case in the end due to the fact that it could not produce evidence that demonstrated that the vast majority of persons searching for "Playboy" are in fact searching for content associated with its trademark. Playboy could not prove that the search engine's sales of the term "Playboy" are made exclusively toward its direct competitors in that market (147). Lastowka made a great analogy to this argument stating that "it is undoubtedly true that a person might search Nike or Apple in an effort to locate the Greek goddess or the fruit, not the footwear or computer companies" (148). In concurrence to his statement, most people do search for certain products or information and obtain results that are far from what they are looking for. An alternative suggestion to this argument is that a free speech argument exists for the search engines. Lastowka observed that, "First Amendment rights are at stake and that a decision for the trademark holders risked 'Internet users…losing their ability to obtain information about words which also happen to be trademarks" (148). Trademark holders should not have say in how the results are listed or organized. If companies are going to pay high prices to have their site ranked high on search results then that it is all that should be said and done. No one else should have the right to intervene or regulate the search result pages. Lastowka finished by saying, "…requiring search engines to police search terms sales against every possibly infringing search term purchase would prove a difficult, perhaps impossible, administrative task" (149).
As search engines become a higher primary source for locating products and information the claims based on paid placement will gradually be worked out. Soon enough, companies will be paying hefty sums to prevent their trademark from being used, and to be ranked high on search lists. Since the laws do not recognize paid placement ads as trademark infringement they should not be rewritten in order to enforce this issue. Companies should be allowed to pay high prices for paid placement listings, even if it does involve them using someone else's name in their metatags, because that is how companies make their money. The more visitors paid placement companies get to visit their site the more money they will make. And the more money companies are willing to pay search engines to advertise their listings, the more money the search engines will make. In sum, the laws regarding trademark infringement should not be rewritten but the ultimate shape of the law will have a powerful effect on search engines and the Internet commerce.
Lastowka, F. Gregory. "Search Engines Under Seige: Do Paid Placement Listings Infringe Trademarks?" Speculations: An Anthology for Reading, Writing, and Research. Ed. Jason Landrum, Matthew Wynn Sivils, Constance Squires. Kendall/Hunt Publishing Co. Dubuque, Iowa, 2003. 141-150.
Pasternack, David, and Kevin Lee. "Winning the Search Bidding Wars." Catalog Age Oct. 2003: 35-36.
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