Earlier cases

By Matthew Broersma  |  Posted 2005-02-14 Print this article Print

The Louis Vuitton and Le Meridien cases found this practice to be trademark infringement, but they were only the latest in a string of similar cases on both sides of the Atlantic, legal observers said. In 2003 two French travel firms, Viaticum and Lucetiel, successfully sued Google for allowing their trademarks "Bourse des Vols" and "Bourse des Voyages" to be used as metatags by competitors. In 2000 a German court reached a similar conclusion in a case involving online cosmetics retailer iBeauty, the search engine Excite.com and the keywords "Estee Lauder," "Clinique" and "Origins." In the United States, a substantive judgment was handed down in a 1999 case, Brookfield Communications Inc v West Coast Entertainment Corporation, which favored the trademark holder. West Coast had planned to use the "moviebuff.com" domain name and a similar metatag for its Web site; the court ruled that this infringed on the Brookfield trademark "Movie Buff" on the basis of "initial interest confusion." In other words, West Coast would be misappropriating the goodwill associated with Brookfields trademark, even though users might "realise immediately upon accessing moviebuff.com that they have reached a site operated by West Coast and wholly unrelated to Brookfield," the court stated.
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In January 2004, an appeals court decided that the idea of "initial interest confusion" needed to be reconsidered in the case Playboy Enterprises Inc. v Netscape Communications Corp., ruling that the case could proceed to a full trial. Playboy had accused Netscape of infringing its trademarks by selling "playboy" and "playmate" as keywords to trigger banner advertisements; the parties have now settled. "Is [initial interest confusion] unfair competition? Arguably not," said Abida Chaudri, an associate solicitor with London-based law firm Bristows. "Were all IT literate these days, and we know that when you put a search term into Google there will be results other than the exact site were looking for." The GEICO decision reinforced this point of view; another case involving American Blind & Wallpaper Co., Google and other search engines remains to be decided. The GEICO case aside, Chaudri believes a consensus is emerging in the United States and internationally that the sale of keywords and metatags can constitute trademark infringement and unfair competition. "I think thats the way it will go," she said. Next Page: Lack of clarity.


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