Soaring Helmet, a motorcycle
helmets and accessories wholesaler, has won a courtroom skirmish against an online retailer who allegedly used Soaring Helmet's trademarks as keyword triggers for pay-per-click ads.
In an
opinion quietly issued earlier this month, U.S. District Court Judge James Robart in Seattle ruled that Soaring Helmet was entitled to proceed to trial on allegations that the site LeatherUp.com
infringed Soaring Helmet's trademark and engaged in false advertising by using the word "Vega" to trigger search ads.
Soaring Helmet, which markets products under the brand name Vega, objected
to LeatherUp.com's use of the term in AdWords and sued both the Web site and Google. The wholesaler -- which says it eschews the Internet because it believes ecommerce stores would offer discounts
that hurt the company's brick-and-mortar distributors -- dropped its case against Google, but continued to litigate against LeatherUp.com, owned by the Web company Nanal.
LeatherUp.com filed
papers seeking dismissal of the lawsuit, but Robart ruled that the allegation that the site uses the phrase "vega helmets" to trigger AdWords ads warrants a trial for false advertising and
trademark infringement.
Robart also said that Soaring Helmet had presented evidence of confusion because some consumers who were "diverted" to LeatherUp.com ended up purchasing merchandise from
the site.
Not all legal experts believe that simply using another company's trademark to trigger an ad on a search engine is false advertising or trademark infringement. Eric Goldman, director of
the High Tech Law Institute at Santa Clara University, says in a blog post that much could depend on the text of the ad. "Depending on the ad copy, for example, there could be an express comparative
advertisement," he writes.
"But even if the defendant's ad just merely referenced its own goods, there's no
reason to assume that the 'Vega' keyword is incorporated into the advertiser's statement. At minimum, the court did a lousy job articulating how it derived a false statement here."
While Robart
is allowing Soaring Helmet to go to trial on its claims, other judges have dismissed similar cases before they got that far. Last month, for instance, a federal judge in Utah threw out a lawsuit by 1-800-Contacts against Lens.com alleging trademark infringement via AdWords. In that
case, the judge ruled that using 1-800-Contacts to trigger search ads for Lens.com didn't confuse consumers.