Auction Web Site Off the Hook

At one time or another, every trademark holder must deal with infringement on the Internet. After years of chasing individual infringers, many brand owners seek relief from those who provide the means for infringement. Yet these efforts have had limited success, at least in the United States. In some jurisdictions, search engines have avoided liability for sales of trademarks as keywords, under the doctrine of non-trademark use. Compare Merck & Co. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402, 415 (S.D.N.Y. 2006) (internal use of trademark as keyword in search engine was not a trademark use) and Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393, 400-01, 403 (N.D.N.Y. 2006) (same; appeal argued April 3, 2008 but no decision reported as of press time) with Hysitron Inc. v. MTS Sys. Corp., 2008 U.S. Dist. LEXIS 58378, *7-8 (D. Minn. Aug. 1, 2008) (use of trademark as keyword was “use in commerce” under the Lanham Act). ISPs and domain name registrars have successfully defended on similar grounds or statutory provisions. See Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002) (domain name registrar did not “use” mark in the trademark sense); Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648 (N.D. Tex. 2001) (domain name registrar not liable under Anticybersquatting Consumer Protection Act); see generally 15 U.S.C. '1114(2)(A)-(B) (limiting remedies, relating to paid advertisements, against printers, publishers, or distributors of electronic communications for others to injunctive relief, so long as they qualify as “innocent infringers”); 15 U.S.C. '1114(2)(D)(iii) (domain name registrars not liable for damages absent bad faith intent to profit from registration or maintenance of domain name containing trademark). And, in July, Internet auctioneer eBay was found not liable for sales of counterfeit Tiffany jewelry on its Web site, despite generating millions of dollars in revenue from such third-party transactions.