ABA IP Section Drops Effort to Attack Comparative Advertising on Search Engines

by Paul Alan Levy

I am pleased to report that the Intellectual Property Section of the American Bar Association has dropped its efforts, decried a few months ago on this blog as well as here and here, to adopt resolutions condemning court decisions holding that keyword advertising using trademarks does not raise trademark concerns because it does not constitute a “use in commerce.”  As I argued in my previous blog post, keyword advertising and similar techniques promote comparative and critical advertising on search engines, and hence can result in important consumer benefits.  Moreover, the legal theories on which trademark complaints are filed against the practice of keyword advertising are largely preposterous and can be defended only when stated in entirely conclusory terms.  However, leaders of the IP section, many of whom represent companies that are suing over keyword advertising, were bound and determined to obtain a resolution condemning court decisions that prevented suits against keyword advertising from moving forward.

In the event, the subcommittee of the IP Section’s Litigation Committee was hopelessly divided over the issue, and not only decided not to adopt a resolution for consideration by the larger committee, but recommended that no resolutions be adopted because there was nothing close to a consensus among the Bar on this issue.  Undeterred, and determined to obtain a resolution that could be adopted at the IP Section’s membership meeting, Section leadership directed the leaders of the Litigation Committee to put forward resolutions on keyword advertising which, whether successful or not, could then be put before the membership of the entire section.  However, this effort failed because not enough members of the Litigation Committee could be persuade to vote on the resolutions (a majority must participate in the vote to reach a quorum).  Consequently, the leadership have announced that during the IP Section’s business meeting during the ABA Annual Meeting in New York next month, there will be a “Member Forum” at which the issue of keywords will be debated, but no resolutions will be adopted.