1. U.S. Contextual Advertising Law. Fordham University School of Law Fourteenth Annual International Intellectual Property Law and Policy Conference April 21, 2006. Prof. Barton Beebe Cardozo Law School www.bartonbeebe.com. Presentation Outline.
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U.S. Contextual Advertising Law
Fordham University School of Law
Fourteenth Annual International Intellectual Property Law and Policy Conference
April 21, 2006
Prof. Barton Beebe
Cardozo Law School
I.The Technology of Contextual Advertising
III.The Current Case Law
I.“Use in commerce”?
Is the defendant making a “use in commerce” of the plaintiff’s trademark “in connection with the sale, offering for sale, distribution or advertising of goods or services”? 15 U.S.C. 1114(1)(a) Does “use in commerce” mean “trademark use”?
Even if it is a “use in commerce,” is this use likely to confuse consumers as to source?
Even if the “use in commerce” is likely to confuse consumers as to source, is it nevertheless a fair use?
I.Consumer-Use v. Machine-Use
A law designed to address consumer perception must now evaluate consumer perception as mediated by machine perception.
II.The Circularity of Trademark Exclusive Rights
III.The Importance of Consumer Confusion
The “use in commerce” debate is a distraction. The issue should turn on consumer confusion. See, e.g., Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)
“At the outset, we note that WhenU does not ‘use’ 1-800's trademark in the manner ordinarily at issue in an infringement claim: it does not ‘place’ 1-800 trademarks on any goods or services in order to pass them off as emanating from or authorized by 1-800. The fact is that WhenU does not reproduce or display 1-800's trademarks at all, nor does it cause the trademarks to be displayed to a C-user.”
“A company's internal utilization of a trademark in a way that does not communicate it to the public is analogous to a individual's private thoughts about a trademark. Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of such goods or services.”
“Defendants here use Plaintiff's mark in two ways. First, in causing pop-up advertisements for Defendant Vision Direct to appear when SaveNow users have specifically attempted to access Plaintiff's website-on which Plaintiff's trademark appears-Defendants are displaying Plaintiff's mark ‘in the ··· advertising of’ Defendant Vision Direct's services. . . .”
“Second, Defendant WhenU.com includes Plaintiff's URL, <www.1800contacts.com>, in the proprietary WhenU.com directory of terms that triggers pop-up advertisements on SaveNow users' computers. (Tr. at 134.) In so doing, Defendant WhenU.com “uses” Plaintiff's mark, by including a version of Plaintiff's 1-800 CONTACTS mark, to advertise and publicize companies that are in direct competition with Plaintiff.”
A.The Telephone Number Cases
B.The Early Cybersquatting Cases
C.The Gripe Site and Related Cases
D.The Metatag Cases
III.The Current Case Law
A.The U.S. Pop-Up Advertising Cases
B.The U.S. Keyword Advertising Cases