Washington Journal of Law, Technology & Arts


Ryan Baker


In March 2011, the Ninth Circuit modified the list of the most relevant factors for courts to consider when evaluating whether a business’s keyword bid on a competitor’s trademark causes a likelihood of confusion under the Lanham Act. Over ten years earlier, in Brookfield Communications v. West Coast Entertainment, the Ninth Circuit had held that using a competitor’s trademark in a website metatag for the purpose of achieving a more prominent place in search results creates “initial interest confusion” for consumers in violation of the Lanham Act. The Brookfield opinion formed what became known as the “Internet troika” test: a three-factor test for evaluating initial interest confusion in Internet cases. In a 2011 case, Network Automation, Inc. v. Advanced Systems Concepts, Inc., the Ninth Circuit reversed a lower court decision that applied the “Internet troika” test and held that the test fails to discern whether there is a likelihood of confusion in keywords cases. Instead, the Ninth Circuit adopted a new four-factor test for analyzing the likelihood of confusion in keyword bidding cases: (1) the strength of the mark, (2) the evidence of actual confusion, (3) the type of goods and degree of care likely to be exercised by the purchaser, and (4) the labeling and appearance of the advertisements and surrounding context on the page displaying the results. This Article examines the new four-factor test and discusses the importance of the Network Automation decision in affirming the legality, in most instances, of bidding on trademarked keywords in Google and Bing search engine advertising.

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