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Keyword Advertising and Trademark Infringement

presents

InfringementProtecting Brands and Avoiding Liability in Online Advertising

A Live 90-Minute Teleconference/Webinar with Interactive Q&A

Today's panel features:Mitchell H. Stabbe, Member, Dow Lohnes, Washington, D.C.

Stephen R. Baird, Shareholder, Winthrop & Weinstine, MinneapolisAli M T h P t M i & F t S F i

A Live 90-Minute Teleconference/Webinar with Interactive Q&A

Alison M. Tucher, Partner, Morrison & Foerster, San Francisco

Thursday, April 29, 2010

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Keyword Advertising andKeyword Advertising and Trademark Infringement:P t ti B d dProtecting Brands and Avoiding Liability in Online Advertising

Mitchell H. [email protected]

(202) 776 2929(202) 776-2929April 29, 2009

KEYWORD ADVERTISING AND TRADEMARK INFRINGEMENT:P t ti B d d A idi Li bilit i O li Ad ti iProtecting Brands and Avoiding Liability in Online Advertising

WHO?WHO?

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Internet Search Engines• Google AdWordsGoogle AdWords• Yahoo! Search Marketing• MSN AdCenter• MSN AdCenter• …and more…

AdvertisersInternet Users

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WHAT?

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Keyword advertising is paying for ad placement on the results page of a Web

h isearch engine• If a search request includes a keyword, a

“S d Li k” ( d) i t d“Sponsored Link” (ad) is generated• Contrast: Natural Search Results

Ad ti l bid ith h i• Advertisers place bids with search engines on “keywords”

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KEYWORD ADVERTISING AND TRADEMARK INFRINGEMENT:P t ti B d d A idi Li bilit i O li Ad ti i

The advertisements consist of:

Protecting Brands and Avoiding Liability in Online Advertising

• a title, which is limited to approximately 25 characters;

• text, which appears directly below the title, and consists of two lines, limited to approximately 35limited to approximately 35 characters each; and

• a link to a “landing page ” which isa link to a landing page, which is usually a page on the advertiser’s website.

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Keyword Advertising and Trademark Infringement:Protecting Brands and Avoiding Liability in Online Advertising

WHERE?

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It’s not just Internet websites anymore .....

12The New York Times, April 13, 2010


HOW?HOW?

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Advertiser options:• “broad matches”• broad matches• “phrase matches”

“ t t h ”• “exact matches”• “negative matches”

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Advertiser options:


Advertiser options:• “broad matches” – where a

user’s search query containsuser s search query contains all the keyword terms (or variations on those terms), in a at o s o t ose te s),any order, even if the query contains other search terms.

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Advertiser options:• “phrase matches” – where aphrase matches where a

user’s search query contains all the keyword terms, in theall the keyword terms, in the same order, even if the query contains other search terms.contains other search terms.

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Ad ti ti


Advertiser options:• “exact matches” – where a

user’s search query contains only the specific keyword phrase, in the same order, without any other search terms.

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Ad ti ti


Advertiser options:• negative keywords – where

advertisers designates certain keywords that will exclude their advertisements from any search results that include the designated terms.

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Search engine complaint policies:Google AdWords a trademark owner can


• Google AdWords – a trademark owner can block references to its mark in ad text, excluding sponsored links for resellers, sellers of complementary goods and sites providing information about the branded goods.goods.

• Yahoo! Search Marketing and Microsoft adCenter: a trademark owner can also bl k f it k t t i dblock use of its marks to trigger sponsored links, excluding resellers and product information sites and fair use.

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WHY?Protecting Brands and Avoiding Liability in Online Advertising

WHY?

WHY?WHY?

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• For consumers, keyword advertising


, y gprovides consumers with information about alternatives or related subjects.

• For advertisers, keyword advertising is more effective because targeted marketing is based on an expressionmarketing is based on an expression of interest in the subject.

• What about the search engines ?• What about the search engines….?

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F th ll ( h i )


For the sellers (search engines):

$$$

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Advertising is the fuel that keeps the I t t i


Internet running• 2002: $6 Billion

2003 $9 6 Billi• 2003: $9.6 Billion• 2004: $9.6 Billion

$• 2005: $12.5 Billion• 2006: $16.8 Billion• 2007: $21.1 Billion• 2008: $23.4 Billion

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So, who could be against keyword advertising?keyword advertising?

And on what basis ?And on what basis….?

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KEYWORD ADVERTISINGADVERTISING

ANDTRADEMARKTRADEMARK

INFRINGEMENTStrategies for ProtectingStrategies for Protecting

Brands and Avoiding Liability in Online y

AdvertisingFeaturing:

Stephen R. BairdChair Trademark & Brand Management Group

Featuring:

Suite 3500 | 225 South Sixth Street | Minneapolis, MN 55402 | Main:(612)604-6400 | Fax:(612)604-6800 | www.winthrop.com

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Chair, Trademark & Brand Management GroupWinthrop & Weinstine, P.A.WWW.DUETSBLOG.COM

TREATMENT IN THE COURTS

1. Keyword Advertising Cases

TREATMENT IN THE COURTS

2. Meta tags

3. Likelihood of Confusion

4 l i i f O i i4. False Designation of Origin

5. Dilution


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KEYWORD ADVERTISING

Under arrangements known as keyword buys, Internet

KEYWORD ADVERTISING

g y y ,search engines sell advertising rights to specific search terms. In other words, when an Internet user conducts a search, the search results can be presented to provide top billing to an advertiser that paid for the

Keyword Buys

to provide top billing to an advertiser that paid for the right to have its advertisement presented above all other matches. This practice may cause a likelihood of confusion.

Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004).


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KEYWORD ADVERTISING

U-Haul v. WhenU, 279 F.Supp.2d 723 (E.D.

KEYWORD ADVERTISING

Th G t Va. 2003). Wells Fargo v. WhenU, 293 F.Supp.2d 734

(E.D. Mi. 2003).

The Great Keyword Debate

Geico v. Google, Inc., 77 U.S.P.Q.2d 1841 (E.D. Va. August 8, 2005).

1-800 Contacts v. WhenU, 414 F.3d 400 (2d

Debate

, (Cir. 2005).

Australian Gold, Inc. v. Hatfield, 77 U.S.P.Q.2d 1968 (10th Cir. Feb. 7, 2006).Q ( , )

Edina Realty v. The MLSOnline.com, 2006 WL 737064 (D. Minn. March 20, 2006.


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KEYWORD ADVERTISINGKEYWORD ADVERTISING

Merck v. Mediplan Health Consulting, 425 F Supp 2d 402 (S D N Y March 30The Great 425 F.Supp.2d 402 (S.D.N.Y. March 30, 2006), motion for reconsideration denied, 431 F.Supp.2d 425 (S.D.N.Y. May 24, 2006).

The Great Keyword Debate 2006).

800-JR Cigar, Inc. v. GoTo.com, Inc., 81 U.S.P.Q.2d 1939 (D. N.J. July 13, 2006).

Rescuecom Corp v Google Inc 456

Debate

Rescuecom Corp v. Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y. Sep. 28, 2006).

Buying for the Home v. Humble Abode, 459 F Supp 2d 310 (D N J October 20459 F.Supp.2d 310 (D. N.J. October 20, 2006).


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J.G. Wentworth v. Settlement Funding, 2007 WL 30115 (E D Pa Jan 4 2007)30115 (E.D. Pa. Jan. 4, 2007). Google, Inc. v. American Blind & Wall Paper Factory, Inc., 2007 WL 1159950 (N.D. Cal. April 18, 2007)

The Great Keyword D b t 2007).

Hamzik v. Zale Corp., 2007 WL 1174863 (N.D.N.Y. April 19, 2007).

Sit P 1 I B tt M t l LLC 82

Debate

Site Pro-1, Inc. v. Better Metal, LLC, 82 U.S.P.Q.2d 1697 (E.D.N.Y. May 9, 2007). FragranceNet.com, Inc. v. FragranceX.com, I 493 F S 2d 545 (E D N Y J 12 2007)Inc., 493 F.Supp.2d 545 (E.D.N.Y. June 12, 2007). S & L Vitamins, Inc. v. Australian Gold, Inc. 521 F.Supp.2d 188 (E.D.N.Y. Sep. 30, 2007).


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Storus Corp. v. Aroa Marketing, Inc., 2008 WL 449835 (N.D. Cal. Feb. 15, 2008).

Standard Process, Inc., v. Banks, 544 F.Supp.2d 866 (E.D. Wis. April 18, 2008).

The Great Keyword

Designer Skin, LLC v. S & L Vitamins, Inc., 88 U.S.P.Q.2d 1021 (D. Ariz. May 20, 2008).

Standard Process, Inc. v. Total Health

Debate

,Discount, Inc., 559 F.Supp.2d 932 (E.D. Wis. June 6, 2008).

Finance Express, LLC v. Newcom Corp., 564 p , p ,F.Supp.2d 1160 (C.D. Cal. June 18, 2008).


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Hysitrom, Inc. v. MTS Systems.Corp., 2008Hysitrom, Inc. v. MTS Systems.Corp., 2008 WL 3161969 (D. Minn. Aug. 1, 2008).

Soilworks, LLC v. Midwest Indus. Supply, Inc. 575 F.Supp.2d 1118 (D. Ariz. Aug. 7, 2008).

The Great Keyword 575 F.Supp.2d 1118 (D. Ariz. Aug. 7, 2008).

Heartbrand Beef, Inc. v. Lobel’s of New York, LLC, 2009 WL 311087 (S.D. Tex. Feb. 5, 2009).

Debate

2009). Mary Kay, Inc. v. Weber, 2009 WL 426470

(N.D. Tex. Feb. 20, 2009). Hearts on Fire Co LLC v Blue Nile Inc Hearts on Fire Co., LLC v. Blue Nile, Inc.,

2009 WL 794482 (D. Mass. March 27, 2009) Rescuecom Corp. v. Google, Inc., 562 F.3d

123 (2d Cir April 3 2009)


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123 (2d Cir. April 3, 2009).

TRADEMARK ISSUES ON THE INTERNET

Law is Unsettled and Developing, so Risk Exists.

INTERNET

Keyword Decide on Your Strategy and Set Policy. Don’t Forget Goose/Gander Rule. Avoid Using Keyword Trademark in Google Ad.

Keyword Buys: Practice

Don’t Lose Sight of Business Issues. Consider Agreements with Competitors. Take Advantage of Keyword Vendor’s Existing

Pointers

g y gPolicies.


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Meta tags are HTML code words

INTERNET

embedded in a Web site that are not normally visible to the Internet user. Meta tags generally consist of key words and phrases that are descriptive of the

b i d i d d b d b

The Use of Internet M t t Web site’s content and are intended to be read by

search engines so that the site can be identified as a relevant site in response to certain search terms.

b i i k

Meta tags

Web site operators sometimes take advantage of this capability by including other owners’ trademarks in their metadata. The practice has been held to cause initial interest confusionhas been held to cause initial interest confusion. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).


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Probe reason for desire to imbed meta tags. Descriptive terms or recognized marks?Practice

INTERNET

Descriptive terms or recognized marks? Are they really beneficial? Does chosen meta tag directly relate to content

t d ?

Pointers: Meta tags

on tagged page? Avoid repetitive use of others’ trademarks as

meta tags even if there is legitimate single use f i dfair use grounds.

Position content on tagged page as clearly comparative.

North American Medical Corp. v. Axiom Worldwide, Inc. 522 F.3d 1211 (11th Cir. April 7, 2008); see also Venture Tape Corp. v. M Gill Gl W h 540 F 3d 56 (1st Cir


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McGills Glass Warehouse, 540 F.3d 56 (1st Cir. August 28, 2008).

PROTECTION OF FEDERALLY REGISTERED TRADEMARKS

Lanham Act § 32(1); 15 U.S.C. § 1114(1)

REGISTERED TRADEMARKS

(2006): Any person who shall, without the consent of the registrant, use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or d i i f d i iadvertising of any goods or services on or in

connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; ordeceive; or


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PROTECTION OF FEDERALLY REGISTERED TRADEMARKS

apply such reproduction counterfeit

REGISTERED TRADEMARKS

… apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce or in connectionintended to be used in commerce or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or y ,to cause mistake, or to deceive

shall be liable in a civil action by the registrant forshall be liable in a civil action by the registrant for the remedies hereinafter provided.


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TYPES OF LIKELY CONFUSION

1. Traditional Forward ConfusionTypes of2. Initial Interest Confusion

Types of Confusion

3. Post-Sale Confusion

4 C f i “S hi ”4. Confusion as to “Sponsorship”(See www.DuetsBlog.com)

5. Reverse Confusion

6 Non-Confusing Nominative Fair Use


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6. Non Confusing Nominative Fair Use

1. Traditional FactorsLik lih d

2. Initial Interest Confusion Factors

Likelihood of ConfusionF

3. Internet trilogyFactors


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FALSE DESIGNATION OF ORIGIN

Lanham Act § 43(a); 15 U.S.C. § 1125(a) (2006):

FALSE DESIGNATION OF ORIGIN

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name,

b l d i bi i h fsymbol, or devise or any combination thereof, any false designation of origin, false or misleading description of fact, which is likely to cause confusion or in commercialto cause confusion…or in commercial advertising or promotion, misrepresents the nature, characteristic, qualities, or geographic origin of [the] goods services or commercialorigin of [the] goods, services, or commercial activities,shall be liable in a civil action by any person who believes that he or she is likely to be


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who believes that he or she is likely to be damaged by such act.

PROTECTION AGAINST DILUTION

Lanham Act § 43(c); 15 U.S.C. § 1125(c) (2006): The owner of a famous mark shall be entitled . . . to Protection of fan injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark .

Protection of Famous Marks

q y. . .

Courts may consider the eight enumerated factors when determining whether a mark is famous andwhen determining whether a mark is famous and distinctive, and the list is not limited to the eight factors.

Injunctive relief is the only remedy available to a damaged party unless the person against whom the injunction is sought willfully intended to trade on the owner’s reputation or to cause dilution of the famous


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pmark.

THANK YOU!THANK YOU!

Stephen R. BairdChair, Trademark & Brand Management Group, g p

Winthrop & Weinstine, P.A.225 South Sixth Street, Suite 3500

Minneapolis, MN 55402(612) 604-6585

WWW.DUETSBLOG.COM


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Keyword Advertising and Trademark Infringement

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Indirect LiabilityIndirect Liability

• Contributory Infringementy g• Tiffany (NJ) Inc. v. eBay, Inc., __ F.3d __ (2nd Cir. April 1, 2010)• Lockheed Martin v. Network Solutions, 194 F.3d 980 (9th Cir. 1999)

• Contributory and Vicarious Infringement• Perfect 10 v. VISA, 494 F.3d 788 (9th Cir. 2007)• Hard Rock Café Licensing v. Concession Servs., 955 F.2d 1143

(7th Cir. 1992)

This is MoFo. | 44

Contributory InfringementContributory Infringement

• From principles of enterprise liability and imputed intentp p p y p• Requires

• Intentionally induces primary infringer to infringe or• Continues to supply an infringing product, knowing or with reason

to know that the infringer is mislabeling, or• Continues to supply an infringing service, knowing or with

reason… [while exerting direct control and monitoring of the instrumentality the primary infringer uses to infringe].

This is MoFo. | 45

Vicarious InfringementVicarious Infringement

• For joint tortfeasorsj• Requires defendant and infringer:

• Are apparent or actual partners,• Have authority to bind one another in transactions with third

parties, or• Exercise joint ownership or control over the infringing product

• Narrower than copyright law

This is MoFo. | 46

Tiffany v eBayTiffany v. eBay

The Problem• A “significant portion of the ‘Tiffany’ sterling silver jewelry listed on

the eBay website . . . was counterfeit”• “[A]uthentic Tiffany goods are [also] sold on eBay”• [A]uthentic Tiffany goods are [also] sold on eBay• eBay received customer complaints and knew “some portion of

the Tiffany goods sold on its website might be counterfeit”

This is MoFo. | 47

Tiffany v eBay (cont )Tiffany v. eBay (cont.)

Tiffany Suesy• Direct and contributory trademark infringement• Trademark dilution• False advertising• False advertising

Defense judgment following bench trial (Sullivan, J.)

This is MoFo. | 48


eBay’s Anti-Fraud Effortsy• eBay operated a “notice-and-takedown” system,

removing potentially infringing items within 24 hours• eBay began issuing “special warning messages” to

sellers advertising Tiffany items • eBay suspended tens of thousands of sellers suspected• eBay suspended tens of thousands of sellers suspected

of infringing conduct• eBay allowed Tiffany to maintain a “Buyer Beware”

notice, warning customers and directing them to tiffany.com

This is MoFo. | 49


eBay’s Efforts to Drive Salesy• Advertised availability of Tiffany merchandise on its site

• Hyperlinks from “GET THE FINER THINGS,” “GREAT BRANDS, GREAT PRICES ” etcGREAT PRICES,” etc.

• To “Tiffany & Co. under $50,” etc.

• Purchased Yahoo! sponsored link advertisementsp• Keyword “Tiffany”

• “Tiffany on eBay. Find tiffany items at low prices.” etc.

This is MoFo. | 50


No Direct Trademark Infringementg• Nominative Fair Use

• New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir 1992)(9th Cir. 1992)

• Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3rd Cir. 2005)Neither adopted nor rejected by 2nd Circuit• Neither adopted nor rejected by 2nd Circuit

• Trademark law does not reach use if:• Necessary to describe mark-holder’s producty p• Not falsely implying affiliation or endorsement by mark-holder

This is MoFo. | 51


No Contributory Trademark Infringementy g• Test: “‘Continues to supply its [service] to one whom it

knows or has reason to know is engaging in trademark i f i t’”infringement’”

• “[G]eneralized knowledge … that its service is being used to sell counterfeit goods” is not enoughto sell counterfeit goods is not enough

• “[C]ontemporary knowledge of which particular listings are infringing … is necessary”

• eBay’s take-down program shows it does not continue to supply; its anti-fraud efforts show it is not willfully blind

This is MoFo. | 52

American Airlines v Yahoo! (N D Texas)American Airlines v. Yahoo! (N.D. Texas)

This is MoFo. | 53

American Airlines v Yahoo! (Cont )American Airlines v. Yahoo! (Cont.)

•American Airlines challenged Sponsored Search g padvertising on “american airlines,” “american eagle,” “AA”

•Claims included •Direct infringement•Contributory infringement•Vicarious infringement•Dilution

•Case settled after briefing on summary judgment

This is MoFo. | 54

American Airlines v Yahoo! (cont )American Airlines v. Yahoo! (cont.)

Nominative Fair Use in the Fifth Circuit• Scott Fetzer v. House of Vacuums, 381 F.3d 477 (5th Cir. 2004)

(Yellow Pages advertisement may use brand names)• Trail Chevrolet v. Gen. Motors, 381 F.2d 353 (5th Cir. 1967)C G , ( )

(dealership may “advertise that they sell Chevrolets, that they repair Chevrolet cars, that they have a number of Chevrolets to choose from, or that they sell used Chevrolets and other fine cars”)

• Digits of confusion must be flexibly applied (very!)• Ask whether defendant:

• Uses only so much of the mark as necessary to identify theUses only so much of the mark as necessary to identify the product/service, or

• Does nothing to suggest affiliation, sponsorship, or endorsement by markholder

This is MoFo. | 55


Nominative Fair Use In Keyword Advertisingy g• Three favorable decisions

• Designer Skin v. S& L Vitamins, 560 F.Supp.2d 811 (D. Ariz. 2008)• Mary Kay v. Weber, 601 F.Supp.2d 839 (N.D. Tex. 2009)• Tiffany v. eBay

• Contrary authority distinguished (misleading text)Contrary authority distinguished (misleading text) • Standard Process v. Total Health Discount, 559 F. Supp. 2d 932• Edina Realty v. Themlsonline.com, 2006 WL 737064 (D. Minn. 2006)

This is MoFo. | 56


Statutory Fair Usey• Advertiser may use a trademarked term “in its descriptive

sense rather than” as a brand name (Sugar Busters v. B 1 F 3d 2 8 ( h Ci 1998))Brennan, 177 F.3d 258 (5th Cir. 1998))

• Examples: • “American Eagle” coinsAmerican Eagle coins• Discount AA Batteries 10% Off http://www.batteries.com/

index.asp?L=142 - Find discount batteries and chargers for your camcorder, PDA, digital camera, cell phone, laptop computer, andcamcorder, PDA, digital camera, cell phone, laptop computer, and more. Free shipping and 10% with code SS10 at checkout.

This is MoFo. | 57


No direct infringementg• Consumers not confused between Yahoo!’s search

engine and American’s air travel services

No indirect infringementYahoo!’s Sponsored Search advertisers generally non• Yahoo!’s Sponsored Search advertisers generally non-infringing; most made nominative fair use of trademarks

• Yahoo!’s trademark policy addressed individual instances p yof infringement

This is MoFo. | 58


Innocent infringer not liable for damagesg g•15 U.S.C. 1114(2)(B) applies to an on-line auction house (Hendrickson v. eBay, 165 F.Supp.2d 1082 (C.D. Cal. 2001))

No dilution with nominative fair use

This is MoFo. | 59

SummarySummary

• Nominative fair use does not infringe, but depends on g , planguage and context

• Direct infringement requires defendant’s use of mark lik l t f i t i i hi flikely to cause confusion as to origin or sponsorship of goods

• Contributory infringement requires contemporaryContributory infringement requires contemporary knowledge that particular advertisements infringe

• Vicarious infringement requires joint activity• Appropriate policies to avoid or remove infringing uses

can protect from direct or indirect liability

This is MoFo. | 60



(202) 776 2929(202) 776-2929April 29, 2009


Strategies to avoid claims

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Strategies to avoid claimsStrategies to avoid claims• Do nothing to suggest sponsorship or

affiliation

63


Strategies to avoid claimsg• Do nothing to suggest sponsorship or

affiliation• Take advantage of search engines’ safe g g

harbors for keyword advertising (comparative advertising, re-sellers

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affiliation• Take advantage of search engines’ safe• Take advantage of search engines safe


• Avoid free-riding/make sure keywords are relevant to your goods/servicesrelevant to your goods/services

65


Strategies to avoid claims• Do nothing to suggest sponsorship or

affiliation• Take advantage of search engines’ safe g g



• Select categories as keywords

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affiliation• Take advantage of search engines’ safe

h b f k d d ti i ( tiharbors for keyword advertising (comparative advertising, re-sellers

• Avoid free-riding/make sure keywords are relevant to your goods/servicesy g

• Select categories as keywords• Use negative keywords

67




harbors for keyword advertising (comparativeharbors for keyword advertising (comparative advertising, re-sellers

• Avoid free-riding/make sure keywords are relevant to your goods/servicesS• Select categories as keywords

• Use negative keywords• Be careful how keyword appears in text

68


Strategies to avoid claimsStrategies to avoid claims• Do nothing to suggest sponsorship or

affiliation• Take advantage of search engines’ safeTake advantage of search engines safe



• Select categories as keywords• Use negative keywords• Be careful how keyword appears in texty pp• Don’t use false or misleading comparative

advertising or make false claims

69





• Avoid free-riding/make sure keywords are relevant to your goods/services

• Select categories as keywords• Select categories as keywords• Use negative keywords• Be careful how keyword appears in text• Don’t use false or misleading comparative g p

advertising or make false claims• Don’t sell grey goods

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• Avoid free-riding/make sure keywords are relevant to your goods/servicesS l t t i k d• Select categories as keywords

• Use negative keywords• Be careful how keyword appears in text• Don’t use false or misleading comparativeDon t use false or misleading comparative

advertising or make false claims• Don’t sell grey goods• Don’t use metatags

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Strategies to protect brandsSt ateg es to p otect b a ds

72


Strategies to protect brands


Strategies to protect brands• Be careful in picking your fights

73




g p• Be careful in picking your fights• Take advantage of search engines’ complaint procedures

(N/A resellers information sites complementary sites)(N/A resellers, information sites, complementary sites)

74




Strategies to protect brands• Be careful in picking your fights• Take advantage of search engines’ complaint procedures

(N/A resellers information sites complementary sites)(N/A resellers, information sites, complementary sites)• Avoid cases involving the search engines’ safe harbors for

keyword advertising

75




• Be careful in picking your fights• Take advantage of search engines’ complaint procedures

(N/A resellers, information sites, complementary sites)(N/A resellers, information sites, complementary sites)• Avoid cases involving the search engines’ safe harbors for

keyword advertising• Pursue keyword advertising activities with “plus” factors

(see prior screen!)(see prior screen!)

76





(N/A resellers, information sites, complementary sites)• Avoid cases involving the search engines’ safe harbors for


(see prior screen!)(see prior screen!)• Don’t bother with “small operators”?

77





(N/A resellers, information sites, complementary sites)( / , , p y )• Avoid cases involving the search engines’ safe harbors for


(see prior screen!)(see prior screen!)• Don’t bother with “small operators”?• Get a reputation by being aggressive towards “small

operators”?operators ?

78


Strategies to protect brandsProtecting Brands and Avoiding Liability in Online Advertising


(N/A resellers, information sites, complementary sites)A id i l i th h i ’ f h b f• Avoid cases involving the search engines’ safe harbors for keyword advertising

• Pursue keyword advertising activities with “plus” factors (see prior screen!)(see prior screen!)

• Don’t bother with “small operators”?• Get a reputation by being aggressive towards “small

operators”?f (• Don’t play both sides of the street (purchasing trademarks

of others as keywords while objecting to use your marks as keywords)

79


Strategies to protect brandsB f l i i ki fi ht



(N/A resellers, information sites, complementary sites)• Avoid cases involving the search engines’ safe harbors for• Avoid cases involving the search engines safe harbors for


(see prior screen!)D ’ b h i h “ ll ”?• Don’t bother with “small operators”?

• Get a reputation by being aggressive towards “small operators”?

• Don’t play both sides of the street (purchasing trademarks• Don t play both sides of the street (purchasing trademarks of others as keywords while objecting to use your marks as keywords)

• Don’t forget to use your resources to market your brand

80

g y y


Strategies to protect brandsProtecting Brands and Avoiding Liability in Online Advertising


(N/A resellers, information sites, complementary sites)• Avoid cases involving the search engines’ safe harbors for• Avoid cases involving the search engines safe harbors for


(see prior screen!)( p )• Don’t bother with “small operators”?• Get a reputation by being aggressive towards “small

operators”?Don’t pla both sides of the street (p rchasing trademarks• Don’t play both sides of the street (purchasing trademarks of others as keywords while objecting to use your marks as keywords)

• Don’t forget to use your resources to market your brand

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Don t forget to use your resources to market your brand• Bind sales agents, franchises, etc. contractually (domain

names as well)


Strategies to protect brands• Be careful in picking your fights


p g y g• Take advantage of search engines’ complaint procedures

(N/A resellers, information sites, complementary sites)• Avoid cases involving the search engines’ safe harbors for

keyword advertisingkeyword advertising• Pursue keyword advertising activities with “plus” factors

(see prior screen!)• Don’t bother with “small operators”?o t bot e t s a ope ato s• Get a reputation by being aggressive towards “small

operators”?• Don’t play both sides of the street (purchasing trademarks

f th k d hil bj ti t kof others as keywords while objecting to use your marks as keywords)

• Don’t forget to use your resources to market your brand• Bind sales agents franchises etc contractually (domain

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Bind sales agents, franchises, etc. contractually (domain names as well)

• Move to Utah



(202) 776 2929(202) 776-2929April 29, 2009

Documents

presents Keyword Advertising and Trademark Infringementmedia.straffordpub.com/.../presentation.pdf · 2 • If the sound quality is not satisfactoryIf the sound quality is not satisfactory