Hovey Williams, LLP

Court Orders Purchase of “Negative Keyword” as Part of Remedy

By Mike Elbein

A federal judge in the United States District Court for the Middle District of Florida has ordered a defendant not only to cease all use of the plaintiff’s trademark and refrain from buying Internet keywords that contain the mark, but also to purchase the mark as a “negative keyword.”  This case comes amid conflicting decisions by courts around the country as to whether the purchase of another’s mark as a keyword is an act sufficient to constitute trademark infringement.

The plaintiff, Orion Bankcorp, Inc. (“Orion Bank”), is a Florida-based bank providing a full range of banking services, including residential and commercial loans.  Orion Bank operates over twenty brick and mortar locations, as well as via an Internet site.  Orion Bank has been in business since 1977, and has won several awards from state and national banking associations.  Orion Bank also owns three United States Trademark registrations that consist of, or include, the term “ORION.”

The defendant, Orion Residential Financial LLC (“Orion Residential”), provides financial and real estate related services utilizing the term ORION on various signs, advertising, slogans, promotional material, and as a top level domain name at http://www.orionresidentialfinance.com.

In its Order prohibiting use of the mark ORION, the Court prohibited Orion Residential from purchasing ORION as a keyword on the Internet.  The Court went one step further and required Orion Residential to purchase ORION as a “negative keyword” so that Orion Residential’s website would not show up on search results for queries that included ORION as a search term.

A keyword allows search engines to match an Internet search query with websites that contain those words.  Website owners have the option to purchase keywords from the search engine operator so their site will match with certain targeted searches.  For example, if I sell soft drinks from a website, search queries that include “soft drink,” “soda,” or “pop” may be matched to my site. I can also purchase those keywords to increase the proximity of my site on the top of the reported search results.  I may also wish to further increase traffic to my site by purchasing the marks of competitors, such as “Coca-Cola” or “Pepsi,” even though those terms may not actually be used on my web site.  However, by doing so, I risk a claim for trademark infringement.   

A “negative keyword” is the purchase of a word by a site owner that puts the word on a no-match list for the purchaser’s site.  For example, in my soft drink site, I may make a decision not to attract beer purchases.  However, I may not want “beer” as a negative keyword, because I might sell root beer; but I may want “Budweiser” or “Pabst” as negative keywords.

The purchase of another’s mark as a keyword has been held by some courts to constitute trademark use, and thus, possibly infringement if it causes a likelihood of confusion.  Other courts have held that the practice is not trademark use and cannot constitute trademark infringement without more egregious activity.  The various courts of appeals have not yet rendered decisions on this issue, as the cases are working their way through the court systems.

In this case, there was, of course, more than a mere keyword purchase, as the defendant used the plaintiff’s ORION mark in the conduct of its business.  However, requiring the defendant to then purchase that mark as a “negative keyword,” thereby effectively removing the infringer’s website from the list of search results is an intriguing remedy.  If the ultimate consensus among the courts or in your district is that any purchase of keywords constitutes infringement, the “negative keyword” could become a useful remedy to consider.  The full text of the decision can be read here.

Mike Elbein is a partner of Hovey Williams.  You can contact Mike at .(JavaScript must be enabled to view this email address).

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