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Update 41: June 27, 2006

1. Edina Realty Inc. v.

The U.S. District Court for the District of Minnesota held that the use of a rival real estate broker's trademark as a keyword term, as well as in the text of sponsored links, is not a fair use of the mark where there are other opinions for describing the market the defendant serves.

Without lengthy analysis, the court found that the defendant's purchase of search terms like “Edina Realty,” “Edina Reality,” “,” “EdinaRealty,” “,” “” and “”  on both Google and Yahoo did constitute use of the plaintiff's mark in commerce. The court held that although defendant's use was not "conventional," the purchase of terms comprising the marks, in order to generate sponsored link advertisements, satisfied the definition of use in commerce as provided in 15 U.S.C. §1127.

The court briefly evaluated the standard likelihood of confusion factors and found enough dispute about several factors to require a trial. Edina Realty proffered as evidence of actual confusion several e-mails received by MLSonline from consumers inquiring about Edina Realty.

MLSonline also sought dismissal of the trademark infringement claims advanced against it on the ground that its use was a permitted nominative fair use: 

The Court holds that defendant's use of the Edina Realty mark does not constitute nominative fair use as a matter of law.  Defendant uses the mark as an Internet search term, in its Sponsored Link advertisements, and in hidden text and hidden links on its website.  None of these uses requires the Edina Realty mark.  In its advertisements and hidden links and hidden text, defendant could easily describe the contents of its website by stating that it includes all real estate listings in the Twin Cities.  Similarly, defendant could rely on other search terms, such as Twin Cities real estate, to generate its advertisement.  In addition, defendant's use of the Edina Realty mark in its advertisement does not reflect the true relationship between plaintiff and defendant.  Defendant's advertisement that has appeared on Yahoo, for example, places the Edina Realty mark in the headline, which is underlined and in bold font.  The name of defendant's company is listed in much smaller font at the bottom of the ad.  Defendant could have done more to prevent an improper inference regarding the relationship.

In May 2006, the case settled. Lawyers representing Edina Realty and confirmed that a deal has been reached but said its terms were confidential.

Also see: Goldman, Eric, Competitor's Keyword Ad Purchase May Be Trademark Infringement--Edina Realty v. TheMLSonline, Technology & Marketing Law Blog

Edina Realty Inc. v., Decision of March 20, 2006, U.S. District Court for the District of Minnesota


2. Merck & Co. Inc. v. Mediplan Health Consulting Inc.

The U.S. District Court for the Southern District of New York held that the purchase of keyword advertising triggered by a trademarked term is not an actionable "use in commerce" (Merck & Co. Inc. v. Mediplan Health Consulting Inc. (SDNY Mar. 30, 2006). Federal law provides that a mark is "used in commerce" (15 U.S.C. § 1127 (1)) in connection with services "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce" (15 U.S.C. § 1127 (2)). According to the court "the ZOCOR mark is used only in the sense that a computer user's search of the keyword "ZOCOR" will trigger the display of sponsored links to defendant's website. This internal use of the mark "ZOCOR" as a key word to trigger the display of sponsored links is not use of the mark in a trademark sense."  The Court found further support for its decision in the fact that "defendants actually sell Zocor (manufactured by Merck's Canadian affiliates) on their websites.  Under these circumstances, there is nothing improper with defendants' purchase of sponsored links to their websites from searches of the keyword "Zocor."

So, simply put the Merck case is directly contrary to the Edina Realty case on the question of whether purchasing a competitor's trademark as a keyword constitutes use in commerce.  Upon a motion to reconsider and review the Edina Realty opinion, the Merck court reaffirmed its ruling dismissing the mark owner's trademark infringement claims. Merck., F.Supp.2d, 2006 WL 1418616 (S.D.N.Y. May 24, 2006).

Two lower courts have ruled that use of a trademarked term to trigger ads is "use in commerce." See Government Employee Ins. Co. v. Google Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) and Google Inc. v. American Blind and Wallpaper Factory Inc. (N.D. Cal. March 30, 2005).

Also see:

Merck & Co. Inc. v. Mediplan Health Consulting Inc., Decision of April 7, 2006, U.S. District Court Southern District of New York


3. Update on AdWord Cases in France

Hotels Meridian v. Google France (for more information on the lawsuit click here)

The verdict in the main procedure opposing Société des Hôtels Méridien and Google France was handed down on March 2, 2006. The Nanterre court of first instance held that Google France has committed acts of trademark infringement within the meaning of articles L 713-2-a and L 713-3-b of the Intellectual Property Code. The court ordered Google to

  • to delete from its key-word generator, which is accessible from its website, any and all reference to the trademarks “MERIDIEN” and “Le MERIDIEN”, identically or similarly, under daily penalty of 5000 €

  • to publish on the first page of its website accessible under the address the following legal advertisement, under the title “JUDICIAL PUBLICATION”, for a duration of fifteen days and under penalty of 3000 € per day, beginning 48 hours after the notification of the present verdict: "The first chamber of the Nanterre Court of First Instance has sentenced the company Google France by verdict of March 2, 2006 for having infringed on the rights of the company Société des Hôtels Méridien in the trademarks “MERIDIEN” and “Le MERIDIEN”"

The court also sentenced Google France to pay to the plaintiff the sum of 150.000 €  in compensation for the infringement.


Google v. Cnrrh

A court of appeal held Google liable for the use of the trademark "Eurochallenges" in its Adwords program.


Google v. Viaticum / Luteciel

The case is currently on appeal to the French Supreme Court. A decision is expected for the end of 2006.


Google v. Louis Vuitton

The Paris Court of Appeals decision is expected soon. So far Google has already lost two appeal cases regarding adwords in France.


4. Yahoo Sued for Buying Trademarked Keywords on Google

JP Enterprises -which runs the online dating service has sued Yahoo and three other companies for allegedly paying to have their ads come up when its name is typed into the Google search page. The lawsuit, filed in federal district court in Colorado accuses Yahoo and the other companies of bidding to appear on Google's results pages when users query on "lovecity" and the related terms "" and "www.lovecity." JP Enterprises claims that Yahoo and the other companies are violating the JP Enterprises trademark by using it to trigger ads for their own dating sites, and seeks punitive damages because, the suit alleges, the sponsored ads appearing through the AdWords system caused confusion with consumers, hurt the "lovecity" brand and cost sales.



5. Shainin II, LLC v. Allen

On May 15, 2006, Judge Pechman of the U.S. District Court for the Western District of Washington entered an order enjoining a former employee from using his former employer's trademarks as metatags in a web site promoting competing services, Shainin II, LLC v. Allen, (Slip Op.) 2006 WL 1319405 (May 15, 2006).


6. Google, Perfect 10 appeal thumbnails case (for more details on the case see Update 38)

Both Google and Perfect 10 have appealed a district court ruling finding that Google's creation and display of thumbnail photos for indexing purposes likely infringes Perfect 10's copyrights in those photos, but Google's inline links to the fullsized imagines don't.


7. "Syndication Fraud" Lawsuit against Yahoo

An online advertiser filed a class action lawsuit May 1 in the U.S. District Court for the District of New Jersey against Yahoo, alleging that Yahoo's practice of causing online ads to be displayed via spyware and on typosquatted web sites violates its contract with advertisers (Crafts by Veronica v. Yahoo! Inc., D.N.J., No 12:06-cv-01985, complaint filed May 1, 2006). If the class action is certified, any Yahoo! customer in the United States would be a member of the class.

Also see: Goldman, Eric, Yahoo "Syndication Fraud" Lawsuits--Crafts by Veronica v. Yahoo and Draucker Development v. Yahoo, Technology & Marketing Law Blog



8. v. Google - Court Documents (for more details on the case see Update 38)


9. Google sued for refusing ad

Google has been sued for allegedly refusing an anti-China ad. According to the complaint, activist Christopher Langdon submitted a three-line ad through Google's AdWords program on Thursday, March 29. The ad read simply: "Communist China Has Murdered Millions - Boycott China"

Langdon also attempted to advertise his website with Google. That site accuses N.C. Attorney General Roy Cooper of lying to the U.S. Supreme Court and perpetrating other fraud on the Court. The proposed ad read: "Roy Coopers Fraud--Cooper's fraud on the Supreme Court--Corruption within the N.C.D.O.J."

That ad was rejected, purportedly because: "At this time, Google policy does not permit ad text that advocates against an individual, group or organization.  In addition, this policy does not permit the advertisement of websites that advocate against a group protected by law."

Langdon claims that Google's reticence violates his constitutional right to free speech. In his opinion private property owners can be bound by the First Amendment if the property becomes a public space.

"There is a great deal of inconsistency and hypocrisy in the application of Google's Content Policy.  Google's Content policy  requires that the ads, and the associated website, conform to the Content Policy.  However, Google routinely allows large budget advertisers to evade Google's Content Policy.  For example, if you Google Search "Impeach Bush," or, "Anti-Hillary Clinton," there are a large number of ads (sponsored links) next to the search results. One of those sites sells material that calls Senators Clinton, Kenendy and Kerry, Communists. They also sell material accusing President Bush, and members of his administration, of murder, treason, election fraud, lying and of being Nazis.  It seems to me that if those sites can make those statements, then I should be allowed to accuse Roy Cooper of lying to the U.S. Supreme Court."

Langdon v. Google, 1:06-cv-00319-JJF (D. Delaware complaint filed May 17, 2006)

Also see: Goldman, Eric: "Must Carry" Lawsuit Against Search Engines--Langdon v. Google, Technology & Marketing Law Blog


10. Roberts v. Google

Mark Roberts claimed breach of contract, in part because of Google's add URL feature and help pages supposedly formed a promise that his pages should be top ranked. After Google threatened to file an anti-SLAPP motion against him, a means of effectively getting the court to agree that the case is without merit and recovering costs, he voluntarily dismissed the complaint without prejudice.

Roberts v. Google, No. 1-06-CV-063047 (Cal. Superior Ct. complaint filed May 5, 2006)

For more details see: Goldman, Eric, Google Avoids Another Lawsuit Over Rankings (For Now)--Roberts v. Google, Technology & Marketing Law Blog


11. Links to Podcast-Feeds a copyright infringement?

After providing links to publicly accessible MP3’s hosted on This American Life’s own servers, Jon Udell and Jared Benedict received friendly emails (no “nastygram” or formal ceast and desist letter) from Ms. Meister, This American Life’s webmaster, making a request to take down the hyperlinks and RSS feeds - accusing them of copyright infringement - or she’d regrettably have to get lawyers involved. Both webmasters voluntarily removed the items.

For more information see:

New in Legal Resources:

  • Allen, Ruth, Google Library: Why all the fuss?, Copyright Reporter Vol 23 No 4 (December 2005), 105-111

  • Hüsch, Moritz, Anmerkung zu LG Braunschweig vom 28.12.2005 - Adwords, CR 2006, 282-283

  • Schöwerling, Helena, Google's Buchsuchmaschine und die Grenzen des "fair use", MR-Int. 2005, 129-136

  • Court Says Government Will Get Google Data It Seeks to Defend Online Pornography Law, Electronic Commerce & Law Report 2006, 302-303

  • Google Click Fraud Case Nears Settlement, Potentially Clearing Slate With All Advertisers, Electronic Commerce & Law Report 2006, 303-304

  • Loss of User "Trust" in Google Trumps Government Need for Search Query Logs, Electronic Commerce & Law Report 2006, 315

  • Purchase of Trademarked Term as Search Engine Keyword Held Not "Use in Commerce", Electronic Commerce & Law Report 2006, 375

  • Nominative Fair Use Defense Rejected In Keyword Dispute Involving Sponsored Links, Electronic Commerce & Law Report 2006, 389

  • Google Library Controversy Continues Among Industry Stakeholders, Electronic Commerce & Law Report 2006, 541-542

  • Ott, Stephan, Haftung für Hyperlinks - Eine Bestandsaufnahme nach 10 Jahren, WRP 2006, 691-702

  • Kaslioglu, Evrim, Trademark Infringements in Cyberspace: The Use of Another's Trademarks in Metatags, published in: Kierkegaard, Legal, Security and Privacy Issues in Information Technology




The Links & Law website is updated regularily, so  check back for updated information and resources about search engine and linking issues.

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Latest News - Update 71

Legal trouble for YouTube in Germany

Germany: Employer may google job applicant

EU: Consultation on the E-Commerce-Directive

WIPO Paper on tradmarks and the internet

The ECJ and the AdWords Cases



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