Search engine shenanigans!


Friday, September 23, 2011
John Goddard Business Reporter
A trick that sends a company to the top of an Internet search list is raising legal questions about trademark use.
Google and other search engines sell keywords to firms and organizations looking to elbow their way to search result No. 1.
For example, Toronto newspapers might pay Google for the keywords “Toronto news.” A user who types “Toronto news” into the search window will get their site as the top result and might tend to read it instead of those of its rivals.
Some companies also buy a rival’s trademark as a keyword, pushing them ahead as the top result instead of their rival.
"One issue is fairness — is it fair for company A to use B’s trademark,” said intellectual property lawyer Sheldon Burshtein, a partner at Toronto law firm Blake, Cassels & Graydon.
So far, court judgments have been all over the place, said Burshtein, who is to present the matter on Monday to an Osgoode Hall Law School conference, “Protecting Your Brand on the Web in Social Media.”
To have a chance in court, the trademark owner must show both that a rival has used the trademark and that by doing so has caused confusion, Burshtein said in an interview this week.
Different rules apply to different jurisdictions, he said, but to prove “use” usually means the trademark must be visible. An Internet searcher never sees one firm using another’s trademark.
Confusion might be temporary and hard to prove, Burshtein also said.
A person might go to the Internet to buy a book. The customer types bookseller “A” into the search box, clicks on the first entry and instead gets bookseller “B,” who has paid for A’s name as a keyword.
The customer might realize that he or she has arrived at bookseller B and decide to buy to book there anyway.
Bookseller A has lost a sale but the customer has knowingly bought from the rival. Can bookseller A prove confusion?
Search engines such as Google sell keywords for limited amounts of time, Burshtein said, sometimes leading to a type of auction.
The Toronto Star might buy “Globe and Mail” as a keyword term for a penny a hit. When the contract expires, the Globe and Mail might buy the term back for 1.1 cents. The Sun might buy it later for 1.2 cents, The Globe and Mail for 1.3 cents, and so on.
Google gets richer. A company keeps paying more and more for its own trademark as a keyword. Eventually, the company might want to go to court.
In the United States, a case will likely have to go to the Supreme Court before the issues are clarified, Burshtein said.
In Europe, a handful of decisions by the European Court of Justice have settled some issues. One is that a rival’s trademark can be purchased as a keyword as long at that trademark does not appear on the purchaser’s website.
In Canada, only two cases have come to trial.
A Quebec chocolate company bought a rival company’s name as a keyword and a B.C. a career college bought the names of similar B.C. colleges as keywords.
In both cases, the challenges were dismissed and core legal issues remained unaddressed, Burshtein said.
The “Protecting Your Brand” conference runs all day Monday at Osgoode Professional Development Centre, 1 Dundas Street West with Burshtein’s talk beginning at 1:15 p.m. Other topics covered include “Dealing with Cybersquatters” and “Responding to Gripe Sites.”
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