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By Tim Bourne Keep your keywords close Dealing with unauthorized trademark use in search engine advertising. I n 2010, Google earned US$28 bil- lion in advertising revenues. Thus it is no surprise that Google is vigorously defending its AdWords program, the main source of such revenues, in the United States Court of Appeals. In the coming months, the court will issue a decision. The outcome is important for Canadian trademark owners because Google's trademark use policies in Canada and the U.S. are identical. Also, Microsoſt has re- cently modified its policy to resemble Google's. Before discussing the appeal, an explanation of the types of unau- thorized online use and search engine trademark use policies is in order. How a trademark may be employed Google has been aggressively promoting its AdWords program in Canada. The program permits a web site operator to pay for an advertisement to appear as a sponsored link to the web site, above or to the right of the organic results generated by a search query. The main aspect of the program is that the web site operator buys a keyword, thus causing the sponsored link to be generated when the keyword is employed as a search term. The keyword may be a competitor's trademark. The Ad- Words participant also determines the text that appears within the advertisement, which may lead to more overt unauthor- ized use of trademarks. Outline of search engine policies Google's policies for responding to com- plaints regarding online search advertising vary by jurisdiction. The policy applied in Canada and the U.S. is the least restrictive. Google will resist investigating a com- plaint if it does not address the content of advertising text. Therefore Google expects a trademark owner to correspond directly with a competitor who has purchased a trademark as a keyword. Microsoſt ex- pects the same from trademark owners concerned about Bing and Yahoo search results arising from the sale of keywords through Microsoſt's adCenter program. Google's policy also outlines the per- mitted use of third-party trademarks within advertising text. Such use is per- mitted when the trademark appears on a web site corresponding to the sponsored link: • In a generic manner and not to refer- ence the trademark owner; • Which web site provides information regarding the trademarked goods or services, assuming that the web site is not meant to facilitate the sale of com- peting goods or services; • Which web site sells replacement parts, components, or products compatible with the trademarked goods or servic- es; or • Which web site resells the trademarked goods or services. Background regarding appeal Rosetta Stone sells language learning products and owns various U.S. registra- tions for the trademark Rosetta Stone. The company realized advertisers were using sponsored links to misdirect Google us- ers to web sites selling counterfeit Rosetta Stone products or falsely implying a con- nection to Rosetta Stone. The company sued, alleging Google, through its Ad- Words program, assisted others to mislead consumers and misappropriate Rosetta Stone's trademarks by using such trade- marks as keywords and in advertising text. The trial court granted Google's mo- tion for summary judgment. Among other findings, it held that Google could not be held liable for intentionally induc- ing advertisers selling counterfeit Rosetta Stone products to use the trademarks. Strategies for limiting unauthor- ized online use of trademarks Trademark owners should institute poli- cies to combat unauthorized online use of trademarks. Online search audits can identify unauthorized trademark use. There is an online complaint process to notify both Google and Microsoſt of un- authorized use of trademarks in advertis- ing text. The online forms submitted to both search engine providers require the inclusion of trademark registration num- bers, which is yet another reason for regis- tering a trademark. There is no citable Canadian case law addressing the issue of unauthorized use of trademarks as keywords. The case of Private Career Training Institutions v. Van- couver Career College considered a pri- vate college's purchase of its competitor's trademarks as keywords. In upholding the trial court's conclusion that there was no liability, the appeal court decided the outcome depended upon a bylaw governing private colleges rather than trademark law. The lack of Canadian jurisprudence introduces even more uncertainty into the decision of wheth- er to commence legal proceedings if a complaint cannot be resolved amicably. Finally, the trademark owner should consider aggressively bidding to pur- chase its own trademarks as keywords for all search engines. IH Tim Bourne practises trademark law with Ridout & Maybee LLP's Ottawa of- fice and has a special interest in the un- authorized online use of trademarks. INHOUSE OCTOBER 2011 • 9