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Keyword Ads and Trademark Infringement in 2009 - An Update on the Latest Case-Law in the US and Europe Which Could Make or Break the Search Engine Industry


April 23, 2009 12:45pm - 2:00pm

Room Offsite


Speaker: Alexander Tsoutsanis is an attorney with DLA Piper and involved in one of the ‘keyword ad’ cases currently litigated before the European Court of Justice. He is also a Visiting Professor at UC Hastings College of the Law and an Assistant Professor in Intellectual Property Law at Leiden Law School in the Netherlands.

This event is free and open to the public. Lunch will be served.

To attend please RSVP by April 22, 2009 to Jackie DelBarrio at

Despite the economic turmoil keyword advertising is still hot business. For advertisers it remains a great tool for generating business and for search engines keyword advertising has quickly become a multibillion dollar industry. However, apart from generating business, it also generates liabilities, both for search engines and its advertisers. After a decade the legal status of keyword advertising is still unclear, especially with regard to using third party trade marks as keywords. Over the years, there has been fierce litigation and extensive debate on this question across the globe.

In the past few months, there have been key developments both in the United States and Europe. For example, on April 3rd the 2nd U.S. Circuit Court of Appeals handed down its long awaited decision in Rescuecom v. Google. In Europe the (in)admissibility of keyword ads is also a hot issue: in the past year the courts in France, Austria, the Netherlands and Germany have all referred cases to the European Court of Justice (ECJ) involving fundamental questions on how to apply existing trade mark legislation to the online environment of keyword advertising. Given that the rulings of the ECJ extend to 27 European countries and over 500 million consumers, the outcome of those rulings are likely to have a big commercial impact on the business model of search engines.

Notwithstanding the different circumstances in each case, the key questions in US and European case-law are fairly similar and often boil down to determining whether exploiting third party trade marks as keywords constitutes ‘use in commerce’ by the search engine or advertiser and whether such use may result in ‘likelihood of confusion’. Other issues involve exploring the (in)applicability of common defenses such as fair use and the first sale doctrine, especially in case of keyword ads being used by resellers.

This lecture will discuss the latest US and European case-law on the admissibility of keyword ads and is open to all students, lawyers and other practitioners interested in advertising and trademark issues on the internet.

For more information about the Transatlantic Technology Law Forum, please visit

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