Googling a Trademark: A Comparative Look at Keyword Use in Internet Advertising

Summary I. Introduction 232 II. Keyword Advertising: How It Works 234 III. Keywords in The European Union 235 A. Legislative Background in the EU 235 B. Preliminary Rulings from the European Court of Justice: Google France & Google and BergSpechte 236 1 . Background of the Cases 236 2. The Holdings of Google France & Google and BergSpechte 238 3. The ECJ's Legal Framework for Analyzing Keyword Cases 239 IV. EU Member States on Keyword Liability and the Impact of the ECJ Preliminary Rulings in National Courts 242 A. Using Trademarks as Keywords in Germany 242 1. German Case Law 242 2. The Impact of the ECJ and BGH decisions on German Keyword Cases 244 B. Trademarks and Keywords in the United Kingdom 245 1. Case Law in the United Kingdom 245 2. The Impact of the ECJ Opinions on Keyword Cases in the United Kingdom 247 C. Trademarks and Keywords in France 248 1. Keyword Case Law in France 248 2. Questions Referred to the European Court of Justice 249 V. The United States 249 A. Legislative background 249 B. Case Law in the United States 250 1. Keyword Use in the Second Circuit 250 2. Outside the Second Circuit 251 C. The Legal Framework in the United States 253 VI. Comparing the European Union and the United States 255 VII. Conclusion 256 I. Introduction The act of typing a keyword into an internet search engine has become part of our culture, its results immediately familiar. The actual inner workings of how those results are provided are, it is fair to say, mostly unknown to the general public. It is simply assumed that if you ask, it shall be given to you; seek, and you shall find.1 These words from Advocate General Poiares Maduro of the European Court of Justice, delivered in a much-anticipated advisory opinion on the issue of keyword advertising,2 capture the essence of an internet search. It can be argued that nearly every major brand one can think of has an internet presence in an attempt to capitalize on the potential revenue that can be generated through internet sales.1 Because of the internet's potent impact on the economies of countries worldwide, the issue of using trademarks as keywords in internet advertising has become an important topic and a much-litigated issue in both Europe and the United States. …