Internet Library of Law
and Court Decisions

Keying - Internet Library of Law and Court Decisions - Updated October 4, 2004

Court denies motion to dismiss brought by search giants Google and Overture, and allows plaintiff GEICO to proceed with trademark infringement and unfair competition claims arising out of defendants' alleged practice of selling advertising triggered by the entry of plaintiff's trademarks as search terms, which advertisements are displayed in the search results generated by such searches.

Reversing the decision of the court below, the Ninth Circuit Court of Appeals denied the motion of defendants Netscape Communications Corp. ("Netscape") and Excite, Inc. ("Excite")  for summary judgment, and allowed plaintiff Playboy Enterprises Inc. ("Playboy") to proceed with trademark infringement and dilution claims brought as a result of defendants' practice of keying banner ads for 'adult' products to plaintiff's trademarks.  Keying is a practice used by the operators of search engines to generate revenue via the sale of banner ads.  For a fee, the search engine operator will display an advertiser's ad along with, and on, a search results page, when a consumer types one of a series of designated terms into the operator's search engine.  In this fashion, defendants keyed the display of their clients' adult-oriented ads to plaintiff's marks.  The Ninth Circuit held that when the advertiser's banner ad is not labeled so as to identify its source, this practice could result in trademark infringement by application of the 'initial interest confusion' doctrine.  The Ninth Circuit accordingly refused to dismiss plaintiff's trademark infringement claims.  The Ninth Circuit further held that issues of fact also precluded the dismissal of plaintiff's dilution claims.

Judge Berzon wrote a concurring opinion, in which he sharply criticized Brookfield Communications, the Ninth Circuit decision from which the 'initial interest confusion' doctrine springs, and the overbroad interpretation he believes it has been given by other jurists. Specifically, Judge Berzon believes that keying clearly labeled ads to plaintiff's marks should not give rise to a trademark infringement claim because the consumer is not confused when he elects to visit the clearly labeled web site of the mark holder's competitor, in lieu of that of the mark holder.

The court denied plaintiff's motion for a preliminary injunction enjoining defendants from continuing to "key" advertisements for adult entertainment products to the words "playboy" and "playmate." Plaintiff Playboy holds federal trademarks in both "Playboy" and "Playmate," which marks it uses in connection with the sale of adult entertainment products. Defendants Netscape and Excite each operate search engines. For a fee, defendants will display an advertiser's banner ads in random rotation on web pages containing the results of searches produced by defendants' search engines. For an increased fee, defendants will display an advertiser's banner ads whenever a user utilizes one of a series of designated terms in his search. This practice, known as "keying," allows the advertiser to target his ads and reach a more receptive audience.

Defendants key various adult entertainment ads to a group of over 450 terms, which include the terms "playboy" and "playmate." As a result, individuals who use one of those terms in a search are greeted not only by a list of web sites which contain the word "playboy" or "playmate", but also by a paid banner advertisement from a purveyor of adult entertainment services. These banner ads do not contain either the word "playboy" or "playmate."

Plaintiff argued that this practice constitutes both trademark infringement and dilution, in violation of federal law and the laws of the State of California. The court disagreed.

The court held that defendants' activities did not constitute either trademark infringement or dilution because defendants were not using plaintiff's trademarks, a perquisite for such a claim. Instead, held the court, defendants were simply using words found in the English language over which plaintiff did not hold a monopoly. Defendants' use of "playboy" and "playmate" in their keying activities is but one of several permitted uses that do not require a trademark owner's consent.

The court further held that plaintiff's infringement claim failed because plaintiff had not shown consumer confusion, or that individuals who saw the banner ads on web pages containing their search results believed that those ads were affiliated with or endorsed by Playboy. In reaching this conclusion, the court held the Ninth Circuit's "initial interest confusion" doctrine, set forth in Brookfield, inapplicable to the case at bar.

Plaintiff's dilution claim failed because plaintiff could not show that defendants' actions blurred or tarnished plaintiff's marks, or otherwise lessened their ability to serve as an advertising agent for goods or services.

Lastly, the court held that defendants' use of "playboy" and "playmate" in keying was both a permitted fair use of plaintiff's marks, as well as a use protected by the First Amendment.