Since search became monetized, trademarks have been a front-and-center issue for legal debate. In the late 1990s, competitors were buying each other's trademarks as keywords, and hiding those keywords in meta tags. Today, with the proliferation of paid and organic search listings, search and trademarks have become a growing dilemma for search engines and advertisers alike.
Intellectual property attorneys widely consider U.S. trademark law to be well behind the advances in Web and search technology. With a growing number of trademark infringement lawsuits against search engines, and a general ignorance by state and federal legislators on the true application of trademark law itself, few legal guidelines are currently in place for search engines or search marketers to put their full and complete trust in, making online trademark protection and marketing a very shaky issue.
Most search marketers will almost certainly encounter trademark issues at some point in their careers. Either they'll have to protect their own trademark or that of a client, or defend the use of others' registered trademarks in their own marketing activities. This is a natural condition of the job. Search marketers normally have to deal with the marketing of popular keywords, and sometimes the most popular keywords are the registered trademarks of others. Without knowing how to properly use those trademarks for marketing purposes, SEMs and their clients could be subject to penalties, by both by the search engines and the courts.
There are some basic guidelines search marketers should follow. Search engines will both protect your own trademarks from unauthorized use, and enforce trademark infringement against search marketers.
What's a Trademark (and Trademark Law)?
A trademark is a type of intellectual property. Essentially a brand name, it identifies and distinguishes a product or service from others for use in commerce, and enjoys protection by the Trademark Office of the USPTO (United States Patent and Trademark Office). Specifically relating to online search, a trademark can take the form of a word, phrase, logo, or symbol.
Like copyright law, trademark ownership is location-based, and therefore must be obtained on a country-by-country basis. Trademarks have more ownership flexibility, since multiple trademark owners may claim the right to the same term, so long as each owner operates in a different industry.
Trademark Usage (and Infringement) in Search Results
All of the major search engines – Google, Yahoo, MSN Live Search, and Ask – provide their own trademark usage policies on their sites. These policies clearly distinguish between an algorithmic link (organic result), and an ad link (paid result).
"If it's a link from an algorithmic search result, then we will tell the trademark owner to deal directly with the site," says Eve Chaurand-Fraser, senior corporate counsel and online compliance officer with IAC Search & Media, where she supports Ask.com and IAC Advertising Solutions on legal issues relating to search services and online advertising sales. "However, if it's a sponsored link and the trademark is in the ad copy, we will have our client services department speak with the client and have them change the ad copy so it is no longer infringing."
There are two ways an advertiser can use trademarks with bid-for-placement listings in the search engine results pages (SERPs):
- Use the trademark as a keyword to trigger the display of an ad; or
- Use the trademark in the actual ad copy
The major search engines make a distinction between these two practices. Google, Yahoo, and Ask.com allow advertisers to bid on trademarked keywords, but do not allow the inclusion of somebody else's trademark in the actual ad copy.
In some countries, the rules are stricter for search engines, where advertisers cannot bid on a trademarked term. Microsoft holds to the strictest policy, disallowing keyword bidding on trademarks or use of trademarks in ad copy by non-trademark owners, anywhere.
Search Engines' Policy on Trademarks and the Law
Legal representatives for the search engines say they follow this practice as a matter of "best policy," rather than binding case law. "What you'll find most of the search engines and online service providers doing is treating copyrights and trademarks similarly under the Digital Millennium Copyright Act (DMCA)," says Mary Berk, Microsoft adCenter's director of marketplace quality. "The DMCA only applies to copyrights, but we tend to follow, as an industry, the same procedures for trademark infringement – primarily because we don't have anything better, and this is what the law provides us with. This is our best effort at trying to be good stewards all around," Berk says.
"Yes, the law is somewhat vague," agrees Fraser. "Different search engines have different sensitivities. I think we want the market to be as open as possible. Since the ad space is targeted on keywords and keywords are a bidding process, in order to assess what the market value of that keyword is, you need everyone to be able to use it freely. In certain state legislations, they are trying to restrict that practice, and we will obviously comply. But for the time being, to some note, we're letting advertisers get away with what they can get away with."
Eric Goldman, assistant professor of law and director of the High Tech Law Institute at Santa Clara University School of Law, called U.S. trademark law "a disaster" for search, and says it's unlikely to be resolved in the courts anytime soon.
"The way we will see a resolution is that a case could get to the Supreme Court, which would take years," says Goldman. "Otherwise we will see some kind of legislation involved. We have already seen two states ban keyword advertising in some context. And if other states decide to take that power, Congress may have to get involved because we will have this panoply of different state laws."
The short-term progress of legal developments in this area is not good, as they are all going to be conflicting. Goldman says. "If legislation does come about, it may give us some resolution over time, but it may not be the resolution anyone wants."
Search Engines' Policy on Trademark Usage
If you notify a search engine of your concern that an advertiser's listing or associated keyword represents an improper use of a trademark, the search engine will review the advertiser's keyword and listing for compliance with its trademark usage guidelines. When appropriate, the search engine will remove the advertiser's listing, or require that the listing be modified.
That being said, the search engines hold advertisers solely responsible for their published ads. Since they simply facilitate the publishing of advertisements (and aren't the publishers of the ads themselves), the search engines play no legal or arbitrary role beyond ad removal. That also means the search engines won't get involved in cases of trademark infringement in organic search results.
"Historically we have tried to moderate between trademark owners and their affiliates (often with their legal agreements)," says Berk. "We came to the realization that we can't moderate a legal agreement that we're not a partner to. It's also frustrating for legitimate advertisers – such as authorized affiliates and resellers, and others using those terms in an informational way – to have to go through a lengthy verification process. Plus we're always trying to keep in mind relevance for the end user. So more relevant ads for a trademarked term are good for the end user. And last it aligns us more with industry practices."
Addressing this experience, Microsoft recently announced an updated trademark enforcement system, which it claims will be both easier and more manageable by the following means:
- Affiliates and resellers will no longer have to submit documentation to bid on a trademarked keyword.
- Microsoft has put in place a proactive trademark monitoring system. Berk explained that when Microsoft adCenter finds a violation of your trademark, the system is set up to monitor further infractions of that trademark and prevent them going forward. "We actually invite trademark owners to submit claims to us, because it's the best way for us to stay abreast of what's going on with your intellectual property," says Berk. "We have to look at millions of trademark terms and it's not an easy thing to stay on top of, so we really do rely on advertisers and trademark owners to assist us."
Complexities of Trademark Infringement Detection
While the policies and claims appear to be more developed than ever before, so are the complexities of keeping track of all the areas and means of potential trademark infringement. Jeff Rohrs, VP of agency and search marketing for ExactTarget, points out that as search advertising becomes more granular with geotargeting and dayparting, it can make reproducing results increasingly difficult.
Rohrs poses the question: Should a person in a particular location at a particular time see on their computer screen a trademark violation, how can the search engines properly duplicate what that person saw?
"Microsoft does have lots of different ways to target ads to different users, based on demographics, location, time of day, etc.," assures Berk. "Essentially, if you tell us what you saw, we will be able to reproduce, through our back-end systems, what you got; it's not an issue."
Part II of this article series on trademark law for search marketers will focus on tips, tactics, and resources by attorneys, search engines, and specialty services for researching, monitoring, and protecting your trademark material; along with understanding SEMs rights for responsible trademark advertising.
Grant Crowell is the CEO and creative director for Grantastic Designs. Grant also serves as a video production and optimization consultant, and produces documentary video content for Walking Eagle Productions.
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