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Second Circuit: Google Keyword Ad Practices Are "Use in Commerce"

Second Circuit: Google Keyword Ad Practices Are "Use in Commerce"

A few days ago I discussed a decision by Massachusetts U.S. District Court Judge Nancy Gertner holding that purchase of a trademarked keyword to trigger a sponsored link on a search engine constitutes a “use in commerce” of the trademark under the Lanham Act (the Federal Trademark statute). (Earlier post here). In that post I mentioned that among cases addressing this issues, only the Second Circuit had held otherwise.

Now the Second Circuit seems to have changed its position on this issue. In Rescuecom v. Google, issued on April 3, 2009, the court reversed a motion to dismiss by the trial court, holding that Rescuecom properly alleged that Google’s keyword ad practices constituted a “use in commerce” under the Lanham Act.

In a somewhat unusual step, the court attached to its opinion an Appendix entitled “On the Meaning of “Use in Commerce” in Sections 32 and 43 of the Lanham Act.” The Appendix, which is described as dicta, discusses at some length the statutory history of the “use in commerce” phrase in the Lanham Act.

This decision appears to be a game-changer for Google, and will require it to modify its policies on selling key word search ads to competitors.

In Search of the Perfect Search

The issues associated with Electronically Discoverable Information (ESI) hang over the legal profession like the threat of Katrina II hangs over New Orleans. Lets face it: most judges and attorneys would do anything to avoid confronting the complexities of ESI. However, judges are good at forcing lawyers to face up to bad stuff, so it’s impossible to avoid the subject.

Of course, in a huge case involving large sums of money it’s no problem hiring a consulting firm that does all the work for the lawyers, and guides them every step of the way. However, that’s only 1 case in 100, if that. What about all the “little cases,” where expensive consultants are not an option?

The answer, not surprisingly, is the “keyword search.” After all, if we can search a trillion documents using Google, why not use key word search to find documents relevant to litigation.

Sadly, key word search is not very reliable. For example, if you have a million documents how would you formulate a key word search that would be certain to collect documents that relate to to people under age 12?  In fact, recently the courts have noted the shortcomings of key word searching and criticized its use.

An excellent article in the April 2009 ABA Journal discusses these issues in some detail, and the good news is that some “very smart people” are working on a solution. The bad news, as I said, is that key word search is not very reliable, and this poses a problem until the problem is solved by these masterminds. To quote from the article:

It would be the ultimate discovery for e-discovery: a perfect method to turn terabytes of digital data into a collection of case-relevant documents.

Three years ago, a handful of lawyers and scientists started the quest, a project to save litigation from being bur­ied in an avalanche of electronic documents. Since then, the Text Retrieval Confer­ence Legal Track has been using different types of computer searches to wade through huge piles of digital in­formation, hoping to get closer to a complete picture of what is issue-important in a computer’s data stores.

The good news: The TREC Legal Track team believes it is close to finding a protocol that can work. The bad: The project also found disturbing problems with the way lawyers work today.

And the harshest conclusion: Key­word searching—what most law­yers use to find litigation documents—misses the majority of relevant documents. Or as Jason Baron, one of the Legal Track study coordinators, puts it, “Lawyers need to understand that the way they have been searching for electronic documents has some serious flaws.”

So, just what is the “TREC Legal Track”? Well, the TREC Legal Track web page has a number of documents that discuss the efforts underway. The papers are, based on my perusal, not for the faint of heart – they involve technical assessments of the effectiveness of various search. Lets hope we can get by on old-fashioned key word searches until the happy day arrives when the TREC folks, or someone, finds that protocol.