It has been judicially noted that “[t]he Court must avoid excessive rigidity when applying the law in the Internet context because emerging technologies require a flexible approach.” Edina Realty Inc. v. TheMLSonline.com, D. Minn., No. 04-4371, March 20, 2006, citing Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) (4 ECLR 384, May 5, 1999). Recently, conflicts involving one of the emerging Internet technologies, namely sponsored online key word advertising, have yielded, not only judicial flexibility, but also a fair amount of ambiguity in applying the laws of trademark infringement in Internet advertising contexts.

Two recent federal district court decisions on the issue — Edina Realty v. TheMLSonline.com, D. Minn., No. 04-4371, March 20, 2006; and Merck & Co. Inc. v. Mediplan Health Consulting Inc. d/b/a RXNorth.com, S.D.N.Y., No. 05 Civ 36550, March 30, 2006 — illustrate the current legal muddle in their diametrically opposite conclusions on the threshold question at the heart of each analysis: Does the purchase and use of key word search terms constitute “use” of a trademark under the Lanham Act?

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