Update 61: February 10, 2009
1. Germany: German Federal Court decisions on
The German Federal court (BGH) has asked the European Court of Justice (ECJ)
to decide whether or not the use of a trademark as a Google adword is
considered use as a trademark.
At the end of January, the BGH has published its opinion on three appeals.
In the first case a company objected against the use of its trademark "bananabay"
as a keyword by one of its competitors. Because German trademark law is
based on EU law (First
Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the
Laws of the Member States Relating to Trade Marks), the BGH could not
decide on its own, especially as the ECJ has already been asked to consider
the same issue by a French an a Austrían court (see:
European Court of Justice will hear
Google Adwords lawsuit!
). It is expected that
it will take the ECJ about two years to decide the issue. But the French
case, brought by Louis Vuitton, is already pending for eight months. So my guess
is, we can expect the final word on adwords at the beginning of 2009.
The decision will be crucial for Google and for the keyword advertising
business in Europe.
In the second case before the BGH, the plaintiff, PCB Pool, objected
against the use of pcb as adword. But according to the BGH there was no
trademark infringement. PCB is an acronym of printed circuit board and the
keyword used, descriptive. So the BGH overturned a lower court's ruling.
The finding in the third case could be the most interesting one. Beta
Layout had complained about the use of its company name as keyword. The
protection of company names does not have its roots in EU law, so the BGH
could decide the case. According to the press release he found that there
was no trademark violation because internet users are capable of
distinguishing between ads and normal search results.
2. USA: Google Not Liable for Fraudulent Ads
In the Goddard v. Google case (see
Update 57 for details
), District Court Judge
Jeremy Fogel in San Jose ruled that the federal Communications Decency Act
immunizes Google from liability for allegedly displaying fraudulent ringtone ads
created through the AdWords platform. Goddard had claimed that she was billed
for a ringtone subscription after entering her cell phone number at a fraudulent
web site that she found via an AdWords ad. She sought to hold Google
responsible. But the court found that the Federal Communications Act protects
Google from any liability for the ads, noting in the written decision,
"Providing third parties with neutral tools to create Web content is considered
to be squarely within the protections of (the law). Even if a service provider
knows that third parties are using such tools to create illegal content, the
service's provider's failure to intervene is immunized" so long as it does not
encourage or require their users to post actionable information online. Fogel dismissed the
case without prejudice, effectively allowing Goddard to file an amended
complaint at a later date. Goddard can only win the lawsuit by establishing
Google's involvement in creating or developing the AdWords.
Goddard v. Google, Inc., 2008 WL 5245490 (N.D. Cal. Dec. 17, 2008).
For more information see Goldman, Eric,
Lawsuit Over Google Ads for Mobile Services Dismissed Per 230--Goddard v. Google,
Technology & Marketing Law Blog
3. GateHouse Media Lawsuit: Don't aggregate our
headlines and post snippets of our stories
In a lawsuit filed in U.S. District Court in Boston,
GateHouse Media Inc. asked a judge to stop the New York Times Co. from linking to GateHouse articles on Boston.com’s new
local advertising-supported “Your Town” sites, claiming its new
practice of grabbing headlines from GateHouse Web sites constitutes
copyright infringement. Boston.com publishes headlines, the first
sentences of many stories and deep links to GateHouse Media articles.
GateHouse claims its sites are losing money because people are
visiting the individual story pages instead of the home pages of its
sites. It wants to block the Times Co. from aggregating its content,
receive compensation for losses, punitive damages and reimbursement
for legal fees.
While GateHouse might have a point accusing the
Times Co. of copyright infringement by reproducing sentences of
their articles, some statements in the complaint about the practice
of deep linking are pretty much nonsense, e.g. "The user receives no
warning or notification that it has been transported to an
unaffiliated third-party website, thus exacerbating the potential
for confusion as to the source of origin of the repotage and
information displayed on the infringing website."
In its response, the NY Times mentions
emails from GateHouse officials pointing out that identical
activities are clearly fair use. Howard Owens, GateHouse’s director
of digital publishing,
wrote (page 19):
"Also note that headline, a few graphs and a link back to our site
isn’t a Creative Commons issue, but a fair use issue, and they would
probably win on that one."
So here is a deep link to a web site that hosts the complaint:
Deep Link to Techdirt!
Please note: I'm not affiliated with
Techdirt. There will be no further warning that you will leave my
web site by clicking on the link. You are all on your own! And
please also visit the homepage of Techdirt.
A lawsuit by Agence France Presse (AP) against Google News for aggregating
headlines and posting excerpts of news articles posed similar questions, but
that case settled before trial. Google also struck a licensing agreement with
The Associated Press (AP).
The Consumer Watchdog group asked Google to give users the ability to opt out
of leaving personal data, such as IP addresses, on Google's servers. Ask.com
already provides a service called "AskEraser" that allows users to delete their
personal information from the company's systems. (
Yahoo announced that it would retain user search data for three months (down
from currently 13 months!), thus exceeding recommendations that have been made
European Union's Article 29 Data Protection Working Party. In April 2008
the group said
that it did not see any reason for storing non-anonymized user
data for more than six months. Storing data for more than six months could be a
violation of the EU Data Protection Directive (95/46/EC).
Ixquick metasearch engine (www.ixquick.com)
that it has taken a pioneering step and will permanently delete all personal
search details gleaned from its users from the log files.
According to the U.S. District Court for the Western District of Washington
using a competitor's mark in metadata likely confused consumers in violation of
the Lanham Act. The "funny thing" about the lawsuit: A disclaimer on the web
site of the defandant made clear that the was not affiliated with the mark owner.
But: As a result of the disclaimer, a Google search for the trademark caused his
site to appear on the first page.This was enough to establish initial interest
confusion, the court said.
Corporation Industries v. Earthwise Technologies Inc., W.D.Wash., No. C07-5577,
New in Legal Resources
Wäßle, Florian, Rechtliche Zulässigkeit von Bilder-Suchmaschinen im
Internet, K&R 2008, 729-731
Kramarsky, Stephen / Siegel, Kara, Examining Online Advertising:
Search Engine Keywords and Trademark Use, Journal of Internet Law,
10/2008, 1, 16-24
Deva, Surya, Yahoo! for Good and the right to privacy of internet
users, Journal of Internet Law, 3/2008, 3-9
Hogertz, Alexander, Internet image ruling interpreted, Copyright
World, issue 186, 10-11
Shemtov, Noam, Searching for the right balance: Google, keywords
advertising and trademark use, E.I.P.R. 2008, 470-474