Wolf Greenfield Joins Leading Organizations Exploring Trademark Issues in a Digital Culture
January 2012Lawyers from Intellectual Property law firm Wolf, Greenfield & Sacks, P.C.’s Trademark Group recently filed an amicus brief before the Massachusetts Appeals Court on behalf of the Boston Patent Law Association (BPLA) in Jenzabar, Inc. v. Long Bow Group, Inc.
Advances in communication have given rise to a number of new ways to publish, present and share information on the Internet which prompts the need for a fresh look at the interpretation of trademark law. Jenzabar explores the issues faced by any company doing business on the Internet and the potential exploitation of trademarks by third parties who engage in search engine optimization (SEO).
In the brief, the BPLA argues that improper search engine optimization (SEO) can lead to trademark infringement. The brief maintains that permitting parties to use trickery to draw viewers to their Web pages has no apparent value and can potentially cause harm to a brand while frustrating Internet users. In addition, displaying another’s trademark as a title tag with ambiguous descriptive language causes “initial interest confusion” regardless of a site’s content on the following basis:
- Even if consumers would not be confused after clicking on a link, they have still been tricked into visiting a site they would not have otherwise visited
- Using a trademark to trigger confusing links and advertisements is infringement even absent direct competition or a commercial motive
The BPLA also maintains that since domain names are less relevant now than they were a few years ago, Internet users typically utilize search engines for the majority of their Web browsing needs. As a result, allowing parties to use trademarks to confuse and divert consumers on the internet would drastically decrease the ease with which the average consumer could navigate through search results.
The BPLA concludes if Jenzabar is upheld, it would require courts to look not only at the allegedly infringing domain name, but also to the underlying content of the website. The BPLA believes such an approach would leave infringers free to cause any amount of confusion in search engine results as long as they address that confusion on the linked website. The BPLA believes this bright line requirement should be rejected to best protect the overall brand and integrity of a company in the ever evolving Internet landscape. This approach also balances First Amendment concerns against the rights of trademark holders by allowing parties to use trademarks and SEO to include their website in a list of search results displayed after a trademark is searched for so long as the displayed link and accompanying test is not confusing. There is no reason to allow bad actors to pollute search results by exploiting the goodwill of a trademark holder.
Wolf Greenfield attorneys Douglas R. Wolf and Anderson J. Duff participated on the brief.
