Andrew Gold on Sponsored Linking and the Scope of Injunctive Relief

Andrew Gold on Sponsored Linking and the Scope of Injunctive Relief


A plaintiff obtains an injunction to prohibit a business competitor from using a trademark confusingly similar to plaintiff’s mark. In response, defendant changes its mark, but continues to purchase "sponsored links" on Google.com such that a "Google" search of plaintiff's mark yields an advertisement for defendant's competitive services. Although finding that the sponsored link was a "use" of plaintiff's trademark under the Lanham Act, the court in Boston Duck Tours, LP v. Super Duck Tours, LLC allowed the use and concluded that defendant had not violated the injunction‘s express language. Explaining the case, Andrew M. Gold writes:
 
     So-called “Duck Tours” are a popular tourist attraction in Boston. Plaintiff Boston Duck Tours obtained a preliminary injunction against defendant Super Duck Tours prohibiting the defendant from using the phrase “Duck Tours” as a trademark or service mark in connection with its sightseeing tour service in the greater Boston area.
 
     In an effort to comply with the preliminary injunction, defendant adopted a new trademark “Super Duck Excursions.”
 
     However, defendant continued to purchase so-called “sponsored links” attached to the phrase “Boston Duck Tours” on Google. Thus, if anyone were to “Google” Boston Duck Tours they would see an advertisement for defendant’s competitive sightseeing tour service. As the court noted “such a purchase amounts to the acquisition of advertising space alongside the results of a Google search for the plaintiff’s Boston Duck Tours trademark.” In apparent anticipation of plaintiff’s action, defendant brought a motion to determine compliance with the preliminary injunction.
 
     In its opinion, the court addressed two separate and distinct issues: 1) Does sponsored advertising linked to the plaintiff’s mark violate the Lanham Act or other trademark law, and 2) Aside from the trademark question, is such a “use” of the trademark prohibited by the preliminary injunction in force.