Can Search Engines be Contributorily Liable for Trademark Infringement?

Hello!

Today's topic is contributory liability in regards to trademark infringement, i.e, contributory infringement.  Of course, we are going to discuss this trend as it applies to the Internet. First let me explain what is contributory infringement.

Contributory infringement is a legal concept that is usually applied to copyright infringement. Contributory infringement is when an individual or entity knows that copyright infringement is taking place by another and allows, causes, or assists the infringing activity.  Here is an example:  

A manufacturer unlawfully copies an artist's work and sells it to a major retail chain.  The retail chain sells the works in all of its stores.  The artist notifies the retail chain of the infringement and requests that they stop selling the infringing work.  However, the retailer continues to sell the infringing work.  The retailer would be liable for contributory infringement because they had notice the work in question was infringing and they induced or allowed the manufacturer to commit copyright infringement through selling the work.  

Recently, courts have applied the contributory infringement concept to trademark law.  The current law states that "If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit."  Inwood Laboratories, Inc. v. Ives Laboratories, Inc.  Strong language!  

How does this rule apply to search engines?  Specifically, can a search engine be liable for allowing trademarks to be used in keyword searches that result in the advertisement of the trademark by a trademark infringer?  This practice is called key-word linked advertising.  I briefly discussed this concept in my earlier post.  Google has come under fire for this practice.  They have been sued many times.  However the lawsuits were either settled or dismissed.  As a result, Google has established a good policy to avoid contributory trademark infringement liability.  Essentially when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger, they will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further.   Thus Google is adhering to the law established in Inwood Laborities...not knowingly contributing to trademark infringement.

What does this mean for consumers who advertise on the Internet? Don't use established trademark has key words when advertising.  If you sell designer purses, use "designer purses" as a key word  instead of "Louis Vuitton" or "Chanel."  This simple practice will save you a lot of heartache and money.