The Unseemly Web of Keyword Advertising

Despite the surface simplicity of keyword advertising disputes (typically entailing unwanted use of the exact trademark of a direct competitor promoting competing goods or services) the web the courts have spun addressing such Web-based advertising has been anything but. Fortunately, the Second Circuit's April 3 decision in Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) (on the one-year anniversary of oral argument), straightens at least some of the tangled seams by recognizing that keyword ads tied to a trademark do constitute a use in commerce of the subject mark. The Second Circuit thus agreed with arguments made by this author in numerous articles (including Virtual Trademark Use ' The Parallel World of Keyword Ads, 98 Trademark Rptr. 873 (May-June 2008)) that New York district courts, in a cluster of cases recognizing no such “use in commerce,” had mistakenly focused on the statutory definition of how an owner acquires bona fide rights in a mark in the first instance, rather than the statutory test of infringement. The previous week, a Massachusetts decision adopted much the same analysis. Hearts on Fire Co. v. Blue Nile, Inc., 2009 WL 794482 (D. Mass. March 27, 2009).