Site Pro-1 Inc. v. Better Metal LLC: a better approach for deciding trademark infringement claims resulting from competitive metatag usage and keyword advertising?
Categories: Internet Law,Meta Tags,Trademark Law,Cyber Law,Keyword Advertisement
Better Metal purchased a "sponsored search" from Yahoo! that caused its website to be included among the results listed when a Yahoo! search user searched for some combination of the terms "1", "pro", and "Site." The SITE PRO 1® mark was not displayed in the sponsored search result linking to Better Metal's website.
The Court stated:
The key question is whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin. Here, there is no allegation that Better Metal did so, and therefore no Lanham Act “use” has been alleged. Indeed, the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff’s SITE PRO 1® trademark on any of its goods, or any advertisements or displays associated with the sale of its goods. Complaint, Ex. B. Neither the link to Better Metal’s website nor the surrounding text mentions SitePro1 or the SITE PRO 1® trademark. The same is true with respect to Better Metal’s metadata, which is not displayed to consumers.
The Court's approach seems to be inline with the Second Circuit's position regarding competitive metatag usage and keyword advertising. Most courts do not share this approach. Under similar facts, Courts in Virginia, California, Pennsylvania, Minnesota, and many others, have reached contrary results.
So which court has the better approach for deciding trademark infringement claims resulting from competitive metatag usage and keyword advertising? The debate continues...
The text of the opinion may be found at: http://claranet.scu.edu/tempfiles/tmp32239/siteprovbettermetal.pdf
My company has sued a competitor who is using our trademark as part of its google adwords. I'm glad our case is being decided in Minnesota and not in New York. I do not believe that the New York court is proteting businesses by allowing companies to capitalize on using the name that others have made famous through their efforts!
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I don't really see how this is any different from grocery stores putting their generic cereals next to Kellogg's and Post's products. I think it's good that people are able to see other options. Most people will buy the name brand no matter what, but some of us are really looking for cheaper alternatives when we search for brands.
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Yes, but if someone types the name of my company in Google, they are specifically looking for me, not for other options. For your example, I would say, if I go to the grocery store and ask an employee to get me a box of Fruit Loops and he/she shows up with a generic version, he/she did not give me what I was looking for.
My company pays advertising so that a person will recognize our brand and, to follow the example, be able to go to the store and demand the Fruit Loops by name.
If we create a brand and fork up the money to advertise it, why should they piggyback?
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Well, there's the distinction - If you specifically go to a website, order Froot Loops and what you get in the mail a few days later is a box of Fruit Circles by America's Choice, that's false advertising. But if you go to Google and search for Froot Loops, that's the equivalent of asking the grocery store clerk *where* the Froot Loops is, not ordering it. He's going to either take you to the shelf spot or just say Aisle 6 - either way, you will be able to see the myriads of other available cereals out there at that point and be able to make an informed decision as to what you want.
The key question to ask in these situations is, Are people being deceived by Keyword Advertising? Are they being mislead into believing that they will be able to purchase your company's items at those other sites.
Yes, generics can make us angry when we're the inventor of a product, but think about the amount of money we're able to save because of them. And yes, unauthorized dealers make us angry, but they also encourage the authorized dealers to keep their prices competitive. (Thus, saving us money too.)
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The entire concept of being able to utilize a competitor's trademark to drive traffic to a website seems to me absurd. The field of Internet Law seems to be in disarray. Maybe the Supreme Court will step up to the plate and decide some of these Cyber Law questions where the lower courts are divided.
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