Online reseller keyword advertising responsibilities 101! online reseller advertising trademark liability arises when advertisers or resellers to resell or facilitate the resale of branded products javaman bows with the trademark owner or when advertisers compare their products to their competition by reference to a protected trademark in their ads online. however, under the first sale doctrine, the right to the trademark owner will not extend past the first sale of the goods bearing its mark. any distributor who resells trademarked goods is not liable for trademark infringement as long as the trademarked goods it sells are genuine (polymer technology corp.
V. mimran (1992)). in essence, the first sale doctrine protects the secondary resale market. trademark owners may assert their claim to the trademark in advertising, including claims for infringement, contributory infringement and dilution. trademark javaman bows infringement occurs when a person uses another mark or a similar mark in a way that is likely to confuse consumers. dilution occurs when a person uses a trademark that is identical, or nearly identical, to a famous mark in a manner likely to tarnish the mark or blur its distinctiveness. mark kay inc. v. weber, 2008, which i summarize below, the defendant sold mary kay goods on the secondary market as resellers.
Javaman bows – Personal and Advertising Liability
The court noted that the first sale doctrine does not protect the people selling trademarked goods is quite different then sold by the owner of the trademark. (mary kay argued that the goods sold by the defendants were not true since they were past their expiration date). the court relied on a previous ruling by warner-lambert co. v northside development corp. (1996) ,. where the holder of the trademark only had to demonstrate: a) that it is legitimate established quality control procedures; b) that it abided procedures; and c) non-conforming re-sales diminish the value of the mark.
While the courts have applied the first sale doctrine inconsistently, a framework has at least begun to build that provides javaman bows guidance to the internet retailer. recent court decisions have helped clarify what activities, or lack thereof, is considered a violation (or contributory infringement) for internet reseller of goods in comparative advertising and even for third party service providers. flee the fair use defense nominative fair use defense only applies when you so much as a protected trademark only required to recognize another or good business. in terms of internet resellers, nominative fair use doctrine permits a reseller of branded goods to use the brand name in its advertising (pebble beach co.
V. tour 18 limited (1998)). however, the right of fair use is not unlimited, and any nominative fair use can not suggest “collaboration, sponsorship, or endorsement of the holder mark.” fair use applies only when you use so much of the mark owner if necessary to identify the product and nothing more. the cases are summarized below shows how this defense has been applied recently in the context of keyword advertising. keyword advertising trademark infringement if you use keywords that are registered trademark of the third party in any internet advertising, or when optimizing your website, you can potentially liable for trademark infringement keyword.
The problem, as in many other areas of internet law, that is the issue and any potential liability for keyword trademark infringement is far from clear. trademark law is interpreted and applied inconsistently by the courts. specifically, the court was inconsistent in how they have analyzed the two main elements of trademark infringement: (1) whether the sale of a trademarked term as a keyword is a “use in commerce” as defined in under the lanham act and (2) if the use of a trademark as a keyword is likely to cause consumer confusion.
Using keyword commerce in the same kind of trademark claims stemming from keyword advertising requires “use in commerce.” this means that a person must use the allegedly infringing or diluting mark as a keyword related to the sale, distribution, or advertising of goods or services. most courts hold that the sale of a keyword that is also a trademark qualifies as a trademark “use in commerce.” the decision involving google (2009) is the pivotal case on this issue. the federal district court (2nd circuit) held that a computer program generating pop-up advertising based on search terms typed into a browser is not a use in commerce.
The appellate court reversed this decision and found that the display, offer and sale of a trademark of google adwords and other keyword advertisers javaman bows are in fact a “use in commerce.” lesson: many other courts following the decision in google lawsuit now probably find that your purchase of a keyword which happens to be a protected trademark qualifies as a “use in commerce.” this means you are not automatically liable for trademark infringement by purchasing and using a keyword that is a trademark. this means that the use in commerce element of trademark infringement is probably satisfied and any claim will not only be left to die for failing to satisfy the single element.
Keywords causing confusion consumer-the initial interest confusion doctrine it remains unresolved whether the use of a registered trademark in keyword advertising creates a likelihood of confusion. many plaintiffs trademark infringement action involving keyword advertising is often attempt to address the possibility of confusion element by relying on the initial interest confusion doctrine. under this doctrine, even if the consumer does not ultimately confused, a plaintiff may suffer damage because consumers are initially confused and therefore lead to competitor websites of the plaintiff as a result of the first confusion. for example, suppose another business to buy competitor’s trademark as a keyword and then use it on a pay-per-click advertising campaign.
The consumer clicks on the link to the ad and is directed to the website of that company, not the website owner of the trademark. while browsing the website company, the customer buys a product that competes directly with companies that are trademarked keywords used to sell competing products. the customer is likely to be confused when the purchase is ultimately made. however, the initial confusion led consumer website competitor because the competitor used the trademark of the original company. the result is a lost sale for the holder of the trademark because it has control over its trademark.
Some courts hold that the initial interest confusion doctrine may not be applicable to e-commerce. they argued that the internet users are very aware of the nature of pay per click keyword advertising and is free to hit the back button on their browser. however, other courts have actually held initial interest confusion d can form the basis of a claim of trademark infringement. hearts on fire company, llc v. blue nile, inc. is one example. a federal district court in massachusetts found that blue nile’s purchase of “hearts on fire” trademark as a keyword that triggered advertisement blue nile view, including search engine organic results, amounted to trademark infringement.
Violations are based on the initial interest confusion. case summary the following summary cases diagnosed three important cases involving keyword advertising. each helped form the guidelines for internet retailers, including resellers, and service providers regarding keyword advertising. the main point to take away from each case included in the “lessons” after each paragraph summary. lesson # 1: no trademark infringement for internet service provider! tiffany (nj) inc. & tiffany and company vs. ebay, inc. (2004). this case serves as an example of an analysis of direct and contributory trademark infringement with internet service providers, such as auction sites.
Tiffany sued ebay in 2004 in a new york federal district court claiming that trademark law required ebay to track goods sold on its site for counterfeits. in particular, tiffany argued ebay was liable for contributory trademark infringement on ebay for lack of quality control in policing fake tiffany items sold through ebay’s site. tiffany also claimed that ebay’s purchase of advertisements on the internet with the tiffany trademark constituted direct trademark infringement. finally, tiffany claimed that the sale of counterfeit goods on the site amounted to false advertising. the district court ruled in july 2008 that ebay’s use of tiffany trademark in the list of its products is a protected fair use and that ebay had no such duty to monitor every single good for potential counterfeiting.
Main points: a third party provider, such as an auction site, is not liable for contributory infringement unless the service provider will continue to provide its services to a particular individual or business to whom it knows, or has reason to know , is committed violations; the court left open the issue of whether ebay’s ad amounted to false advertising. thus, it can be an avenue for future use complaining attack service provider. of course, a different court of law may not comply with the decision, or can not follow the specific issue decided.
However, we can at least make the key points from this case and use it as a solid guide, such as the future courts will; this court is one of the first, if not the first court to apply the normative use defense to keyword javaman bows advertising. reasoning of the court behind their decision indicates that retailers and members of asserting a fair use defense may be able to turn this decision as authority; court decision extended nominative fair use defense keyword trigger. of significant note is that one of ebay ads in question is triggered by the keyword “tiffany” and included “tiffany” in the ad copy.
(the ruling does not address what happens if the trademark acts as a trigger but does not show in the ad copy). in the end, the main lesson is likely to be found in the following direct quotes made by the court, “contributory liability may arise when a defendant (as is ebay here) made aware that there was a violation of his site but ( unlike ebay here) ignored that fact. “tiffany has sent a cease and desist letter on ebay and ebay will then respond immediately and started filtering content. in november 2010, the us supreme court rejected tiffany’s appeal.
Thus, the decision of the 2nd circuit court of appeals will stand and be powerful law in the lower district court within the circuit and will provide guidance to other district courts. lesson # 2: no trademark infringement for comparative advertising nautilus group inc. vs. icon health & fitness, inc. in a comparative-advertising case, icon health used bowflex trademark of nautilus on a sponsored ad titled “compare bow bowflex.” nautilus bowflex exercise equipment sold and sold defendant crossbow equipment. nautilus filed suit in 2002 alleging patent infringement and trademark infringement, false designation of origin, and federal and state dilution, among other claims.
The court ruled that use of the mark icon health does not infringe or dilute nautilus’ mark. the following description of the title of icon health’s ad was viewed by the court only as an invitation to compare the two products, and to summarize the advantages of icon health products compared by nautilus bowflex. the court granted defendant’s motion for summary judgment (dismissal) to the plaintiff state and federal dilution claim relating to the mark crossbow defendant and defendant to buy the keyword “bowflex information.” basically, the court rejected the defendant’s argument that nautilus “actually used the bowflex trademark.
” in terms of keyword advertising, the court initially stated that it is clear that the defendant purchased the keyword “bowflex” only in the context of comparative advertising. in particular, the search for the keyword returned sponsored link titled “compare bow bowflex.” the text following the title “asked users to compare the two machines, and summarized what time the machine has to offer.” the court also noted that the url is listed as “http://www.crossbow.com.” the court, which cited the ninth circuit decision in playboy v. welles to reach his decision, “explaining that such uses do not create an improper relationship between a mark and a new product, but only determine the product holder of the trademark.
” main point: comparative advertising using protected trademarks as keywords is allowed as long as it is done fairly and without creating any kind of consumer confusion. lesson # 3: possible trademark infringement by internet reseller mary kay, inc. v. weber (2008). perhaps the most informative in this case was a recent case where the supplier mary kay beauty sued an internet reseller of mary kay products for trademark infringement. in this case, the fair use defense does not apply and the internet reseller is found liable for trademark infringement. mary kay is very illustrative case of resellers since the resellers are actually found liable for infringement even though it is not intended to mislead or confuse its customers.
Website defendant carried out the following headings :. “the company has been founded by former mary kay consultant helping consultants to liquidate their inventory we offer the mary kay products at a great discount most of our items are discontinued, beyond shelf life or expired., which is why we can offer you such great prices. “defendants began selling inventory on ebay via the website” marykay1stop. ” mary kay has demanded that the defendants stop its use mary kay trademark as part of the name of the store and remove all copyrighted mary kay picture. defendants removed the copyrighted material and changed the name of the ebay store “touch of pink”.
They also created a website to “http://www.touchofpinkcosmetics.com” by which they will continue to sell mary kay products. they are also still used the name mary kay at the site to identify the products sold. mary kay eventually sued the operator of the website for trademark infringement, among other claims. keyword ad triggered the court examined whether text ads triggered by keywords sponsored defendant wrongly suggested or sponsorship relationship with mary kay. read the subject of the ad: “mary kay 50% off sale: free shipping on orders over $ 100 get 50% off, fast shipping .
..” the court initially commented that the wording ” mary kay sale 50% off, “” suggests that in may, for hosting the sale. “the court then compared the text to other ads that are found not to suggest any affiliation or sponsorship by previous courts. one of the court, brookfield communications v. west coast entertainment (9th circuit) described a hypothetical banner ads deemed permissible. banner ad contains the following text: “why pay for moviebuff when you can get the same thing here for free?” mary kay court stated that if the ad simply stated “moviebuff 50% off,” the line between the advertised and the service mark “will be much less clear.