Search Engines and Internet Advertisers: Just One Click Away from Trademark Infringement?

I. IntroductionA frazzled law student sits down for a long night of reading. Torts, civil procedure, criminal law-all fascinating of course-yet, thoughts of spring break insist on interrupting. Taking a mental break, the law student decides to check out airfare prices on the Internet. On the student's favorite search engine, Google, she enters the search term "Delta," to find price quotes for her preferred airline. As the search results appear, the student notices "sponsored links" on the right hand side of her screen. One of these sponsored links reads "Cheap Airfare Here! " Intrigued, especially given the financial woes of a law student, the student clicks the uniform resource locater (URL), and a discount airfare website appears. If the student purchases from this discount airfare website, has the company benefited from the good will of Delta? Did the student associate Delta with the sponsored link? In other words, did the student believe she would find cheap Delta airfare if she clicked on the sponsored link? Should this constitute a valid claim for trademark infringement against the discount airfare company? Against Google?The Internet poses significant challenges to the legal world on a daily basis. These challenges leave lawyers, companies, and courts struggling to adapt legal doctrines and theories to a rapidly changing and evolving environment. One area of particular concern arises in the area of Internet advertising and potential trademark infringement issues. ' The past several years placed numerous courts in a position to evaluate the hypothetical presented above; however, settlements out of court continue to leave this area of the law in flux.2 Several Internet search engines, including WhenU.com, Netscape, and Google,3 face on-going resentment and criticism from trademark holders concerning the use of trademarks in Internet advertising models. This resentment often culminates in costly legal battles with neither side claiming any clear victories or gaining any guidance from courts as to proper trademark use in Internet advertising.Courts face the daunting task of applying traditional trademark law to a host of Internet-specific issues.4 Trademark holders continue fighting the battle to protect their marks, specifically the goodwill and consumer recognition associated with these marks-two important goals behind trademark law.5 Search engines have fought back hard to protect this highly profitable revenue stream.6This Note primarily focuses on two recent decisions, the Ninth Circuit Playboy Enterprises, Inc. v. Netscape Communications Corp.7 case decided in January of 2004 and the Eastern District of Virginia Government Employees Insurance Co. v. Google, Inc.8 case partially decided in December of 2004. This Note evaluates the advertising technologies utilized by the defendants in each case-search engines Google and Netscape-and aims to evaluate how traditional trademark doctrines apply to the use of trademarks in Internet advertising.9 Although this Note focuses primarily on Google's AdWords advertising model, the analysis and recommendations reach further than Google.10 One aspect of Google's business involves licensing its search engine and AdWords technology to other search engines, most notably America Online (AOL).11 Google and AOL together account for 55% of market share in the search engine market.12Google's AdWords technology affects a significant portion of Internet advertising. Therefore, any legal conclusions reached concerning Google's liability in the analysis section of this Note also apply to any search engine with an advertising model similar or identical to AdWords.This Note first advocates an extension of the contributory trademark infringement doctrine to search engines utilizing a cost-per-click (CPC) Internet advertising model like AdWords.13 In addition, this Note aims to further the current legal discussion14 by addressing the application of both direct trademark infringement and contributory trademark infringement in this context. …