Confusion Reigns in Conflicting Keyword Internet Search Cases

The US District Court for the Southern District of New York has dismissed trade-mark infringement allegations made by Merck & Co Inc (Merck) against several Canadian online pharmacies. The pharmacies purchased "Zocor", the name of Merck's cholesterol reduction drug, as a keyword to trigger the display of links to the online pharmacies' web sites on search result web pages. The Court held that: "The 'Zocor' mark is 'used' only in the sense that a computer user's search of the keyword 'Zocor' will trigger the display of sponsored links to defendants' Web sites," and found that: "This internal use of the mark 'Zocor' as a key word to trigger the display of sponsored links is not use of the mark in a trademark sense." Allegations of trade-mark dilution and false advertising against the online pharmacies were not dismissed and will be considered at a later date. The Court's decision contradicts a recent ruling in the District Court for the District of Minnesota (Edina Realty Inc v TheMLSonline.com) which held that a purchase from a search engine of keywords which were variations of Edina Realty's business name to trigger advertisements by a competitor was a "use in commerce" and, as a result, could amount to trade-mark infringement. For a news report on the Merck case, see: http://news.com.com/2100-1030_3-6056754.html For the full 37-page decision of District Judge Chin in the Merck case, visit: http://makeashorterlink.com/?A2A0223FC For the reasons for judgment in the Edina Realty case (Edina Realty Inc v TheMLSonline.com, 2006 WL 737064, March 20, 2006), visit: http://makeashorterlink.com/?S4C0213FC Summary by: Clare McCurley