Flooding the Engine: Where Search Engine Optimization Crosses the Line Into Illegality
by Jonathan Pink
Building a successful business has never been more complicated. Customers must be able to locate you using any major internet search engine. Because 90 percent of search users never go beyond the second page of results, unless your website appears near the top, you might as well go fishing.
Increasing your search engine ranking, or "search engine optimization" can be fraught with legal pitfalls. Here are a few, and tips on how to avoid them:
Trademark Infringement: Keywords and meta tags (hidden code) are the most common method of attracting search engines and increasing ranking. Using keywords and meta tags that accurately describe a site’s content is fine, but using a competitor’s trademark can get you in trouble. 15 U.S.C. § 1125(a) (trademark infringement requires the commercial use of the same or similar mark by another with respect to goods or services that is likely to cause confusion with respect to trademark owner's customers).
In Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) 174 F.3d 1036, the court ruled that inclusion of a competitor’s trademark in metadata constituted trademark infringement because it diverted traffic to the defendant’s site. Analogizing to a roadside billboard that misdirects customers, the court said plaintiff’s mark improperly caused initial interest in defendant’s site – thus infringement – even though users soon realized their mistake. Id. at 1061-66.
One key to avoiding infringement is the "fair use" doctrine. It permits use of another’s trademark to identify the plaintiff’s goods or services provided there is no likelihood of confusion. In Playboy v. Welles, 279 F.3d 796 (9th Cir. 2002), Playboy sued its former top bunny, Terri Welles, for using the words "Playboy" and "Playmate of the Year" in her website’s metatags. Welles won, arguing that use of these terms was necessary to describe her as "Playboy Playmate of the Year 1981." But c.f. Australian Gold, Inc. v. Hatfield (D.C. No. 02-CV-143-C) (10th Cir. Feb.7, 2006) (finding infringement where defendants’ metadata contained plaintiff’s trademark even after defendant stopped selling plaintiff’s product).
Another way to avoid infringement appears to be purchasing keywords – including a competitor’s trademark – directly from the search engines. This way, when a user searches for that keyword, an advertisement pops up with a link to your site, or a "sponsored link" appears that boosts your ranking to equal your competitor’s. See Playboy, Inc. v. Netscape Enterprises Communications Corp. (9th Cir. 2004) 354 F.3d 1020; Government Employees Insurance Co. (Geico) v. Google, Inc. (E.D. Pa 2004) 330 F.Supp.2d 700; see also 1-800CONTACTS, Inc. v. WhenU.Com., Inc., 414 F.3d 400 (2d Cir 2005); but c.f. Australian Gold, supra (defendant’s purchasing of plaintiff’s mark as a keyword contributed to the finding of infringement).
Geico involved Google’s "AdWords" program, which sells the ability to appear as a "sponsored link" when a search is run using a competitor's mark. The court found insufficient evidence that use of "Geico" as a keyword was likely to cause consumer confusion, and thus found no infringement. However, the court said that if a sponsored link displayed plaintiff’s mark, it would violate the trademark law. Google lost a similar case in France several weeks later, but then that's the French: eating frogs and snails and thinking Jerry Lewis is a genius.
In 1-800Contacts, the Second Circuit ruled that software that provided a competitor’s pop-up advertisements when accessing plaintiff's web site was not infringement. The court reasoned that inclusion of plaintiff’s marks in a directory of terms that triggered the pop-ups was not a "use" in commerce of those marks as defined under trademark law.
While this line of cases is still developing, one thing is clear: the surest way to increase your ranking is to make like a politician and buy your way to the top.
Copyright Infringement: Stuffing your site with high quality, original content is an excellent way to increase your search engine ranking. Stuffing your site with content poached from another site will only lead to trouble. Just because it’s on the Web, doesn’t mean it’s free. Nothing about the Web strips work of its copyright protection. See 17 USC §102(a) (copyright protection applies to literary, artistic, musical and architectural works exhibiting a modicum of originality and fixed in any tangible medium). Translation: you can get sued for misappropriating it. 17 USC §501(a).
Unfair Competition: California Business and Professions Code §17200 and 15 U.S.C. §1125(a) broadly protect against unfair competition. In addition to the conduct discussed above, these statues can apply to other techniques professional Search Engine Optimizers regard as "unethical," i.e. inundating blogs and discussion boards with return hyperlinks. While links are important – they are one factor search engines look at when determining rank – a better approach is obtain them legitimately by becoming popular with your peers.
The More Things Change, the More They Stay the Same: Building a business on the web – and getting it seen – ultimately comes down to offering the highest quality content, useful information, helpful resources and excellent service. After all, nothing increases ranking like web traffic itself. Just like the old days, it’s all about being better than the next person. Unless, of course, you’d rather be fishing.
Jonathan Pink (pink@lbbslaw.com) is a partner in the Intellectual Property and Technology Group at Lewis Brisbois Bisgaard & Smith, LPP.
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As a follow up note to the issue of trademark infringement as triggered by key word advertsing, I note that the cases in this area continue to produce mixed results.
Perhaps even worse from a planning perspective is that the cases are inconsistent in their analytical approaches. In Government Employees Insurance Co. (Geico) v. Google, Inc. (E.D. Pa 2004) 330 F.Supp.2d 700, for example, the court found insufficient evidence that use of "Geico" as a keyword was likely to cause consumer confusion, and thus found no infringement.
A recent California court went the other way, however. In American Blinds, Wallpaper & More v. Google C 03-5340 JF (N.D. Cal), Amercian Blinds asserted that Google violated U.S. trademark laws by allowing rival companies to purchase American Blinds’ trademarks as search terms. Google asked the Court to find as a matter of law that its sale of such keywords did not constitute a “use in commerce” as required for infringement under the Lanham Act. The Court rejected that argument, and allowed the case to proceed to trial. The parties in this case opted for a settlement on the eve of trial, with no money being paid to American Blinds.
In another recent case, J.G. Wentworth v. Settlement Funding, LLC , No. 06-0597 (E.D. Pa. Jan. 4, 2007), the District Court for the Eastern District of Pennsylvania found that the purchase and use of a trademark-protected keyword to trigger internet advertising did constitute a “use in commerce,” but that the “use” did not create a “likelihood of confusion.” The court held that because consumers choose among the search results delivered to them, “potential consumers have no opportunity to confuse defendant’s services, goods, advertisements, links or websites for those of plaintiff.”
Finally, 1-800 Contacts filed another case two weeks ago this time in Utah. (1-800 Contacts, Inc. v. LensWorld.com, Inc., 2:08-cv-00015-SA). The case is based on the defendant having bought "1800Contacts" as a keyword. What makes this especially interesting is that 1-800 was opposed to proposed legislation in Utah that would outlawed keyword purchases.
If and when the courts finally speak with a unified voice regarding the use and purchase of trademarks as key words, and the courts ultimately decide such use to be trademark infringement, this will significantly impact the way companies advertise over the Internet.
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