Online Publishing Law

In a recent case, T.D.I. International, Inc. v. Golf Preservations, Inc., No. 6:07-313-DCR, 2008 WL 294531 (E.D. Ky. Jan. 31, 2008), the Eastern District of Kentucky held, however cautiously, that keyword advertising might be a Lanham Act “use in commerce,” thereby declining to dismiss the Lanham Act claims there at issue.

In T.D.I. International, the Defendants had purchased Plaintiff’s trademark “XGD” as a keyword in order to improve the Defendants’ placement in search engine results.

The court stated the following: “In light of the uncertain state of the law on the specific issue presented in this case, the Court does not find the Defendants’ arguments sufficient to warrant dismissal of the Plaintiffs’ Lanham Act claims at this stage in the proceedings. Accordingly, the Court finds that the Plaintiffs have alleged facts sufficient to state a claim to relief that is plausible on its face.” Id. at 4.

In a footnote, the court did mention that although the Plaintiffs’ trademark claims mostly relate to search engine keyword advertising, the Plaintiffs “have explicitly alleged that the Defendants have otherwise used the XGD trademarks in a manner that violates the Lanham Act.” Id. The court did not describe the nature of these allegations, thus allowing for the possibility that these other allegations are supported by facts illustrating a use in commerce that does not involve keyword advertising.

In any event, the Second Circuit, contrarily, has held search engine keyword-buys are not a “use in commerce.” See, for example, FragranceNet.com, Inc. v. FragranceX.com, Inc., 2007 WL 1821153 (E.D.N.Y. June 12, 2007) and Merck & Co. v. Mediplan Health Consulting, 425 F.Supp.2d 402 (S.D.N.Y. Mar. 30, 2006).

Courts in other Circuits have held the opposite. See, for example, Edina Realty, Inc. v. TheMLSonline.com, Civ. 04-4371JRTFLN, 2006 WL 737064 (D.Minn. March 20, 2006); Buying for the Home, LLC v. Humble Abode, 459 F.Supp.2d 310 (D.N.J. 2006); and J.G. Wentworth SSC Ltd. v. Settlement Funding LLC, No. 06-0597, 2007 WL 30115 (E.D. Pa. Jan. 4, 2007).

Notably, the defendants did not appear to cite FragranceNet.com or Merck & Co., cases that stand for the proposition that buying another’s trademark as a keyword for improved search engine placement is not a “use in commerce.” T.D.I. International was filed 9/11/2007, so FragranceNet.com, Merck & Co., and Hamzik were available to be cited.

Accordingly, while the T.D.I. International case does not explicitly and unequivocally state that keyword advertising is a “use in commerce,” the court does leave the issue open, at least in the Eastern District of Kentucky, which is within the Sixth Circuit.