A recent survey among in-house and outside trademark counsel conducted by the World Trademark Review found that among both groups, keyword advertising ranks among the top three leading concerns. See Adam Smith, Rewriting the Contract Between In-House and External Counsel, (WTR June/July 2011). Certainly a scan of the legal literature and CLE offerings would bear this out. Yet, this author discovered through an audience poll at a recent Practicing Law Institute presentation, attended by a solid sampling of intellectual property attorneys, many of whom acknowledged representing major brand-name companies, that virtually no one would recommend to a client to bring suit against a third-party buying keyword ads based on one of those brands. Only one wavering hand voted “maybe.” No one endorsed such action hands down. Despite a great body of precedents and an even greater body of commentary, the heads present, who undoubtedly knew more than most about the subject, seemed more inclined simply to throw up their hands than take up arms. Indeed, in more than a decade since the first decision in Playboy Ent., Inc.v. Netscape Commun’s Corp., 55 F. Supp. 2d 1070, 1086-88 (C.D. Cal. 1999), rev’d, 354 F. 3d Cir. 1020 (9th Cir. 2004), there have been at most a small handful of final decisions giving meaningful guidance as to when or if keyword ads are permitted or precluded. Playboy itself was simply a non-final reversal and remand of a decision granting summary judgment dismissing the plaintiff’s infringement claim.
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