Google v. Utah - Round 1
It seems that Google is unhappy with Utah's Trademark Protection Act which is scheduled to take effect at the end of June. The act seeks to limit the use of buying key word search terms that include a competitor's trademarks. Google, the Electronic Frontier Foundation and others claim that limiting the ability of one company to use the trademarks of another harms consumers by limiting comparison advertising. Thus, look forward to a lawsuit against Utah's new law, claiming that only the Federal government can regulate interstate commerce over the Internet.
Ironically, Utah's law may be effectively enforced, whether or not the law itself withstands scrutiny. In Australian Gold, Inc. v. Hatfield, 2005 WL 3739862 (10th Cir. Feb. 7, 2006) the Court of Appeals for the 10th Circuit adopted the initial interest confusion doctrine and found that the use of a trademark in metatags and key words of an unauthorized distributor infringes the rights of the trademark owner. Several other courts have adopted the initial interest confusion doctrine, and some have somewhat retreated from their initial position. Of course, some courts have denied claims based on key word or metatag usage of another's trademarks. (Eric Goldman, a Santa Clara law professor, provides a detailed analysis of cases in this area - though with a bit of bias toward the free trademark usage side.)
Over the last couple of years, several cases have reached opposing views. Until the courts can harmonize their rulings - or the Supreme Court finally steps in and adopts a consistent approach - look for trademark owners to seek the help of courts in jurisdictions that follow the intial interest confusion doctrine and those who use (misuse?) those trademarks as metatags and key words to seek out jurisdictions which take the opposite apprpoach. Even if Google overturns Utah's law, Utah trademark owners may come out the winners.
Ironically, Utah's law may be effectively enforced, whether or not the law itself withstands scrutiny. In Australian Gold, Inc. v. Hatfield, 2005 WL 3739862 (10th Cir. Feb. 7, 2006) the Court of Appeals for the 10th Circuit adopted the initial interest confusion doctrine and found that the use of a trademark in metatags and key words of an unauthorized distributor infringes the rights of the trademark owner. Several other courts have adopted the initial interest confusion doctrine, and some have somewhat retreated from their initial position. Of course, some courts have denied claims based on key word or metatag usage of another's trademarks. (Eric Goldman, a Santa Clara law professor, provides a detailed analysis of cases in this area - though with a bit of bias toward the free trademark usage side.)
Over the last couple of years, several cases have reached opposing views. Until the courts can harmonize their rulings - or the Supreme Court finally steps in and adopts a consistent approach - look for trademark owners to seek the help of courts in jurisdictions that follow the intial interest confusion doctrine and those who use (misuse?) those trademarks as metatags and key words to seek out jurisdictions which take the opposite apprpoach. Even if Google overturns Utah's law, Utah trademark owners may come out the winners.
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