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Trademark law is a consumer protection law, designed to prevent companies from passing off their products as someone else’s. It doesn’t prevent a company from comparing its products to another company's, it doesn’t prevent resellers from accurately pointing out what products they have for sale, and it doesn’t prevent a company from marketing itself to consumers who have expressed an interest in a competitor’s products by, for example, buying advertising that appears when users search for the name of a competitor’s product. Necessarily, it can’t be used to stop search engines like Google, Bing, and Yahoo from engaging in their common practice of selling the keyword advertising space that enables these kinds of uses.
A lot of trademark owners disagree, and argue for a much more expansive view of trademark law that makes it more like copyright, and which would give them the power to forbid any use of the names of their products in contexts they don’t like. Rosetta Stone, the language software company, holds this position in a current lawsuit against Google.
In that case, on Monday afternoon, Public Knowledge (joined by EFF) filed a brief (PDF link) with the Fourth Circuit Court of Appeals asking it to reject the expansionist view of trademark. There are a lot of good arguments to keep trademark law from evolving into a kind of property over words. In our view, it’s best if “uses” of a trademark that don’t involve passing-off or fraud are not viewed as the kind of “uses” that trademark law cares about to begin with--thus keeping the matter out of court to begin with.
The law only forbids the “use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or to cause mistake, or to deceive.” Now, “in connection with the sale … of any goods” is a pretty broad phrase. Keyword or comparison advertising probably shouldn't meet even that test--otherwise, you sweep in much non-deceptive commercial speech.
There are other fruitful lines of analysis. For instance, you could also argue that these activities are inherently non-confusing or that the First Amendment protects them. But many courts have held that trademark laws don’t even apply to a use that is not a use as a trademark—in this case, keywords or comparisons are not being used to pass off Google’s goods, or those of its typical advertisers, as coming from Rosetta Stone. As the law makes clear, a word or phrase is only a "mark" to the extent it used to identify the source of goods. If words aren't used for that purpose, they're not marks. It shouldn’t even be necessary to argue the next step—that the uses are non-confusing. Situations where particular “uses” are alleged that are not “trademark uses” should be thrown out of court. There should only be liability for trademark uses that are demonstrated to be confusing—provided, of course, that they aren’t constitutionally-protected speech, as in the case of parodies like the Yes Men. The burden should not be on ordinary users of trademarks for valid speech or marketing purposes to demonstrate that they’re not being “confusing” about what they’re doing. As long as a user isn't being fraudulent, it shouldn't be dragged into court.
This is an unsettled area of the law, so we’ve also argued that even if these sorts of uses are considered trademark uses, they should be presumptively fair uses. The fair uses doctrine in trademark is a bit messier than it is in copyright, but it’s necessary in both areas of the law.
There has been a nonstop barrage of online trademark cases wending their way through the courts for years. But more recently, the signs have been good. Rescuecom, a company that had been pursuing a case against Google for years, dropped it after it was sued for the very same things it accused Google of. eBay recently won a great victory for the freedom of online commerce, and the Supreme Court declined to hear an appeal. Let's hope that the trend continues with this case.