Seattle Trademark Lawyer

I’ve talked before about the PRO-IP Act (signed Oct. 13, 2008), which amended the Lanham and Copyright Acts as part of Congress’ most recent attempt to crack down on counterfeiters and copyright infringers. On the trademark side of things, the Act doubled the range of statutory damages available in counterfeiting cases (to the range of $1,000 to $200,000 and up to $2 million if the counterfeiting is willful) and clarified that treble damages and an award of attorney’s fees are mandatory in willful counterfeiting cases regardless of whether the defendant is a direct, vicarious, or contributory infringer. 

I mention this not only because I have PRO-IP on the brain but more importantly because I came across an excellent introduction to the statute. It’s an article that attorneys Stephen J. Zralek and Dylan Ruga were good enough to publish in the Jan./Feb. 2009 issue of Landslide, a great ABA publication. As far as I can tell, this is the best summary of the Act yet — not to be missed if you work in this space.

Since you asked (ok, one person asked), here are the slides from my presentation last week for Washington Lawyers for the Arts: “Bands and Brands: Essential Trademark Law for Musicians.” Hopefully they’re of interest.

Next up? This Thursday I’m speaking to the University of Washington’s Technology Law Society about the PRO-IP Act (STL post here). Can’t say as I’m an expert on this statute, but hopefully I’ll learn a little something between now and then.

Following is a teaser guest post by my partner, Bob Cumbow (though this and the last paragraph are mine):

For some time now, “keyword search advertising” has been a marketplace reality in the US. In the typical keyword search advertising situation, a search engine sells to an advertiser the right to have the advertiser’s ad or sponsored link appear whenever a user of the search engine inputs a particular search term. It’s become a common practice for search engines to suggest, and advertisers to choose, search terms that are the trademarks of the advertisers’ competitors. Thus, when a user keys in the name of a particular company, the resulting search results may be accompanied by an ad or sponsored link to a direct competitor of the company whose name was keyed in.

For several years, competitors have been using one another’s names in this way, while simultaneously asking whether this activity actually raises a legal issue over which a lawsuit could be filed. Indeed, several such lawsuits have been filed, and courts have differed in their findings. For the most part, courts have been troubled by whether keyword search advertising constitutes a “use” of another party’s trademark; because if it doesn’t, then there is no basis for a trademark infringement lawsuit. Most courts have found that it does constitute a use of a trademark, but have gone on to find either no liability for trademark infringement, or liability only on the part of the advertiser, not the search engine.

Recently the Second Circuit Court of Appeals handed down its long-awaited opinion in Rescuecom v. Google, reversing a longstanding trend in that circuit, and holding that keyword search advertising is indeed a use of another party’s trademark for which a search engine might be liable. What is the significance of this holding? What problems does it raise? And where does keyword search advertising go from here?

Bob answers these questions in his insightful article here. It’s a great read.