Because I’m writing an article on the application of trademark law to paid search, in connection with which I have looked at the trademark and relevancy policies of the search engine’s paid search programs (such as that of Google’s, here and here), this article  from auctionbytes.com (via NameProtect) caught my eye  EBay has apparently requested that Google remove EBAY as a keyword that can be purchased through the AdWord program, thus affecting the EBAY cottage industry.  As one vendor of eBay ancillary software notes, the irony is that EBAY is itself a heavy purchaser of third-party trademarks (the example of GUCCI given in the article appears to have changed – I just put in PRADA and got an EBAY ad). 

Not only that, but without commenting on the applicability of this provision to eBay, I note that search engines’ relevancy policies tend to frown on the purchase of keywords by other search engines (in eBay’s defense, it’s ‘landing pages’ do provide information relevant to the searched term).

This case illustrates the three-way bind that trademark owners, ancillary users, and intermediaries are in.  Representing trademark owners I have encountered situations of unambiguous trademark infringement in sponsored links – competitors of my clients who have purchased my clients’ trademarks and used them as the headline of their ads.  The search engine quickly removed the ads (and didn’t say to my client – go spend $5000 on a UDRP or $50,000 on a civil action).  I note that these particular clients only asked that the offending ads be removed, not their trademarks be completely taken out of the AdWords program.  However if you type in various famous trademarks into Google, you will see a significant number have no sponsored links, suggesting that they have asked Google to remove their trademarks from the program.

Now,  it seems possible to draft a sponsored link that makes a fair nominative use of another’s trademark.  Asking a search engine to remove the trademark makes all such fair nominative use impossible. 

On the other hand, does Google want to keep a former Ninth Circuit court clerk on staff, to apply a nominative fair use test to each $30 transaction?  It’s a private company and shouldn’t be forced to do business that it doesn’t want to do (and part of Google’s success may be attributable to its pattern of avoiding this kind of headache).  It’s easier to remove that particular name from circulation.

However, as Google and the other providers of paid search become the de facto yellow pages of the Net, this article illustrates that the status quo is somewhat unstable.  Stay tuned.