Search engine optimization is a vital issue for brand owners. When a potential customer searches online for Company A, a well-known brand, Company A naturally wants its own website to be as high in the search results as possible and, ideally, at the top of the list.
But Company A is not alone. Its competitor, Company B, wants to show up in the search results as well. In fact, many a Company B, by purchasing Company A’s name as a “keyword” from a search engine (an “AdWord” as offered by Google), ensures that when users search for Company A , a sponsored advertisement for Company B appears too.
In this situation, does Company A have any recourse, such as holding Company B liable for trademark infringement?
Courts are generally in agreement that the answer is “no.” Without something more, merely using a competitor’s trademark as a behind-the-scenes keyword to optimize search engine results does not constitute infringement. In fact, some courts will dismiss complaints that do not allege more, holding that the plaintiff has not sufficiently alleged a claim upon which relief can be granted.
It was, then, something of a surprise when, on September 23, 2014, in Romeo & Juliette Laser Hair Removal Inc, Inc. v. Assara I LLC, the Southern District of New York denied a motion to dismiss a complaint alleging keyword infringement claims. The court stated the following:
Plaintiff alleges that defendant purchased the search phrase “Romeo & Juliette” from Google Inc., so that whenever the public searched for plaintiff’s mark a sponsored link to defendants’ website would appear. Moreover, plaintiff alleges defendant used its name and marks on hidden links on [defendant’s] website. This alleged conduct was likely to confuse the public as to whether [defendant] and Romeo and Juliette Laser Removal Inc. were connected, because a person searching . . . using plaintiff’s marks stood a strong chance of being directed to defendant[’s] website.
Could this be an indication that at least one judge is bucking the trend and looking at keyword infringement claims differently than his colleagues?
Here, there actually was “something more,” notwithstanding its apparent omission from the court’s order. The amended complaint at issue alleges, in addition to the keywording activities, that the defendant also used the plaintiff’s trademark in the sponsored ad itself and on its own website. For this reason, the alleged exploitation of the plaintiff’s mark did not take place exclusively in the back end of a search engine database, shielded from consumers. Rather, the plaintiff alleges that its mark was, without authorization, explicitly and publicly used by the defendant to advertise the defendant’s own competing services.
In light of these additional allegations, which have long been considered valid bases for trademark infringement claims, it would have been surprising had the court dismissed the case, regardless of the involvement of keyword ads.