Another decision considering the issue of trademark "use" in the context of search engine keyword-triggered advertising has just been issued by the federal district court in New Jersey. In Buying for the Home, LLC v. Humble Abode, LLC, et al., --- F.Supp.2d ----, 2006 WL 3000459 (D.N.J. October 20, 2006), the court found that the plaintiff had satisfied the "use" requirement of the Lanham Act. In this case, online furniture retailer Buying for the Home, which does business at "totalbedroom.com" sued a competitor online furniture retailer by the name of Humble Abode, which does business at "humbleabode.com" alleging, among other things, trademark infringement, unfair competition and false advertising.
Buying for the Home asserted that Humble Abode misappropriated its mark TOTAL BEDROOM by causing a sponsored ad to appear next to the natural results on the Google search engine when a computer user enters the search phrase "total bedroom." In contrast to some previous keyword-triggered advertising cases, the ad in this case did not display the TOTAL BEDROOM mark in text.
Defendant Humble Abode moved for summary judgment. First, it disputed the allegation that it had actually purchased "total bedroom" as a keyword phrase, but the court found a genuine issue of material fact on this point. Next, the court examined the "use" issue in light of a number of other 2006 court decisions, i.e., the Edina Realty Inc. v. THEMLSOnline.com, No. 04-4371, 2006 WL 737064 (D. Minn. March 20, 2006), Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402(S.D.N.Y. 2006), 800- JR-Cigar, Inc. v. GoTo.com, Inc., 437 F. Supp. 2d 273 (D.N.J. 2006), and Rescuecom Corp. v. Google, Inc., ---F. Supp. 2d ----, 2006 WL 2811711 (N.D.N.Y. September 28, 2006).
The court stated that it was "mindful of the challenges that sometime arise in applying existing legal principles in the context of new technologies." Ultimately, it agreed with the reasoning set forth in Edina Realty; in addition, it found that Buying for the Home had satisfied the "use" requirement of the Lanham Act, citing Sections 43(a) and 45, in that Humble Abode’s alleged use was "in commerce" and was "in connection with any goods or services." Specifically (and interestingly), the court believed that it was significant that the ads in question included a link and access to Humble Abode’s website, through which the user could purchase goods that were directly competitive with the plaintiff’s goods. This factor was important to the court’s holding that the alleged purchase of the keyword was a commercial transaction that occurred "in commerce." The fact that the TOTAL BEDROOM mark did not appear in the ad text was not significant for the court, unlike in the Rescuecom case, discussed infra.
In another nod to the "challenges of applying existing law to new technologies," the court granted Buying for the Home’s motion to strike Humble Abode’s demand for attorneys’ fees on its counterclaim. The Lanham Act provides for such an award only in "exceptional cases." Given that this case "presents novel issues of Internet advertising rather than flagrant violations of well-settled trademark law" and that Buying for the Home had consulted counsel with regard to its use of Humble Abode’s marks and had included trademark disclaimers on its Web site, an "exceptional case" involving intentional infringement had not been established.
Recent decisions such as this one are particularly noteworthy because courts in other jurisdictions have split on the question of whether purchasing another’s mark for use as a search engine keyword to generate a sponsored link advertisement does, in fact, constitute "use" of the mark under the Lanham Act. See, for example:
- Courts Still Sorting Out Issues on Keyword-Triggered Search Engine Advertising
- U.S. Trademark Cases Involving Keyword-Triggered Advertising on Internet Search Engines
- Northern District of New York Dismisses Rescuecom’s Claims Against Leading Search Engine Google
- Use of Trademarks in Keyword-Triggered Search Engine Advertising A Hot Topic in Internet Law
The Arent Fox Intellectual Property Group is involved in a number of related matters on behalf of our clients, and we continue to monitor all developments in this area of the law.
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