Rescuecom Corp. v. Google Inc, [562 F 3d 123 (2d Cir 2009)]
FACTS:
- Rescuecom Corp. (Plaintiff) is a computer service franchising firm that does much of its business online, with the name “Rescuecom” registered as a federal trademark.
- Google, Inc. (Defendant) operates an Internet search engine and provides contextual advertising in addition to search results.
- Marketers can buy keywords through Google programs like AdWords and Keyword Suggestion Tool, and when consumers search for such keywords, the marketers’ adverts and links display.
- Google makes a sizable chunk of its money by selling adverts through AdWords.
- When consumers searched for “Rescuecom,” they would see competitors’ ads and links on the screen since Google promoted and sold Rescuecom’s trademark as a search keyword.
- Rescuecom filed a trademark infringement lawsuit against Google, stating that this practice allowed competitors to deceive and distract customers.
- A trademark owner may have a valid cause of action for trademark infringement when the owner of an Internet search engine recommends and sells the trademark to advertisers, including the trademark owner’s competitors, to trigger the appearance of their advertisements and links, causing potential consumer confusion when users search using the trademark as a keyword.
ISSUE:
- Whether is it trademark infringement when an Internet search engine recommends and sells a trademark to advertisers, including the trademark owner’s competitors, for the purpose of triggering the appearance of their adverts and links?
- Whether an Internet search engine’s use of a trademark qualifies as a “use in commerce” under the Lanham Act, even if the trademark is not visibly displayed in the search results but is used to suggest and sell keywords to advertisers, potentially leading to consumer confusion?
HELD:
- The court ruled that trademark infringement can occur when an Internet search engine advises and sells a trademark to advertisers in order to trigger the appearance of their adverts and links.
- Google’s activities were distinguished in this case from those in an earlier case, 1-800 Contacts, Inc. v. WhenU.com, Inc., in which the defendant did not use, copy, or display the plaintiff’s mark at all.
- Google’s endorsement and sale of Rescuecom’s trademark to advertising was determined to be “in commerce” rather than purely internal purposes.
- The court stated that while innocuous product placement, such as in a store, does not cause consumer confusion, Google’s claimed practices were fundamentally different and might potentially mislead consumers.
- The court stated that while innocuous product placement, such as in a store, does not cause consumer confusion, Google’s claimed practices were fundamentally different and might potentially mislead consumers.
- While Rescuecom’s claim required proof that Google’s use of the trademark caused confusion or error, the claim was permitted to proceed and should not have been dismissed at that point in the proceedings.