Rescuecom Corp. v. Google, Inc.

562 F.3d 123 (2d Cir. 2009)

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Nature of the Case

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Facts

P is a national computer service franchising company that offers on-site computer services and sales. P conducts a substantial amount of business over the Internet and receives between 17,000 to 30,000 visitors to its website each month. P advertises over the Internet, using many web-based services, including those offered by Google. 'Rescuecom' is their registered federal trademark, and there is no dispute as to its validity. Despite the lauding assist to the public in the court diatribe on this case, Google manipulates ALL OF ITS SEARCH RESULTS. None of the results are what is called organic and natural. Google makes almost all its money by manipulating search results. When a searcher uses Google's search engine Google places advertisements on the user's screen. If the searcher clicks on the link, she will open the advertiser's website, which offers not only additional information about the advertiser but also perhaps the option to purchase the goods and services of the advertiser over the Internet. Advertisers purchase keywords to trigger such ads. Google also employs a Keyword Suggestion Tool that recommends keywords to advertisers to be purchased. Google's Keyword Suggestion Tool, will suggest to a purchasing Company to buy keywords that related directly to that purchasing Company's keywords including the competitor's brand name and trademark. Thus the purchasing company's ads will appear every time a competitor's brand name and trademark appears from the alleged organic search results, but which are heavily manipulated. P alleges that a user might easily be misled to believe that the advertisements which appear on the screen are part of the organic relevance-based search result and that the appearance of a competitor's ad and link in response to a searcher's search for Rescuecom is likely to cause trademark confusion as to affiliation, origin, sponsorship, or approval of service. P alleges that Google fails to label the ads in a manner that would clearly identify them as purchased ads rather than search results. Google makes 97% of its revenue from selling advertisements through its AdWords program. Google, therefore, has an economic incentive to increase the number of advertisements and links that appear for every term entered into its search engine. Google has recommended the Rescuecom trademark to P's competitors as a search term to be purchased. D's competitors have purchased P's trademark as a keyword. The District Court granted Google's 12(b)(6) motion and dismissed P's claims. The court believed that the 1-800 decision compels the conclusion that Google's allegedly infringing activity does not involve use of P's mark in commerce. Google claims its actions are not a 'use in commerce' under the Lanham Act because the competitor's advertisements triggered by Google's programs did not exhibit P's trademark. The court rejected the argument that Google 'used' P's mark in recommending and selling it as a keyword to trigger competitor's advertisements because the court read 1-800 to compel the conclusion that this was an internal use and therefore cannot be a 'use in commerce' under the Lanham Act. P appealed.