American Airlines (AA) claims in its suit that its name and
other trade marks it holds, such as AAdvantage and American Eagle
are being used by Yahoo!'s advertising system in a way that
violates their rights.
Search engine keyword advertising allows businesses to buy the
right for their short text adverts to be displayed when someone
searches for a certain term. AA claims that to allow a competitor
to bid for its ad to be placed next to trade marked terms is an
abuse of its trade mark rights.
"This law suit involves…efforts by certain companies to free
ride on American Airlines' brands," said the lawsuit, filed with
the US District Court for the Northern District of Texas. "[Yahoo!
has] knowingly encouraged these infringements and have provided
these companies with the technological tools to carry out these
efforts."
"Without authorization or approval from American Airlines,
[Yahoo! has] sold to third parties the right to use the trade marks
and service marks of American Airlines or words, phrases, or terms
confusingly similar to those marks, as 'keyword' triggers that
cause paid advertisements ... to appear above or along side the
'natural results'," said the suit.
AA sued Google last year over the issue. The two companies are
reported to have reached a settlement this year in which neither
side paid the other. Associated Press said that US searches for
AA's trade marked terms no longer trigger competitors' adverts.
Search engine companies have been more cautious about allowing
the use of trade marked terms to trigger competitors' ads in Europe
than in the US.
Protections for trade marks in this regard are generally
stronger in Europe and companies have operated separate policies
for Europe and the US in the past. Google, though, recently changed
its policy to align it with that in the US and allow anyone to bid
on the use of trade marked terms as triggers for advertising.
AA said that Yahoo! structures its advertising in Europe to
"prevent the misuse of trade marks" and should do the same in the
US.
"In contrast to its practices with respect to the use of
trademarks in the United States, on information and belief, Yahoo!
takes steps to prevent advertisers in many countries outside the
United States from using as keywords the trademarks of others," the
suit said.
AA said that Yahoo!'s trade marks policy's requirement that
advertisers themselves agree that their search terms do not violate
trademark law is insufficient protection against trade mark
abuses.
The law in the UK has not been fully tested. Yahoo! was cleared
of trade mark violation earlier this year by the High Court in a
case brought by the owner of the trade mark 'Mr Spicy' in relation
to food.
Triggered adverts had appeared, which the 'Mr Spicy' trade mark
owner objected to. But the ads were in fact triggered by the term
'spicy' alone, so while Yahoo! was cleared of infringement, the
case did not give definitive guidance on the issue.
Intellectual property law specialist Iain Connor of Pinsent
Masons, the law firm behind OUT-LAW.COM, said that he believed that
UK trade mark law forbade the practice of triggering adverts with
another person's trade mark.
"In the UK, we believe that where a search engine allows a trade
mark to be used as an trigger to generate a competitor's sponsored
link, that would amount to an infringement by the search engine of
the trade mark," he said. "Such use is likely to affect the
essential function of a trade mark and take unfair advantage of
that mark."
