US 9th Circuit Court Of Appeals Rules On Internet Trademark Law

by Glen Shapiro, LawAndTax-News.com, New York

16 January 2004

A panel of judges at the 9th US Circuit Court of Appeals ruled on Wednesday that magazine publisher, Playboy Enterprises may reopen a copyright infringement case filed against AOL's Netscape unit.

The dispute began when it emerged that Netscape was using copyrighted phrases such as "Playboy" and "Playmate" as signposts within its search engine. According to the Playboy suit, the use of the terms by an internet user would prompt sexually explicit banner advertisements (which did not link to Playboy's own content) to appear.

Speaking on behalf of the panel with regard to the process, which is known as "keying", Judge Thomas G. Nelson explained that:

"The internet user will have reached the site because of the defendant's use of the mark. Such use is actionable."

The case has now been remanded in order to allow Playboy Enterprises and AOL to dispute over the results of a survey (commissioned by Playboy), which suggests that the majority of internet users believe that advertisements that are generated by trademarked search terms come from the company which owns the term.

Speaking to the Associated Press following the delivery of the verdict on Wednesday, Playboy's attorney, Barry G. Felder announced that:

"There are all types of methods used by search engines and internet advertisers to sell products, and I believe that the principles established here - that one cannot use trademarks in a confusing way on the internet - will have an impact on other cases. We feel very good about what happened today."

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