COPYCENSE

Several outlets over the last few days have discussed a pair of federal cases that analyze the trademark implications involved in using ad keyword systems on major search engines. The U.S. District Court for the Southern District of New York issued the most recent decision, in Merck v. Mediplan Health Consulting.

Last year, pharmaceuticals giant Merck sued several Canadian online pharmacies for trademark infringement, trademark dilution, and a state claim of false advertising. Merck alleged the pharmacies had used the company’s ZOCOR trademark on Web sites and in ad keywords. (Zocor is a drug used to lower cholesterol.) The defendants moved to dismiss the trademark infringement claim because it did not constitute trademark use in commerce.

According to Marquette law professor Eric Goldman, the Merck court concluded that keyword purchases are invisible to consumers and therefore do not constitute a trademark use in commerce. As a result, the defendants are able to dispose of the claims over the keyword purchases on a motion to dismiss.

One of the reasons this decision is significant is because the Southern District of New York (and by extension, the Second Circuit) is one of the most influential courts in the country on intellectual property cases.

The other case is Edina Realty, Inc. v. TheMLSonline.com, in which the District of Minnesota determined that there was enough of a likelihood of trademark infringement to move the case forward to trial. This result is fundamentally opposite from the holding in the Merck case.

Elinor Mills. Ruling Adds To Confusion Over Legality of Keywords. News.com. March 31, 2006.

See also:

Eric Goldman. Keyword Purchases Not a Trademark Use — Merck v. Mediplan Health Consulting. March 31, 2006.

43(b)log. Important Keyword Decision from SDNY. March 31, 2006.

Eric Goldman. Competitor’s Keyword Ad Purchase May Be Trademark Infringement — Edina Realty v. TheMLSonline. March 29, 2006.

CopyCense™: K. Matthew Dames on the law, business, and technology of digital content. A business venture of Seso Digital LLC.