2. Keying Up Keywords The Role of Intellectual Property in Keyword Searching R ONALD D. C OLEMAN

3. First Principles The First Amendment – Congress shall make no law… Axiom: Trademark rights are a limitation on speech (expression) Commercial speech is also SPEECH © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

4. First Principles [ W]e cannot indulge the facile assumption that one can forbid particular words without also running a substantial risk of suppressing ideas in the process. Cohen v. California, 403 U.S. 15, 26 (1971) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

5. THE ANCIENT TEST FOR TRADEMARK INFRINGEMENT vel non LIKELIHOOD OF CONFUSION © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

6. PROCEED CAUTIOUSLY Courts are not to stake out new territory in the trademark domain at the expense of curtailing the ability of a speaker to communicate his message. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

7. WEIGH EFFECT ON SPEECH In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of expression may tip the scales against trademark protection. Silverman v. CBS, Inc., 870 F.2d 40, 49 (2d Cir. 1989) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

8. BE RELUCTANT TO USE FORCE Courts are to be particularly reluctant to issue an injunction, even in a Lanham Act case, where there are delicate questions implicating First Amendment rights. Stop Olympic Prison v. United States Olympic Committee, 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

9. TRADEMARK NOT A DEVICE TO SILENCE DISSENT A trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion, and is forbidden. United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied, 118 S. Ct. 1521 (1998) L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 31-33 (1st Cir.), cert. denied, 483 U.S. 1013 (1987) Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-03 n.8 (8th Cir 1987) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

10. THE TEST FOR TRADEMARK INFRINGEMENT LIKELIHOOD OF CONFUSION ©Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

11. INITIAL INTEREST CONFUSION As of 1998, it could fairly be said that: Initial interest confusion has been applied only where a potential purchaser is initially confused such that the senior seller may be precluded from further consideration by the buyer. Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990)(emphasis added). © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

12. The consumer as idiot – Minimum level of discernment and intelligence on the part of consumers was presumed. – Yet consumers were expected to distinguish between the use of a mark to draw attention, and the use of a mark to indicate source. Stop the Olympic Prison v. United States Olympic Comm., 489 F. Supp. 1112 (S.D.N.Y. 1980); Girl Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969). © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

13. INITIAL INTEREST CONFUSION You've probably never heard of the Initial Interest Confusion Doctrine. You probably don't want to hear about it now. You probably should turn the page. But let's face it, even reading this drivel is better than drafting that motion for summary judgment that's hanging over your head. So sit back and relax. It's almost quitting time anyway. JONATHAN PINK July 6, 2005; Found at http://www.ipfrontline.com/depts/article.asp?id= 4697&deptid=4

14. Second Circuit 2010 Google, supported by amici, argues that 1-800 suggests that the inclusion of a trademark in an internal computer directory cannot constitute trademark use. Several district court decisions in this Circuit appear to have reached this conclusion... This over-reads the 1-800 decision. First, regardless of whether Googles use of Rescuecoms mark in its internal search algorithm could constitute an actionable trademark use, Googles recommendation and sale of Rescuecoms mark to its advertising customers are not internal uses. Furthermore... [w]e did not imply in 1-800 that an alleged infringers use of a trademark in an internal software program insulates the alleged infringer from a charge of infringement, no matter how likely the use is to cause confusion in the marketplace. If we were to adopt Google and its amicis argument, the operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion. This is surely neither within the intention nor the letter of the Lanham Act. Keyword advertising MAY INDEED BE trademark use under the Lanham Act Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. April 3, 2009) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP INITIAL INTEREST CONFUSION

15. Second Circuit What Rescuecom alleges is that by the manner of Googles display of sponsored links of competing brands in response to a search for Rescuecoms brand name (which fails adequately to identify the sponsored link as an advertisement, rather than a relevant search result), Google creates a likelihood of consumer confusion as to trademarks. If the searcher sees a different brand name as the top entry in response to the search for Rescuecom, the searcher is likely to believe mistakenly that the different name which appears is affiliated with the brand name sought in the search and will not suspect, because the fact is not adequately signaled by Googles presentation, that this is not the most relevant response to the search. Whether Googles actual practice is in fact benign or confusing is not for us to judge at this time. We consider at the 12(b)(6) stage only what is alleged in the Complaint. We conclude that the district court was mistaken in believing that our precedent in 1-800 requires dismissal. Keyword advertising MAY INDEED BE trademark use under the Lanham Act Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. April 3, 2009) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP INITIAL INTEREST CONFUSION

16. Affiliation If the searcher sees a different brand name as the top entry in response to the search for Rescuecom, the searcher is likely to believe mistakenly that the different name which appears is affiliated with the brand name sought in the search and will not suspect, because the fact is not adequately signaled by Googles presentation, that this is not the most relevant response to the search. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. April 3, 2009) In 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of purchasers as to the source of origin of such goods and services. In 1989 Lanham Act Section 43(a) was amended to describe as unfair competition any act causing a likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association or approval. © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

17. GOOGLE search for term AUSTRALIAN GOLD

18. Likely to cause confusion Whether Googles actual practice is in fact benign or confusing is not for us to judge at this time. We consider at the 12(b)(6) stage only what is alleged in the Complaint. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. April 3, 2009) At a minimum, a plaintiff alleging initial interest confusion on the Internet should be required to show that consumers, when presented with a choice that may potentially divert them, (1) are likely to mistake the mark holder as the source of the alternative choice; and (2) have actually been diverted. This evaluation must be made on a choice-by- choice (in this case, an ad-by-ad) basis because consumers will respond to each ad differently depending on the contents of the ad. With respect to the former requirement, this is exactly the conclusion that Judge Berzon recently arrived at after reexamining the Brookfield case, see Playboy v. Netscape, 354 F.3d at 1034-36 (Berzon, J., concurring), and simply recapitulates this Courts requirement that there have been a misleading credibility transfer to the defendant, see Mobil Oil v. Pegasus, 818 F.2d at 259 (defendant gained crucial credibility during the initial phases of a deal by using confusingly similar mark). The second requirement cabins the initial interest confusion doctrine, already unmoored from the traditional question of product source confusion (as opposed to advertisement source confusion), to situations where empirical evidence of harm is presented. In this situation, diversion is being used as a proxy for harm caused by a likelihood of confusion. Thus, as a proxy, the diversion requirement needs some rigorous proof if traditional standards are to be discarded. After all, in the absence of evidence that any shopper has actually been diverted, trademark law should not lightly rush in to regulate market behavior. EFF Amicus Brief urging reversal in 1-800 Contacts v. WhenU.com © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP INITIAL INTEREST CONFUSION

19. Likely to cause confusion So what DID the Second Circuit decide in 1-800 Contacts? Exemplifying the conceptual difficulty that inheres in this issue, the district courts decision suggests that the crux of WhenUs wrongdoing -- and the primary basis for the district courts finding of use -- is WhenUs alleged effort to capitalize on a C-users specific attempt to access the 1-800 website. As the court explained it, WhenU.com is doing far more than merely displaying Plaintiffs mark. WhenUs advertisements are delivered to a SaveNow user when the user directly accesses Plaintiffs website--thus allowing Defendant Vision Direct to profit from the goodwill and reputation in Plaintiffs website that led the user to access Plaintiffs website in the first place. Absent improper use of 1-800s trademark, however, such conduct does not violate the Lanham Act. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001); Kellogg Co. v. Natl Biscuit Co., 305 U.S. 111, 122 (1938) (holding that Kelloggs sharing in the goodwill of the unprotected Shredded Wheat market was not unfair); see also William P. Kratzke, Normative Economic Analysis of Trademark Law, 21 Memphis St. U. L. Rev. 19 199, 223 (1991) (criticizing importation into trademark law of unjust enrichment and free riding theories based on a trademark holders goodwill). Indeed, it is routine for vendors to seek specific product placement in retail stores precisely to capitalize on their competitors name recognition.... 1-800 Contacts, Inc. v. Whenu.Com, Inc., 414 F.3d 400 (2d Cir. 2005) © Ronald D. Coleman WWW.LIKELIHOODOFCONFUSION.COM Goetz Fitzpatrick LLP

20. GOOGLE search for term AUSTRALIAN GOLD INITIAL INTEREST CONFUSION

22. On 22 September 2009, the long anticipated Opinion in the three joined Google France references to the European Court of Justice (ECJ) was published. This is the first judicial comment from the supervising courts in Luxembourg on the legality of paid for 'keyword' advertising and a negative outcome could force search engines such as Google to dramatically alter the way they do business. In an Opinion which will disappoint brand owners, Advocate General Poiares Maduro concludes that Google France should not be found guilty of trade mark infringement by offering trade marks for sale as Adwords. He also concludes that there is no European provision for contributory infringement and therefore, search engines, such as Google cannot be found liable under the harmonised European trade mark laws. However, they may be vulnerable to an action for contributory infringement under national laws of liability. Furthermore, in the AG's view, Google would not be able to defend itself from liability under national law by relying on the hosting safe harbour contained in Article 14 of the E-Commerce Directive. In respect of the potential liability of advertisers, the AG was of the view that the purchasing of trade marks as keywords is not trade mark infringement, on the basis that it is not use 'in the course of trade'. This was because it was a private act between the advertiser and the search engine operator (Google) and not an act with a view to commercial activity. Keyword advertising - Adwords opinion favours Google

23. Thanks for having me! @roncoleman