Retargeting Keyword Ads for Potential New Uses

At a recent Practising Law Institute presentation, attended by a solid sampling of intellectual property attorneys, many of whom acknowledged representing major brand-name companies, the author sought a show of hands of those who would recommend that a client bring suit against a third party buying keyword ads based on one of those brands. Only one wavering hand said “maybe.” Not one hand endorsed such action hands down. Despite a great body of precedents and an even greater body of commentary, the heads present, who undoubtedly knew more than most about the subject, seemed more inclined simply to throw up their hands than take up arms. Indeed, in more than a decade since the first decision in Playboy Ent., Inc. v. Netscape Commun's Corp., 55 F. Supp. 2d 1070, 1086-88 (C.D. Cal. 1999), rev'd, 354 F. 3d Cir. 1020 (9th Cir. 2004), there have been at most a small handful of final decisions giving meaningful guidance as to when or if keyword ads are permitted or precluded. Playboy itself was simply a reversal and remand of a decision granting summary judgment dismissing the plaintiff's infringement claim.