Site Pro-1 Inc. v. Better Metal LLC: a better approach for deciding trademark infringement claims resulting from competitive metatag usage and keyword advertising?

This was a trademark infringement lawsuit filed by Site Pro-1, Inc, the owner of the registered trademark SITE PRO 1®, against Better Metal, LLC.  Better Metal is a competitor of Site Pro-1. 

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:

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