Implementing a Safe Harbor

C. Immunize Search Providers

2. Implementing a Safe Harbor

Search providers could be immunized from liability using a rigorous definition of trademark "use" under the Lanham Act. Not every trademark reference is a "use." The Lanham Act says a trademark is in "use in commerce" in the following two circumstances:

( l ) on goods when . . . it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and .

. . (2)

on services when it is used or d· I ISp aye In t e sa e or a vertlSlng d . h i d

.

. 0 fservIces . . . . ' 347

342 See Lemley, supra note 178.

343 Cf Bally Total Fitness Corp. v. Faber, 29 F. Supp. 2d 1 161, 1 165 (C.D. Cal. 1998) (discussing how depriving publishers of the right to use indexable words would make the publisher effectively invisible).

34 See George J. Stigler, The Economics of Informntion, 69 J. POL. EcON. 213 (1961).

345 See Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734, 756 (E.D. Mich. 2(03) ("Harm to WhenU would harm the public as well. WhenU benefits participating consumers by improving access to relevant, useful and money-saving information about products and services that interest them. WhenU's advertisements increase the choices available to consumers and thereby promote competition."); Elkin-Koren,

supra note 30, at 185 ("Decentralized competition among search engines is therefore essential for keeping a competitive market in electronic commerce."); Klein & Glazer, supra note 206, at 1063.

346 See Nadel, supra note 238.

The words "placed" and "displayed" make this definition fairly explicit. Consumers need to

perceive

the trademark before the mark is being used in commerce.348

If

_{the alleged junior user does not use the trademark in a}

perceivable manner, such as in marketing actually presented to potential consumers, the use cannot confuse consumers about a product' s source.349 This is particularly true when Internet searchers have no clear understanding about search providers' technical operations.

Cases addressing whether a search provider uses a trademark are split: Two cases involving the adware defendant WhenU.com held that automated keyword associations do not "use" the trademark,35o one WhenU.com case directly and deliberately contradicted those two opinions,351 the

GEICO

opinion (in the context of keyword-triggered ads sold by search engines) cast its vote with the latter WhenU.com opinion,352 and the

Playboy

opinion punted on this question by saying that it did not need to decide if liability was based on direct or contributory infringement. 353

While these authorities indicate the divisive nature of the question, the cases suggesting search providers "use" trademarks are both contrary to the statute and detrimental to search efficiency. Search providers do not "use" a trademark regardless of the editorial role played by search providers. This argument is not based on treating the search providers as passive conduits for the dissemination of publisher content. Instead, search providers should make editorial decisions about how third party trademarks can be used in their systems to help searchers achieve their search goals.

348 Widmaier makes this point in a very detailed and compelling argument. See Widmaier, supra note 3 1 8; see also Dogan & Lemley, supra note 166, at 799, 820 (noting that trademark use requires the defendant to actually market goods and services under the trademark); Michael R. Sees, Comment, Use of Another 's Trademark in a Web Page Meta Tag: Why Liability Should Not Ensue Under the Lanham Act for Trademark Infringement, 5 TEx. WESLEYAN L. REv. 99 (1 998).

349 See, e.g., DaimletChrysler AG v. Bloom, 3 1 5 F.3d 932, 939 (8th Cir. 2(02); Holiday Inns, Inc. v. 800 Reservations, Inc., 86 F.3d 619 (6th Cir. 1 996).

350 See V-Haul In!'I, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723, 728 (E.D. Va. 2(03) (noting, among other things, that WhenU.com "merely uses the marks for the 'pure machine-linking function'''); Wells Fargo,

293 F. Supp. 2d at 762 ("WhenV does not use any of the plaintiffs' trademarks to indicate anything about the source of the products and services it advertises"); see also Bird v. Parsons, 289 F.3d 865, 877-79 (6th Cir. 2(02) (regarding a website that auctions domain names, "[tJhe possibility that its customers might buy or sell infringing domain names does not alter the fact that Aftemic does not use those names").

351 See 1-800 Contacts, Inc. v. WhenV.com, 309 F. Supp. 2d 467 (S.D.N.Y. 2(03).

352 See Gov't Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 704-05 (E.D. Va. 2004).

To ensure some breathing room for search providers to make those editorial

judgments and to solve the hard relevancy problem, ultimately legislative

intervention-like the registrar safe harbor in the Anticybersquatting

Consumer Protection Act-may be appropriate. For now, however, the public

would greatly benefit from judicial recognition of the hazards of creating

search provider liabilitls and a strict statutory reading of "use in commerce"

under the Lanham Act. 54

CONCLUSION

The Internet is one of the great democratizing technologies, ranking

alongside Gutenberg' s printing press and the rise of public libraries. Among

other attributes, it democratizes communication by fully empowering users to

search for information using their own words, rather than being constrained by

words selected by some editorial intermediary.355 For the first time, searchers

and publishers need not rely upon the words selected by intermediate editors.

Trademark law threatens to take away what technology enables. At a time

when keywords show unprecedented promise to empower searchers, the legal

system is interposing itself as the new intermediary to guarantee content

relevancy. Unfortunately, any effort to legally impose content relevancy is

destined to fail dramatically. Blunt legal instruments cannot make the nuanced

judgments required to deliver content that searchers find relevant.

The collateral costs of trademark law's "war on relevancy" in Internet

searching are substantial. Minority definitions of words may become invisible,

shrinking our lexicon. Criticism of trademarks may become risky and

imperiled. Trademark owners are legally mandated to gamer attention at the

expense of all others, increasing search costs for searchers with different

expectations or desires. Cumulatively, these effects may increase overall

search costs by hampering the ability of searchers to use keywords to find what

they want.

354 See Dogan & Lemley, supra note 166, at 838 (arguing that existing trademark law is '1ust fine," it just needs to be applied with restraint).

355 For example, the library card catalog was organized by keywords chosen by the librarians. A searcher who wanted to search on some other keyword simply could not do so. The same phenomenon occurs with every publication with an editorially-produced index, such as books, Yellow Pages and magazine indexes. See

Nielsen, supra note 14 ("A typical comment is: '1 don't want to have to navigate this site the way they want me to. 1 just want to find the thing I'm looking for. ''').