Trademarks as Search Engine Keywords: Much Ado About Something?

Harvard Journal of Law and Technology, Vol. 26, Number 2, 2013

Illinois Program in Law, Behavior and Social Science Paper No. LBSS12-15

Univ. of San Francisco Law Research Paper No. 2012-20

7th Annual Conference on Empirical Legal Studies Paper

66 Pages Posted: 7 Sep 2012 Last revised: 28 Jan 2014

David J. Franklyn

Golden Gate University - School of Law

David A. Hyman

Georgetown University Law Center

Abstract

Disgruntled trademark owners have filed more than one hundred lawsuits in the United States and Europe, claiming that their trademarks should not be sold by search engines for use as keywords. Despite the volume of litigation, there has been little independent empirical work on consumer goals and expectations when they use trademarks as search terms; on whether consumers are actually confused by search results; and on which entities are buying trademarks as keywords. Instead, judges have relied heavily on their own intuitions, based on little more than armchair empiricism, to resolve such matters.

We report on the results of a two-part study, including three online consumer surveys, and a coding study of the results when 2,500 trademarks were run through three search engines. Consumer goals and expectations turn out to be quite heterogeneous: a majority of consumers use brand names to search primarily for the branded goods, but most consumers are open to purchasing competing products. We find little evidence of consumer confusion regarding the source of goods, but only a small minority of consumers correctly and consistently distinguished paid ads from unpaid search results. We also find that the aggregate risk of consumer confusion is low, because most of the ads triggered by the use of trademarks as keywords are for authorized sellers or the trademark owners themselves. However, a sizeable percentage of survey respondents thought it was unfair and inappropriate for one company to purchase another company’s trademark as a keyword, independent of confusion as to source.

Although we do find some evidence of confusion, the types of confusion we document do not map neatly onto the categories recognized by U.S. trademark law. Our findings suggest that the development of the doctrine in this area has not been well served by the reliance of judges on casual empiricism in resolving these disputes. Much remains to be done to ensure that trademark doctrine “fits” the on-line context, and that it is applied in ways that are empirically grounded.

Keywords: trademark keywords, infringement internet, search engine

JEL Classification: D23, K11, O34

Suggested Citation:

Franklyn, David J. and Hyman, David A., Trademarks as Search Engine Keywords: Much Ado About Something?. Harvard Journal of Law and Technology, Vol. 26, Number 2, 2013; Illinois Program in Law, Behavior and Social Science Paper No. LBSS12-15 ; Univ. of San Francisco Law Research Paper No. 2012-20; 7th Annual Conference on Empirical Legal Studies Paper. Available at SSRN: https://ssrn.com/abstract=2110364 or http://dx.doi.org/10.2139/ssrn.2110364


The Problem of Mop Heads in the Era of Apps: Toward More Rigorous Standards of Value Apportionment in Contemporary Patent Law

Vol. 98, Journal of the Patent and Trademark Office Society 182

Univ. of San Francisco Law Research Paper No. 2017-07

42 Pages Posted: 25 Apr 2017 Last revised: 21 Jun 2017

David J. Franklyn

Golden Gate University - School of Law

Adam Kuhn

University of San Francisco

Date Written: August 10, 2016

Abstract

In 1884, the U.S. Supreme Court rejected a damage claim on a patented mop head improvement for failure to apportion profits attributable to the patented feature against the entire mop. 130 years later, jurists deal with the same core challenge of damage apportionment except with much more complicated products. Given the fact that as many as 250,000 patents impact the average consumer smart phone, can anyone say confidently that any single one of these patents drives consumer demand for the whole product or even for any particular feature of the product? And if not, how much worth does any one patent have in relation to the value of the entire product? For example, what portion of the sales price of an iPhone is attributable to a particular individual feature of that phone, such as the ability to use FaceTime?

Keywords: Intellectual property, patent, apportion profits, damage apportionment, product value

Suggested Citation:

Franklyn, David J. and Kuhn, Adam, The Problem of Mop Heads in the Era of Apps: Toward More Rigorous Standards of Value Apportionment in Contemporary Patent Law (August 10, 2016). Vol. 98, Journal of the Patent and Trademark Office Society 182 ; Univ. of San Francisco Law Research Paper No. 2017-07. Available at SSRN: https://ssrn.com/abstract=2957950


Debunking Dilution Doctrine: Toward a Coherent Theory of the Anti-Free-Rider Principle in American Trademark Law

Hastings Law Journal, Vol. 56, 2004

52 Pages Posted: 5 Mar 2008  

David J. Franklyn

Golden Gate University - School of Law

Abstract

This Article argues that American dilution law purports to be about preventing dilutive harm, but the real purpose is to stop free-riding on famous marks. On its face, dilution law remains a harm-based doctrine that focuses on whether the unauthorized use of a famous trademark causes the famous mark to lose its commercial appeal or selling power. However, the hidden interest behind dilution law is a desire to punish free-riding. For instance, plaintiffs frequently win on their dilution claims despite the fact that proof of dilutive harm is remote and tentative at best, but free-riding seems obvious. These claims may involve trademarks, domain names, the internet, and the right of property.

Since the stated purpose of dilution and the hidden interest are mismatched American dilution law focuses too much on harm and not enough on the anti-free-riding impulse and its limits. Consequently, impairs judges from identifying the real competing interests at stake resulting in too little or too much protection to famous mark owners. It also does not allow judges to turn the anti-free-riding impulse into carefully circumscribed set of principles with identifiable limits and regulations.

Therefore, this Article argues that it would be better to abandon dilution altogether and swap it with an independent cause of action that explicitly prevents free-riding in appropriate circumstances.

Keywords: trademark, dilution doctrine, anti-free-rider principle, free-riding, famous marks, domain names

Suggested Citation:

Franklyn, David J., Debunking Dilution Doctrine: Toward a Coherent Theory of the Anti-Free-Rider Principle in American Trademark Law. Hastings Law Journal, Vol. 56, 2004. Available at SSRN: https://ssrn.com/abstract=1100015