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Hyperlink & Search Engine Law News

You'll find the latest news on linking disputes and on the law of search engines here. Older News can be found in the archive.

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Special Coverage : Trademark protected terms as keywords / AdWords Lawsuits Worldwide


Update 74: April 25, 2011

No more Links & Law Updates ...


The Links & Law web site was created in November 2002. It was the offspring of my doctoral thesis that included an analysis of copyright and commercial law problems of linking and framing. The law of hyperlinks was also the main topic of Links & Law at the beginning. But soon I also included questions related to search engine law. For over eight years I have tried to keep Links & Law up to date – a very time consuming task, but also a very rewarding one thanks to the feedback from users world-wide.

In the last two years I was unable to update the web site on a regular basis. Often there were months between updates and I was no longer able to provide a comprehensive analysis of the developments. So I made the decision that I will freeze the web site. It will remain a useful resource to research search engine and hyperlink law, but for the time being there will be no more updates (except for the legal resources in English section).

I will continue my research on search engine law, though. Over the last seven years I have written more than 2000 blog posts on the German Links & Law Blog and I will continue posting there. I have also written more than 50 articles for German law journals, most of them dealing with hyperlinks and search engines.

So thanks a lot for all the emails that I have received over the years! And if you find an interesting new story about search engine law, I still welcome the information. On the other hand, if you need information about search engine law in Germany, don’t hesitate to contact me. And finally, if you ever come to Munich and want to chat in person, I’m organising an internet law regular’s table there, which meets about every 6-8 weeks. So feel free to drop me a line, if you want to be informed about future dates.



Update 73: March 6, 2011

There have been no reports about key search engine law decisions in January / February 2011. Most case reported are still concerned with the use of trademark protected terms as keywords (or metatags). Let’s start with a quick overview:



  • Microsoft does no longer prevent advertisers in the USA and Canada from booking third party trademarks as keywords on its adCenter platform. The company aligned it’s TM Policy with the TM policy Google adopted in 2009 for the USA & Canada. See Austrotrabant.





  • France: Google France v. Syndicat Francais de la Literie.

  • Legislative action concerning keyword advertising? See the European Parliament resolution of 15 December 2010 on the impact of advertising on consumer behaviour:
    ”Calls on the Commission to explore the various means (whether legislative or not) and ascertain the technical options at European Union level to effectively implement the following measures:
    … - modify the limited liability regime for information society services in order to make the sale by search engines of registered brand names as advertising keywords subject to prior authorisation from the owner of the brand name in question;…”

  • In Germany several courts have tried to interpret last years ECJ rulings with different results. The trademark owner won three times: OLG Braunschweig (24.11.2010, Case Number 2 U 113/08); OLG Düsseldorf (21.12.2010, Case Number I-20 W 136/10) and OLG Frankfurt, (9.12.2010, Case Number 6 U 171/10). Only the LG Berlin found in favour of the advertiser (22.9.2010, Case Number 97 O 55/10). In the long run, these cases will be of minor importance. The future of keyword advertising with trademark protected terms lies in the hands of the German Supreme Court (BGH). The Court had referred several questions to the ECJ in the Bananabay case and after the ECJ’s ruling, the Supreme Court had to make its final decision in the case. And the ruling is in favour of the advertiser. The reasing has not been published yet, but once it has, it will have key influence on all other keyword cases in Germany. The ruling will probably not be in line with the latest decision of Austria’s highest court ruling(Case Nr. 17 Ob 3/10f; see: Austrotrabant).

I want to point you to a few very interesting studies and articles:

CHAPTER 7: Is Search Now an "Essential Facility?"

Dominant Search Engines: An Essential Cultural & Political Facility
Frank Pasquale

The Problem of Search Engines as Essential Facilities: An Economic & Legal Assessment
Geoffrey A. Manne

Some Skepticism About Search Neutrality
James Grimmelmann

Search Engine Bias & the Demise of Search Engine Utopianism
Eric Goldman


Also no major news on Google Street View. In Japan a woman is suing Google because private items on her washing line appear on Google Street View (see CNet), and in the USA,  the Attorney General George Ipsen reached a stipulation with Google over the collection of WIFI payload data (press release).


Google and antitrust law: Last year, several firms have filed objections with the EU commission, including, a German subsidiary of Microsoft, British price comparison site and France's In December the EU Commission opened formal proceedings. A commission statement said: "The opening of formal proceedings follows complaints by search service providers about unfavourable treatment of their services in Google's unpaid and sponsored search results coupled with an alleged preferential placement of Google's own services. This initiation of proceedings does not imply that the Commission has proof of any infringements. It only signifies that the Commission will conduct an in-depth investigation of the case as a matter of priority."

In February 2011, the French Internet company 1plusV Tuesday filed a complaint with the European Commission claiming that Google is abusing its dominant market position by restrictions on Google's AdSense platform that prevent “vertical” search engines from making money. See Out-Law.


Also on this topic:

  • France’s competition watchdog, Autorite de la Concurrence, stated that Google does hold a dominant position in the online advertising market (Press Release).

  • Italy's antitrust authority closed a probe into whether Google coerced local newspapers into posting stories on its news site (Money Control).


And finally, New in legal resources:

  • Stalla-Bourdillon, Sophie, Should Search engines begin to worry?, Journal of Internet Law 2010, November 2010, 3-11

  • Staufer, Ines, Keyword Advertising - Neue Entscheidungen des EuGH und (k)eine Änderung in: Geist/Brunschwig/Lachmayer/Schefbeck, Strukturierung der Juristischen Semantik - Structuring Legal Semantics, 555-569

  • Herrmann, Philipp, Keyword Advertising bei Google in: Innovation und internationale Rechtspraxis, Praxisschrift zum 50. Geburtstag von Wolfgang Zankl, 2009


Update 72: December 28, 2010

This time only a short update, more Links than Law, so to say. While I have been able to keep my German website running in 2010 with more than 300 postings, there have been only a few Updates this year to the English version of Links & Law. But at the end of the year, I'm proud to announce my first English article, written together with Maximilian Schubert and published in the Journal of Intellectual Property Law and Practise:

It's the Ad text, stupid': cryptic answers won't establish legal certainty for online advertisers
Journal of Intellectual Property Law & Practice 2010; doi: 10.1093/jiplp/jpq150


Full Text:



1. AdWords

  • A European Parliament report has recommended that the European Commission change the law so that search engine companies can only allow bids on terms if the owner of the term approves them:
    "modifying the limited liability regime for information society services in order to make the sale by search engines of registered brand names as advertising keywords subject to prior authorisation from the owner of the brand name in question (this applies, for example, to sites containing a keyword that redirects consumers to counterfeit sites)."
    European Parliament's report
    In December a Resolution by the European Parliament said: "[The Commission should] modify the limited liability regime for information society services in order to make the sale by search engines of registered brand names as advertising keywords subject to prior authorisation from the owner of the brand name in question."

  • News on the Rosetta Stone v. Google Appeal: Goldman, Plaintiff-Side Briefs in Rosetta Stone v. Google Appeal, Technology & Marketing Law Blog

  • The Madras High Court in India, on the 30th September, 2010 passed an interim ruling in Google's favour.

  • Is there an initial interest confusion doctrine in European trademark law? The England and Wales High Court (Chancery Division) says yes! >> Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch) (20 October 2010)


2. Street View

  • The British  Information Commissioner will not fine Google over unauthorised collection of personal data by its Street View cars, despite ruling that this was a "significant breach of the Data Protection Act" (Out-Law).

  • Street View imagery for Antarctica, Official Google Blog.

  • A god-like figure has been spotted on Google Street View, hovering midair above Walensee and A3 motorway, SMH.

  • Some 244,237 German households have so far demanded that images of their homes be removed from Google Street View (Cool Avenues)

  • An error on Google Maps has caused an international conflict in Central America, Nicaragua Raids Costa Rica, Blames Google Maps


3. In Short

  • Stayart, who sued Yahoo for "linking" her to viagra lost her appeal, Stayart v. Yahoo! Inc., 2010 WL 3785147 (7th Cir. Sept. 30, 2010). See Finnegan, Internet Trademark Case Summaries

  • Did Google use a picture of a large inflatable gorilla that looks similar to Scherba's copyright registered gorilla in an ad copy? Scherba Industries v. Google, Inc., 1:10-cv-02288 (N.D. Ohio complaint filed Oct. 7, 2010). Take a look at the pictures here!

  • In a long running lawsuit against the German publishing house Heise Zeitschriften Verlag the German Federal Supreme Court (BGH) rejected a link ban. Heise had linked to the Slysoft main page. Slysoft produced software for bypassing copy protection mechanisms which could be downloaded from another page on the same web site. The reasoning behind the verdict is not expected to be published for several months. For more details see Heise, Heise vs. the music industry - German appeal court rejects link ban.

  • Find out, how Google reduces its amount of taxes: Google's 'Double Irish' tax scheme saved it $3.1B.

  • Following the interim measures issued by the Autorité de la concurrence June 2010, Google commits to modify in a more transparent and predictable way for advertisers the rules governing its online advertising service, AdWords, see the Press Release.

  • The German Federal Supreme Court has ruled that placing hyperlinks in the form of deep links to a copyrighted work can cause an infringement of public accessibility rights if protective measures set up by the owner are thereby circumvented (see Härting).


4. New in Legal Resources

  • Sangal, Tanushree, IP Issues in Linking, Framing and Keyword Linked Advertising, C.T.L.R. 2010, 64-67

  • Forgò, Nikolaus / Krügel, Tina / Müllenbach, Kathrin, Zur datenschutz- und persönlichkeitsrechtlichen Zulässigkeit von Google Street View, CR 2010, 616-624

  • Cornthwaite, Jonathan, To Key or not to Key? The Judgement of the European Court of Justice in the Google France AdWords cases, E.I.P.R. 2010, 352-359

  • Dietrich, Florian / Zenker, Michael, Anmerkung zu BGH - Powerball, CR 2010, 604-606

  • Husovec, Martin, [SK] Selected legal issues of search engines - Keyword advertising [Vybrané právne problémy internetových vyhľadávačov - Keyword advertising] - 2009

  • Husovec, Martin, [CZ] Google Book Search - Legal threat or challenge ? [Google Book Search - právní hrozba nebo výzva?] - 2010

  • Husovec, Martin, [SK] The legal aspects of search engines [Právne aspekty internetových vyhľadávačov] - 2010

  • Burdon, Mark, Privacy Invasive Geo-Mashups: Privacy 2.0 and the Limits of First Generation Information Privacy Laws (October 5, 2009). Journal of Law, Technology and Policy, No. 1, 2010. Available at SSRN:

  • Ullrich, Jan Nicolaus, Webradioportale, Embedded Videos & Co - Inline-Linking und Framing als Grundlage urheberrechtlich relevanter (Anschluss-) Wiedergaben, ZUM 2010, 853-862

  • Leupold, Andreas, Anmerkung zu BGH - Espressomaschine, MMR 2010, 747-749

  • Kemnitzer, Kristin, Beyond Rescuecom v. Google: The Future of Keyword Advertising, Berkeley Technology Law Journal Vol. 25:401 2010, 402-427

  • Koster/Brenckman, Billboards, Menus, or What? Getting a Handle on Keyword Advertising, The Computer & Internet Lawyer 5/2010, 1-11

  • Gonzàlez, Andrès, The Google and Publishers Settlement: Some legal and technical implications

  • Kabateck/Gholian, Deterring bad faith clicks: Can the Computer Fraud and Abuse Act deter internet click fraud schemes, The Computer & Internet Lawyer, 7/2010, 1-6


Update 71: September 20, 2010

1. Legal trouble for YouTube in Germany

The Regional Court of Hamburg declined to issue a preliminary injunction against YouTube which would have forced the site to remove 75 music videos in a conflict with eight royalty collecting bodies (inter alia GEMA, ASCAP, BMI). However, the court also said that the plaintiffs may actually have a right to ask YouTube to remove the unlicensed music videos and that the company indeed has some duty to take care of detecting illegal uploads. The only reason for the dismissal of the suit was that the collecting bodys had known for a long time that the songs were available on YouTube and had not done anything against it. So they only have the opportunity to ask for a ruling in regular proceedings.


So no big surprise, a few days later the Regional Court of Hamburg did issue a preliminary injunction against YouTube in another case brought by  Frank Peterson, a German composer and producer for Sarah Brightman and other artists. YouTube was ordered to pay compensation after users uploaded several videos of performances by Sarah Brightman in violation of copyright laws. Google had unsuccessfully argued that it can't be held responsible for making sure the content users upload is not infringing, and pointed out that it even asks users to confirm that they have the rights to upload the works they're uploading. However, the court claimed that such a requirement doesn't absolve YouTube from liability.


The Regional Court of Hamburg is quite notorious in Germany for its ill considered decisions regarding liability of internet providers. I would not be surprised if the Hamburg Upper Regional Court on appeal will at least not award any damages to the plaintff. The decision clearly is in violation of European law, the E-Commerce-Directive, in this regard. The court concluded that YouTube was treating content uploaded by its users as its own. That leads to a more strenuous duty to check out the content. The court came to the conclusion YouTube did not fulfil this.


2. Germany: Employer may google job applicant

 A proposed law on the regulation of employee privacy in Germany is said to establish an equitable balance between the interests of employees in protecting personal data and the legitimate interests of employers. Under the envisaged law, employers would still be allowed to enter job applicants' names into search engines, but social networks that are used for electronic communication may not be used for research, except for social networks that exist to represent the professional qualifications of their members. It will e.g. be illegal to become a Facebook friend with an applicant in order to check out private details. But if an employer turns down an application with another reasoning it might be difficult to prove that the negative answer was based on Facebook postings.

The draft German law (in German)

Also see: German law bans Facebook research for hiring decisions, Outlaw



3. EU: Consultation on the E-Commerce-Directive

In the context of the application of the E-Commerce Directive of 2000, which harmonised rules on issues such as the transparency and information requirements for online service providers, commercial communications, electronic contracts and limitations of liability of intermediary service providers, the EU Commission commissioned two studies respectively on its economic impact and on the application of the provisions on the liability of internet intermediaries. They were completed in 2007, but published just recently, probably due to "internal differences". There are 25 reports highlighting how the different member states deal with the liability of internet intermediaries.


On August 10, 2010 the Commission launched a consultation on the E-Commerce Directive. Issues covered in the consultation include: commercial communications of regulated professions such as pharmacists and lawyers; the development of the online press, the issue of the liability of internet intermediaries, administrative cooperation, on-line dispute resolution, etc. The result of this work will be taken into account in the Commission’s deliberations with a view to the adoption in the first half of 2011 of a Communication on electronic commerce. This might be the first step towards a revision of the E-Commerce Directive, especially its rules on liability!



4. WIPO Paper on tradmarks and the internet

The WIPO published a 62 pages long paper "Trademarks and the Internet". Part of it deals with the liability of search engines for the sale of trademarks as keywords, in particular with cases in the USA (Nr. 19), the EU (Nr. 20), the United Kingdom (Nr. 29), India (Nr. 30), Israel (Nr. 32), Argentina (Nr. 33) and Australia (Nr. 35). As for the legality of keyword advertising in China e.g. (Nr. 31), the report says:

"In China, two keyword advertising lawsuits, one initiated against Google China, the other against Baidu, have yielded different outcomes. In Google v Guangdong Ganyi Electrical Appliance Co Ltd, the plaintiff’s registered trademark NEDFON was sold by Google as a keyword to a competitor. The Court ruled that the competitor in question had committed trademark infringement. However, Google itself was not held jointly liable for trademark infringement. The Court determined that, although use of a keyword to trigger sponsored links was a form of advertising, Google neither had the ability to check or control the information submitted by the competitor, nor did it have an obligation to examine the legality of that information.

The Google case can be contrasted to the case of Baidu v Shanghai Dazhong House-moving Logistics Co Ltd. Baidu’s bid ranking service allowed Dazhong’s competitors to link their websites to the keywords “Dazhong Banchang”. Here, the Court ordered Baidu to pay compensation to Dazhong."


5. Changes to Google's trademark policy (see Maximilian Schubert, Austrotrabant)


6. The ECJ and the AdWords Cases

Five keyword cases have been transferred to the European Court of Justice. Four rulings are in, one case is still pending.

1. France, Rs. C-236/09, 237/09, 238/09 (ECJ decision, see Update 69); What's new: The French Cour de Cassation took back the case and issued another decision on July 13, 2010. As  a consequence of the ECJ's ruling, the Court referred a previous ruling against Google Inc. back to the Court of Appeal, effectively cancelling an earlier decision in favour of French luxury goods company Louis Vuitton. It is up for the Court of Appeal to examine factual matters more closely now (which the Cour de Cassation can't) with the ECJ's ruling in mind (see: Louis Vuitton says Google trademark fight ain’t over - San Francisco Business Times).

2. Austria, Rs. C-278/08, Bergspechte (ECJ decision).  What's new: The Austrian Supreme court ruled on 21 June 2010 (Case Nr. 17 Ob 3/10f), that even ads that don’t contain the third party trademark may lead to a likelihood of confusion as long as the advertiser does not add appropriate clarifying indications‘. Austrotrabant has more on the case!

3. Netherlands, Rs. C-558/08 , Primakabin / Portakabin (ECJ decision, see Update 70)

4. Germany, Rs. C 91/09 – (ECJ decision)

5. UK, Rs. C-323/09 - Interflora (Reference)


For more information (in German) see: Mehr Fragen als Antworten – die Google France Entscheidung des EuGH zum Keyword Advertising and Fremde Marken als Keywörter – Orakelsprüche des EuGH als Antwort auf biblische Fragen.


7. In short:

  • The Information Commissioner’s Office (ICO) in Great Britain found that Google was wrong to gather data about and from wireless networks when its cars documented the UK's streets for its Street View service, but it is "unlikely" that the company gathered much personal data (Out-Law). "There is also no evidence as yet that the data captured by Google has caused or could cause any individual detriment", a statement said.
    In the USA, t
    he Google Street View lawsuits have been consolidated in the Northern District of California.

  • In the legal struggle between Perfect 10, Inc. and Google, the district court ruled that Google is entitled to immunity on nearly all claims, because the takedown notices provided by Perfect 10 were inadequate. Some of them not even included the specific URL on which the infringing material was located, Perfect 10, Inc. v. Google, Inc., 2:04-cv-09484-AHM-SH (C.D. Cal. July 26, 2010). Also see: DMCA saves Google again—im“Perfect” notices not adequate notice of infringement and Goldman, Google Protected by 17 USC 512(d) for Links to Infringing Content; Perfect 10's Takedown Notices Were Mostly Insufficient, Technology & Marketing Law Blog.
    There is also a case between Google and Perfect 10 in Canada, see Candian court won’t dismiss Perfect 10 infringement suit.

  • French antitrust authorities (Autoritè de la Concurrence) have ruled that Google took advantage of its market position when it terminated location data company Navx’s AdWords account. In February Navx had filed a complaint, alleging that Google has unfairly suspended its contract without notice. Google said the reason for the disappearance of the Navx ads was a change of policy in 2008, when it decided no longer to promote services helping people to avoid speed cameras and fines. Google will appeal the decision. (Wall Street Journal)

  • AdWords Cases in the USA: Ezzo has dropped his lawsuit against Google over AdWords (The dismissal). Jurin's claims for false designation of origin and false advertising on a 12(b)(6) motion were dismissed (Jurin v. Google, 2010 WL 3521955 (E.D. Cal. Sept. 8, 2010)) and Google settled the lawsuits against Dazzlesmile and Flowbee. For more information see: Goldman,  Google Gets Good Results in Three AdWords Trademark Cases (Jurin, Flowbee, Dazzlesmile), Technology & Marketing Law Blog
    And finally a big win for Google: Language software maker Rosetta Stone's trademark infringement lawsuit against Google has been dismissed. The court said that "no reasonable trier of fact could find that Google's practice of auctioning Rosetta Stone's trademarks as keyword triggers to third party advertisers creates a likelihood of confusion as to the source and origin of Rosetta Stone's products."  Rosetta Stone Ltd. v. Google Inc., 1:09-cv-00736-GBL-TCB (E.D. Va.).
    Opinion granting Google's motion to dismiss filed August 3, 2010, 2010 WL 3063152. Order granting Google's motion to dismiss the unjust enrichment claim filed August 2, 2010, 2010 WL 3063857. For more information see: Goldman, Google Gets Complete Win in Rosetta Stone Case, Technology & Marketing Law Blog. Rosetta Stone has filed an appeal.

  • The German OLG Köln (Case Nr. 6 U 48/10) found that the use of the TM-complaint with Google may constitute an act of unfair competition, if as a consequence, resellers of the TM-products are stopped from advertising for them. See: Germany: Use Of Google’s TM-Complaint Procedure by TM-Owner – An Act of Unfair Competition?, Austrotrabant

  • Google Inc.'s methods for recommending websites are being reviewed by Texas' attorney general in an investigation spurred by complaints that the company has abused its power as the Internet's dominant search engine. Foundem, MyTriggers and TradeComet claim that Google is violating antitrust laws because those three sites don't like their rankings. All three allege that they're competitors to Google, and Google is trying to hold them down. (Search Engine Land has more)

  • The Associated Press (AP) has reached a new licensing agreement with Google, which allows Google to host AP content in search results for the Web in general, as well as for Google News,  in return for regular fees. Terms of the deal were not disclosed (Reuters)

  • A study published by the International Journal of Communication ("Trust Online: Young Adults' Evaluation of Web Content.") has found many students only click on websites that turn up at the top of Google searches to complete assigned tasks. Many students think, that web sites placed at the top by Google are credible.

  • According to the German Federal Supreme Court (Case I ZR 123/08) shop owners may only then change the price in their system when the product search engine has adopted the reported change. The defendant in the case had offered an espresso machine via the price search engine He changed the price on his website and simultaneously informed of the new price, but the old one still appeared for three hours. The court deemed such competition to be misleading.

  • Goldman has written about Google House Ads: The Problems With Google House Ads, Technology & Marketing Law Blog

  • An appeals court in Argentina has overturned a lower court's ruling against Google and Yahoo! Argentina that had found the search firms are liable for damaging the 'moral character' of Virginia Da Cunha, a model, singer and actress, by linking to pages that named her and used her image in a sexual context.

    The appeals court ruled Google and Yahoo weren’t liable for defamation for third-party content. Unfortunately for Google and Yahoo, the companies still face more than a hundred similar suits in Argentina (Out-Law / The judgment in Spanish).


8. New in Legal Resources

  • Katzenberger, Paul, Zwangsdigitalisierung urheberrechtlich geschützter Werke in den USA und in Deutschland: das Projekt Google Book Search und § 137l UrhG GRUR Int. 2010, 563-573

  • Spindler, Gerald, Bildersuchmaschinen, Schranken und konkludente Einwilligung im Urheberrecht - Besprechung der BGH-Entscheidung "Vorschaubilder", GRUR 2010, 785-792

  • Fahl, Constantin, Die Nutzung von Thumbnails in der Bildersuche, K&R 2010, 437-441

  • Ott, Stephan, Keyword Advertising mit fremden Marken, K&R 2010, 448-449

  • Ohly, Ansgar, Keyword Advertising auf dem Weg zurück von Luxemburg nach Paris, Wien, Karlsruhe und Den Hagg, GRUR 2010, 776-785

  • Hüttner, Sabine, 1, 2, 3, 4 Eckstein, keiner muss versteckt sein? - Wer sich im Internet präsentiert, muss mit Google rechnen!, WRP 2010, 1008-1016

  • Hoffmann, Christian, Die Verletzung der Vertraulichkeit informationstechnischer Systeme durch Google Street View, CR 2010, 514-518

  • Isbell, Kimberly, The Rise of the News Aggregator: Legal Implications and Best Practices (August 30, 2010). Berkman Center Research Publication No. 2010-10. Available at SSRN:


Update 70: July 18, 2010


1. IFPI to Google: Stop linking to The Pirate Bay!

The IFPI sent a DMCA takedown notice to Google demanding that the company not only stop linking to URLs specified in the notice, but to block any link to The Pirate Bay!

"In light of the serious violations of copyright facilitated by The Pirate Bay service, and in accordance with Google's policies (see and we are asking for your immediate assistance in removing from your index, or otherwise disabling access to via your search engine, URLs linking to the website for The Pirate Bay including but not limited to the URLs specified in the attachment to this notice."

The notice also said, that the IFPI is not responsible for detecting infringing material, thus insinuating that this is Google’s job!



2. Germany: Lex Google Street View?

The justice ministers of Germany's 16 states have agreed to support a legal initiative to extend laws protecting Germans' right to privacy to cover use of their own image and that of their homes in online street panoramas. The proposed German law is directly aimed at services like Google Street View and would amend Germany's Federal Data Protection Act to make it illegal to publish databases of street images linked to their geographic coordinates without first blurring faces and car registration plates in the images. It would also make it illegal to store the raw, unblurred image data for more than a month after first publication.


For more information see: Sayer, German Regulators Welcome Street Panorama Privacy Law Draft


3. USA: Google sued for click fraud

In the first click fraud lawsuit to be filed against Google since 2006, 123 Lock and Key has claimed the search giant charged it for paid-search clicks allegedly made by a competitor.123 Lock says in its court papers that it began advertising with Google October 12, 2009. From October 2009 to March 2010 it received around 15 clicks a day.  Around 80% of the people who clicked through followed up with a phone call, according to the lawsuit. In March 2010, 123 started getting charged for at least 100 to 150 clicks a day. The clicks never converted into phone calls. 123 claims it has provided Google with irrefutable evidence about the click fraud. Google refused to recognize the evidence.


4. Google hit with several class-action lawsuits over WiFi snooping

In June 2010, Google admitted that the cars it uses to gather Street View pictures have collected private information from unencrypted wireless networks for years, including passwords and extracts of the content of email messages. Google asserts that the collection was inadvertent.  Pablo Chavez, Google's director of public policy, explained in a June 9 letter to Congress that the Street View vehicles gather network information such as wireless addresses broadcast by WiFi routers "to improve the accuracy of the location-based services, such as Google Maps or driving directions."

Van Valin was the first, but not the last to file a class action complaint accusing Google of privacy invasion. Lots and lots of lawyers are trying to jump into the game. At least 7 class action lawsuits have been filed:

The big question in all these lawsuits: How can the plaintiff show that any of its specific data was recorded by Google, and that any harm came to him because of it.

Google filed a motion June 9 to consolidate all U.S. suits and move them to federal court in San Francisco.


5. ECJ ruling Primakabin / Portakabin

The Court of Justice has issued its fourth decision about the Google Adwords system (case C-558/08). The request originated this time from the Netherlands.


The ruling was given in a case pertaining to temporary cabin maker Portakabin and its competitor Primakabin. Primakabin chose the keywords 'portakabin', 'portacabin', 'portokabin' and 'portocabin' as its search terms for Google Adwords.

The ruling of the ECJ: The court reiterates its position from the previous AdWords cases that a trade mark proprietor can oppose to the use of a keyword, identical with its mark, if that use is liable to cause detriment to any of the functions of that mark (L’Oréal and Others, paragraph 60, and Google France and Google, paragraph 76). Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (‘the function of indicating origin’), but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising (L’Oréal and Others, paragraph 58, and Google France and Google, paragraph 77). As regards the function of indicating origin, the Court has held that the question whether that function is adversely affected when internet users are shown a third party’s ad, on the basis of a keyword identical with a mark, will depend in particular on the manner in which that ad is presented. The function of indicating the origin of the mark will be adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically linked to it or, on the contrary, originate from a third party (Google France and Google, paragraphs 83 and 84, and BergSpechte, paragraph 35).

As for the keywords that reproduce the trademark but contain spelling errors, the national court must assess whether: a) the relevant signs are identical with the trade mark because they contain differences which are so insignificant that they may go unnoticed by an average consumer (making them fall within the scope of Article 5(1)(a) of the Directive), or whether b) the relevant signs are not identical to that trade mark, but are similar to it within the meaning of Article 5(1)(b) of the Directive.

In the latter case, it will be for the national court to determine whether there is a likelihood of confusion. This should be assessed in the same way as the assessment of whether there is an adverse effect on the trade mark's function of indicating origin.

The ECJ then provided some - non exhaustive - guidance to the referring court on how to interpret the function of indication origin / to assess the likelihood of confusion:

  • It must be taken of the fact that the sale of second-hand goods under a trade mark is a well-established form of business, with which the average consumer will be familiar. Therefore, it cannot be held, merely on the basis of the fact that an advertiser uses another person’s trade mark with additional wording indicating that the relevant goods are being resold, such as ‘used’ or ‘second-hand’, that the ad creates the impression that the reseller and the trade mark proprietor are economically linked or that the ad is seriously detrimental to the reputation of that mark.

  • In those circumstances, in which a reseller specialises in the resale of goods under another person’s trade mark, the reseller cannot be prohibited from using that mark in order to advertise its resale activities which include – apart from the sale of second-hand goods under that mark – the sale of other second-hand goods, unless the resale of those other goods risks, in the light of their volume, their presentation or their poor quality, seriously damaging the image which the proprietor has succeeded in creating for its mark.


The exact answers of the ECJ:

1.      Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that a trade mark proprietor is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that mark, which that advertiser has selected for an internet referencing service without the consent of the proprietor, in relation to goods or services identical to those in respect of which the mark is registered, where that advertising does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party.

2.      Article 6 of Directive 89/104, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that, where use by advertisers of signs identical with, or similar to, trade marks as keywords for an internet referencing service is liable to be prohibited pursuant to Article 5 of that directive, those advertisers cannot, in general, rely on the exception provided for in Article 6(1) in order to avoid such a prohibition. It is, however, for the national court to determine, in the light of the particular circumstances of the case, whether or not there was, in fact, a use, within the terms of Article 6(1), which could be regarded as having been made in accordance with honest practices in industrial or commercial matters.

3.      Article 7 of Directive 89/104, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that a trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an internet referencing service without the consent of that proprietor – the resale of goods manufactured and placed on the market in the European Economic Area by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark.

The national court, which must assess whether or not there is such a legitimate reason in the case before it:

–      cannot find that the ad gives the impression that the reseller and the trade mark proprietor are economically linked, or that the ad is seriously detrimental to the reputation of that mark, merely on the basis that an advertiser uses another person’s trade mark with additional wording indicating that the goods in question are being resold, such as ‘used’ or ‘second-hand’;

–      is obliged to find that there is such a legitimate reason where the reseller, without the consent of the proprietor of the trade mark which it uses in the context of advertising for its resale activities, has removed reference to that trade mark from the goods, manufactured and placed on the market by that proprietor, and replaced it with a label bearing the reseller’s name, thereby concealing the trade mark; and

–      is obliged to find that a specialist reseller of second-hand goods under another person’s trade mark cannot be prohibited from using that mark to advertise to the public its resale activities which include, in addition to the sale of second-hand goods under that mark, the sale of other second-hand goods, unless the sale of those other goods, in the light of their volume, their presentation or their poor quality, risks seriously damaging the image which the proprietor has succeeded in creating for its mark.


6. French Supreme Court AdWords Case: Google v. Vuitton - Do we have a winner?

Following the ECJ March 23 decision (Vuillton v. Google), the Cour de Cassation canceled a June 2006 Court of Appeals decision condemning Google to a 300,000 € fine, and referred the case back to the appellate bench. Both sides welcomed the Supreme Court's referral of the case back to the appeals court. Louis Vuitton said the decision will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization.The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton.

Google denied this reading of the ruling, which it characterized as being in its favour: "The Cour de Cassation quashed the French Court of Appeal's original ruling that Google was guilty of trade mark infringement." See Google Claims Victory In French Supreme Court Keyword Trademark Case, Search Engine Land



7. In Short

  • The Article 29 Data Protection Working Party has written to Google, Yahoo and Microsoft, urging them to improve the protection of the online privacy of their users. The group has also written to the Federal Trade Commission, asking it to examine the compatibility of the search engines’ behaviour with Section 5 of the Federal Trade Commission Act. (The letters

  • Parts Geek dropped its AdWords lawsuit against Google, Parts Geek LLC v. U.S. Auto Parts Network, Inc., 5:10-cv-01713-JF (N.D. Cal. voluntary dismissal May 5, 2010).

  • Google dropped a lawsuit against record label, Blues Destiny, in which it sought a declaratory judgment that just linking to content is not infringing. Google withdrew after Blues Destiny promised it wasn't going to sue Google for infringement (Gardner, Google withdraws lawsuit against record label, THR).

  • Microsoft has filed more click-fraud lawsuits, see The Seattle Times.

  • The Court of Appeal for England and Wales in L’Oréal SA & Others v Bellure NV & Others [2010] EWCA Civ 535 refered to the ECJ's interpretation of the advertising function of a trademark as conceptually vague and ill-defined. Exactly my opinion. See Schubert / Ott, Mehr Fragen als Antworten – die Google France Entscheidung des EuGH zum Keyword Advertising, JusIT 2010, 85-88.

  • Two decisions in Germany regarding Google's liability for snippets (KG, decision of November 3, 2009, Az. 9 W 196/09: Google held liable for defamation; The Upper Regional of Hamburg did not held Google liable, decision of  March 2, 2010, Az. 7 U 70/09; it is likely we will see a decision on this matter from the German Federal Supreme Court).

  • Check out a new blog dealing with the latest developments on internet intermediaries' liability in Spain: (Miquel Peguera).

  • A court in Canada ruled that a Canadian college should be allowed to use another organisation's business name as a trigger for search engine adverts (Out-Law).

  • U.S. District Judge Louis Stanton has decided that YouTube is protected by the safe harbor of the Digital Millenium Copyright Act (DMCA) against claims of copyright infringement. Viacom had argued that Google had violated the copyright act by knowingly hosting copyright material. A key issue in the cas is what level of knowledge on the part of a website that it was hosting copyright material would destroy its "safe harbor" protection under the act. The case has always been about who bears the burden and who bears the cost of finding the infringing content. Viacom International, Inc., v. YouTube, Inc., 2010 WL 2532404 (SDNY June 23, 2010).



8. New in Legal Resources

  • Grimmelmann, James Taylor Lewis, Objections and Responses to the Google Books Settlement: A Report (May 13, 2010). Available at SSRN:

  • Sartor, Giovanni and Viola de Azevedo Cunha, Mario, The Italian Google-Case: Privacy, Freedom of Speech and Responsibility of Providers for User-Generated Contents (May 11, 2010). Available at SSRN:

  • Ling, Yutian, Note: Google Street View – Privacy Issues Down the Street, Across the Border, and Over the Seas (April 11, 2008). Boston University journal of Science and Technology Law, 2008. Available at SSRN:

  • Klett, Alexander / Apetz, Daja, Nochmals: AdWord-Werbung unter Verwendung fremder Kennzeichen –markenrechtsverletzend?, K&R 2010, 289-292

  • Ji, Yuan, Why the Google Book Settlement Should Be Approved: A Response to Antitrust Concerns and Suggestions for Regulation (June 9, 2010). Albany Law Journal of Science and Technology, Forthcoming. Available at SSRN:

  • Schirmbacher, Martin, Google AdWords – Wie geht es weiter für Werbetreibende nach den EuGH-Urteilen?, GRUR-Prax 2010, 165 ff.

  • Bullinger / Garbers-von Boehm, Google-Bildersuche – Schlichte Einwilligung des Urhebers als Lösung?, GRUR-Prax, Ausgabe 12/2010

  • Meyer, Sebastian, Aktuelle Rechtsentwicklungen bei Suchmaschinen im Jahr 2009, K&R 2010, 226-234

  • Walden, Ian, Mine host is searching for a "neutrality" principle!, Computer Law & Security Review, 2010, 203-209

  • Heidinger, Roman, Keyword-Advertising: Nutzung fremder Kennzeichen als Schlüsselwört, medien und recht 2010, 119-122 

  • Schubert / Ott, Stephan, Mehr Fragen als Antworten – die Google France Entscheidung des EuGH zum Keyword Advertising, JusIT 2010, 85-88

  • Ott, Stephan, Suchmaschinenrecht 2010 - Mehr Fragen als Antworten, NJW-aktuell, Heft 22/2010, S. 16-17

  • Haight, Geri / Peters, Carol, Considerations in Keyword Advertising: When Your Trademark Becomes The Key to Your Competitor's Ad, Electronic Commerce & Law Report 2010, 573-576

  • Anderl, EuGH zur Verantwortlichkeit bei Keyword-Advertising (II), ecolex 2010, 477-478



Update 69: May 11, 2010

1. The future of Google's image search in Germany

The German Federal Supreme Court has ruled that Google’s image search results  do not infringe copyright law. So displaying thumbnail images is legal! So far we only have the press release. It is not quite clear yet, how the court reached that decision. The main reason for the finding was that the suing artist had not used a simple technical measure (robots.txt) to stop Google from indexing his website. Judging from the press release und contrary to some news reports the court did not find that this amounts to consent to the use of images, but instead came up with another legal twist. But we wont know for sure untill we have the reasoning of the court.


The verdict is also not the end of the discussion about Google Image Search in Germany. There is another case pending in Hamburg, in which a work has been published online by third parties without the artist’s permission. Following the reasoning of the ECJ AdWords decision, the German Federal Supreme Court hinted that Google could only be liable if it was informed of the copyright infringement and did not act.


Also see: Google image search results do not infringe copyright, says German court,; BGH: Google's image search is no copyright infringement, IPKat


2. Privacy Officials criticize Google

Privacy watchdogs from 10 countries (among them UK, France, Germany, Israel, Canada, New Zealand) have written to Google to protest about the company’s disregard for data protection laws. The letter especially criticizes the way Google Buzz was introduced: "...we are increasingly concerned that, too often, the privacy rights of the world’s citizens are being forgotten as Google rolls out new technological applications.  We were disturbed by your recent rollout of the Google Buzz social networking application, which betrayed a disappointing disregard for fundamental privacy norms and laws.  Moreover, this was not the first time you have failed to take adequate account of privacy considerations when launching new services. ... In essence, you took Google Mail (Gmail), a private, one-to-one web-based e-mail service, and converted it into a social networking service, raising concern among users that their personal information was being disclosed.  Google automatically assigned users a network of “followers” from among people with whom they corresponded most often on Gmail, without adequately informing Gmail users about how this new service would work or providing sufficient information to permit informed consent decisions. This violated the fundamental principle that individuals should be able to control the use of their personal information. ... It is unacceptable to roll out a product that unilaterally renders personal information public, with the intention of repairing problems later as they arise.  Privacy cannot be sidelined in the rush to introduce new technologies to online audiences around the world..."


And how should Google behave in the future:

"We therefore call on you, like all organisations entrusted with people’s personal information, to incorporate fundamental privacy principles directly into the design of new online services.  That means, at a minimum:

  • collecting and processing only the minimum amount of personal information necessary to achieve the identified purpose of the product or service;

  • providing clear and unambiguous information about how personal information will be used to allow users to provide informed consent;

  • creating privacy-protective default settings;

  • ensuring that privacy control settings are prominent and easy to use;

  • ensuring that all personal data is adequately protected, and

  • giving people simple procedures for deleting their accounts and honouring their requests in a timely way.

In addition to respecting these broad principles, we also expect all organisations to comply with relevant data protection and privacy laws."


3. Google & Co v. Trademark Owners: The latest AdWord-News from the USA

The Flowbee v. Google case has been transfered from Texas to California by invoking the venue selection clause in the AdWords contract. See Goldman, Eric, Google AdWords Contract Upheld Again, Causing a Venue Transfer in Flowbee v. Google, Technology & Marketing Law Blog. Flowbee International, Inc. v. Google, Inc., 4:10-cv-00668-LB (S.D. Tex. Feb. 8, 2010).


In the Jurin v. Google case, the search engine got a dismissal of several claims.
A violation of 15. U.S.C. 1125 (a) – False Disgnation of Origin occurs, when a producer misrepresents his own goods or services as someone else’s, or, conversely when he represents someone else’s goods and services as his own. The court dismissed the claim:
Here, Defendant has in no way directly represented that it is the producer of the Styrotrim product. To the extent Plaintiff may contend that Defendant has helped “facilitate” confusion of the product with others, such is a highly attenuated argument. Even if one accept as true the allegation that a “Sponsored link” might confuse a consumer, it is hardly likely that with several different sponsored links appearing on a page that a consumer might believe each one is the true “producer” or “origin” of the Styrotrim product. As such, Plaintiff fails to properly plead a false designation of origin claim."

Rather interesting, the court also found that Google’s keyord suggestion tool is covered by 230 CDA: Rather it is a “neutral tool,” that does nothing more than provide options that advertisers could adopt or reject at their discretion, thus entitling the operator to immunity." 

For more information see: Goldman, Eric, Google Dismisses Some Claims in Jurin v. Google and Gets Some Attorneys' Fees, Technology & Marketing Law Blog

Jurin v. Google, Inc., 2010 U.S. Dist. LEXIS 18208 (E.D. Cal. March 1, 2010).


Rescuecom has dropped its keyword-related lawsuit against Google, thus ending the oldest case on the issue. Although it has not won any new concessions from Google, Rescuecom declared victory. "We have obtained two of the three things we initially sought in our complaint against Google." Rescuecom CEO, David Milman said.


1. “Rescuecom's first victory occurred before the United States Court of Appeals for the Second Circuit. That landmark case soundly rejected Google's argument that its auction of Rescuecom's trademark to the highest bidder was not a "trademark use" of Rescuecom's trademark."


2. "Google has recently confirmed to Rescuecom that it has removed Rescuecom's trademark from its Keyword Suggestion Tool." (this probably already happened in 2005...)


3. "The last of the three issues, which remains to be resolved another day, is how trademarks may be used as keywords to trigger the sponsored links themselves in a way that does not confuse consumers." It has probably become hard to press the issue against Google, because Rescuecom is seeking declaratory judgement in another case against Best Buy, that it may use the trademark protected term “geek squad” as a keyword. See Mediapost for details!


Stratton Faxon v. Google, Inc., NNH-CV-09-5031219S (Conn. Superior Ct. dismissed March 8, 2010). On March 8 the court granted a motion brought by Google to dismiss the case. See Goldman, Stratton Faxon v. Google Dismissed, Technology & Marketing Law Blog


Amazon has won a Keyword Lawsuit against Video Professor. Amazon had used “Video Professor” as keyword to trigger its ads. In some occasions clicking on the ad led users to a landing page on which competing Professor Teaches products appeared above and before Video Professor products. Video Professor alleged trademark infringement. But Video Professor was an Amazon vendor and the Vendor Manual, an agreement between Video professor and Amazon, includes the following passage: „Vendor ... hereby grants to a non-exclusive, worldwide, perpetual, and royality-free licence to ... use all trademarks and trade names included in the Product Information”. The court found that the scope of the licence is plain and unambiguous and Amazon’s use of the mark as keyword was within the scope of the licence. So no trademark infringement!

Video Professor, Inc. v ., Inc., 1:09-cv-00636-REB-KLM (D. Colo. April 21, 2010). For more information on the case also see: Goldman, Eric, Amazon Wins Keyword Advertising Suit--Video Professor v. Amazon, Technology & Marketing Law Blog


4. Google & Co v. Trademark Owners: The latest AdWord-News from Europe

4.1. The ECJ ruling - overview

The European Court of Justice (ECJ) released its ruling on two Adwords cases in March (Vuillton and Bergspechte). But that doesn't mean we know if the use of a trademark protected term as keyword is legal or not. Instead we are faced with new questions. I will provide a very short overview, followed by a more indepth analysis from Maximilian Schubert.

One thing is clear: The Court found that Google does not use the mark in the course of trade, even though it clearly draws economic advantage from selling them to advertisers as keywords.

As for the advertiser, the ECJ held that there is "use ‘in relation to goods or services’ within the meaning of Article 9(1)(a) of Regulation No 40/94 where the sign so used is identical with a Community trade mark." But a trademark owner can only exercise his right "in cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark. It follows from that case-law that the proprietor of the mark cannot oppose the use of a sign identical with the mark if that use is not liable to cause detriment to any of the functions of that mark. Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (‘the function of indicating origin’), but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising."


Adverse effect on the function of indicating origin:

A trade mark owner is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.


Adverse effect on the advertising function

The ECJ held that keyword advertising has no adverse effect on the advertising function: "It follows from those factors that, when internet users enter the name of a trade mark as a search term, the home and advertising page of the proprietor of that mark will appear in the list of the natural results, usually in one of the highest positions on that list. That display, which is, moreover, free of charge, means that the visibility to internet users of the goods or services of the proprietor of the trade mark is guaranteed, irrespective of whether or not that proprietor is successful in also securing the display, in one of the highest positions, of an ad under the heading ‘sponsored links’." So what? Is there trademark infringement, when the trademark owner has no web site of his own (that affects e.g. 20 % of all companies in Austria), his web site was removed from the Google index because of a violation of their terms or does not show up on the first search result page?

Many questions remain unsolved, but not surpsinigly, Google still claims victory (Official Google Blog): "Today, the Court confirmed that Google has not infringed trade mark law by allowing advertisers to bid for keywords corresponding to their competitors’ trade marks. It also confirmed that European law that protects internet hosting services applies to Google’s AdWords advertising system. This is important because it is a fundamental principle behind the free flow of information over the internet."


Here is what Maximilian Schubert has to say: From Biblical Questions To Delphian Confusion: The ECJ’s Decision On Google France C-236/08


5. In short

  • Based on the forum selection clause, the judge in TradeComet v. Google has dismissed the antitrust lawsuit against Google. So TradeComet can only sue Google in California, not in New York. LLC v. Google, Inc., 2010 U.S. Dist. LEXIS 20154 (SDNY March 5, 2010)

  • The Supreme Court of Canada has agreed to hear the Wayne Crookes case. Crooke alleges that linking to defamatory statements is the same as publishing defamatory material itself. The lower courts did not agree (see Internet link case to go before Supreme Court).

  • Although not even launched yet, there has been quite a controversy about Google Street View in Germany. And there is even more hysteria now: Germany’s data protection chief, Peter Schaar, is horrified by the discovery that Google is also collecting public wireless hotspot data, the MAC addresses and SSIDs. The SSID might be considered personal identifiable data in some circumstances (The SSID is the name given to a network by an operator to distinguish the network from other networks. The operator can choose to use his name as part of the SSID) and German data protection laws might apply, but it is still publicly available data and its recording should be legal. Transferring the data into another country, the USA in particular, might be more problematic. See  New Questions Over Google’s Street View in Germany, New York Times.

  • Italy: On February 23, 2010, the Tribunale Ordinario di Milano convicted three Google employees of violating privacy laws because the company had sought to profit from a video of an autistic boy being bullied by classmates.  In Italy the use of someone’s personal information with the intent of harming them or making a profit is prohibited. And there was, of course, no consent of the bullied schoolboy or his parents. Judge Oscar Magi held that Google had no obligation to monitor all the content uploaded to its platforms, but the company has to make European privacy policies clear to third-party users of its platform. Google said it would appeal the decision.

    For more information see: Italian Judge Cites Profit as Justifying a Google Conviction, New York Times

  • Photographers have decided to file their own lawsuit against Google Book Search (complaint), claiming that Google's Book Search project was undertaken without negotiating rights to their images with the photographers.

    For more information see Photographer groups sue Google over Book Search, CNET News

  • The European Commission has launched a preliminary investigation after the Microsoft-owned business Ciao, and two other small online companies (Foundem, a British price comparison site and, a French legal search engine) claimed that Google is acting anti-competitively.
    Google suggested that Microsoft is behind the complaints. The company also said that it penalizes some, but not all vertical search engines, because they are essentially spam. Foundem claims that Google uses its penalty filter against competing firms.
    For more details see: Companies ask EU Commission to step in on Google search ranking complaint, Out-Law

  • Bev Stayart (know from her lawsuit against Yahoo) is suing Google. The accusations:

    After a searcher types “bev stayart” in the search box, the suggested term “bev stayart levitra” appears in the drop down menue. Levitra is the registered trademark of nationally advertised oral treatment for sexual dysfunction. She also objects against the use of her name as trigger for ads. Unfortunately for her, there is a keyword option called “broadmatching”. It is not very likely that companies bid on the keyword “bev stayart”. They probably bid on “Levitra” and had their ad shown, no matter what other words appeared in the search terms.

    For more information on this lawsuit see: Goldman, Eric, Beverly Stayart Strikes Again! This Time, Stayart Sues Google, Technology & Marketing Law Blog

    Stayart v. Google, Inc., 2:10-cv-00336-LA (E.D. Wis. complaint filed April 20, 2010)

  • A business owner in Sweden is suing Google, alleging that Google provides links to blog post that portray him as a paedophile. He is seeking damages, but it seems he is not very convinced of winning the lawsuit: "I believe the odds are pretty bad. Google has so much money. It is so big. It cannot afford to lose such a trial," he told Dagens Media. "It would mean that Google would have to take responsibility for everything they publish." Also see: Swedish man sues Google for defamation

  • In Italy, the Autorita Garante della Concorrenza e del Mercato opened an investigation against Google based on complaints that the company abuses its position in the market by keeping its ad rate formula secret.

  • Google filed for a declaratory judgement that it did not violate Blues Destiny copyright by linking to unauthorized copies of Blues Destiny music that was hosted on RapidShare. Google Inc. v. Blues Destiny Records, LLC, complaint, 3:10-cv-01824-JSW

  • The Paris Grand Instance Court (TGI) held that eBay committed trademark infringement and unfair competition by using misspelled versions of trademarks for keywords. The decision is from February 11, 2010 and the court rejected eBay’s request to wait for the ECJ ruling.


6. New in Legal Resources

  • Casarosa, Federica, Privacy in Search Engines: Negotiating Control (November 15, 2009),

  • Peritz, Rudolph J.R. and Miller, Marc, An Introduction to Competition Concerns in the Google Books Settlement. NYLS Legal Studies Research Paper No. 0/10 #23,

  • Malkawi, Bashar, Google’s use of Rescuecom’s trademark as an advertising keyword and the U.S. Federal Trademarks Act, Computer Law & Security Review 2010, 77-89

  • Manne, Geoffrey A. and Wright, Joshua D., Google and the Limits of Antitrust: The Case Against the Antitrust Case Against Google (March 24, 2010). Available at SSRN:

  • Bechtold, Stefan, Optionsmodelle und private Rechtsetzung im Urheberrecht am Beispiel von Google Book Search, GRUR 2010, 282-289

  • Frey, Dieter, Leistungsschutzrecht für Presseverleger, MMR 2010, 291-295

  • Lindner, Christian, Persönlichkeitsrecht und Geo-Dienste im Internet - z.B. Google Street View / Google Earth, ZUM 2010, 292-301

  • Danckert, Burkhard / Mayer, Frank Joachim, Die vorherrschende Meinungsmacht von Google – Bedrohung durch einen Informationsmonopolisten?, MMR 2010, 219-221

  • Föhlisch, Carsten, Anmerkung zu BGH, Versandkosten bei Preissuchmaschinen, MMR 2010, 246-248

  • Burk, Dan L., Cybermarks (May 6, 2010). Minnesota Law Review, Vol. 91, 2010. Available at SSRN:

  • Baars, Wiebke, Keyword Advertising: Aktuelle Signale aus Luxemburg, IPRB 2010, 64-67

  • Ultsch, Michael, Zur Anwendbarkeit der E-Commerce-Richtlinie auf Suchmaschinen, MMR-Aktuell 2010, 302563

  • Ott, Stephan, Die Entwicklung des Suchmaschinen- und Hyperlink-Rechts im Jahr 2009, WRP 2010, 435-462

  • Ott, Stephan / Schubert, Maximilian, Fremde Marken als Keywörter – Orakelsprüche des EuGH als Antwort auf biblische Fragen, MarkenR 2010, 160-166

  • Ernst, Stefan, Google Street View: Urheber- und persönlichkeitsrechtliche Fragen zum Straßenpanorama, CR 2010, 178-184


Update 68: February 9, 2010

1. Germany: Google hit with antitrust lawsuits

Google has been hit with antitrust complaints in Germany from newspaper and magazine publishers (Federation of German Newspaper Publishers (BDZV) and the Association of German Magazine Publishers (VDZ)) who want the company to pay for using article snippets in its news service and search results. The publishers also complain about a lack of transparency in the way Google presents its search results.

According to Geek Hans-Joachim Fuhrmann, a spokesman for the German Newspaper Publishers Association, said the Web sites of all German newspapers and magazines together made 100 million euros, or $143 million, in ad revenue, while Google generated 1.2 billion euros from search advertising in Germany. “Google says it brings us traffic, but the problem is that Google earns billions, and we earn nothing,” Mr. Fuhrmann said.

Well, sound like the Rupert Murdoch idea: We have no clue how to innovate our business model, so let’s try to “extort” money out of Google.

Ciao claims its contract with Google unfairly limits its own ability to sell advertising and that it lacks transparency because it doesn't give the company the ability to review if ad revenues paid by AdWords are correct.

Euro-Cities objects to Google’s practice of offering free online mapping services. Letting just anyone embed Google maps in their sites is anti-competitive and killing its own business.


For more information see: Pfanner, Eric An Antitrust Complaint for Google in Germany, New York Times



2. Google Tax in France?

The so called Zelnick Report, financed by the French government recommends that big advertising companies like Google and Yahoo be taxed. The tax would kick in anytime an ad is clicked in France regardless of where the company is based. This concept is likely to create  all kinds of legal and technical issues. With the expected revenue of up to $ 28 million France wants to help the struggling music and publishing sector. The Report blames Google for the troubles, arguing the search engine profits from works produced by content providers and doesn’t give anything back.

For more information see:

Sandovai, Greg, France could tax Google to subsidize music, CNet



3. Great Britain: Protection of search engines from liability for copyright infringement

There are discussions in Great Britain about creating a new exemption from copyright law for search engines that create copies of web pages in order to perform their search duties (see Outlaw). The proposed amendment:

"Protection of search engines from liability for copyright infringement


The Copyright, Designs and Patents Act 1988 is amended as follows.


After section 116F (as inserted by section (Compulsory licensing of recorded music to be made available via the internet)) insert—


Protection of search engines from liability for copyright infringement


Every provider of a publicly accessible website shall be presumed to give a standing and non-exclusive license to providers of search engine services to make a copy of some or all of the content of that website, for the purpose only of providing said search engine services.


The presumption referred to in subsection (1) may be rebutted by explicit evidence that such a licence was not granted.


Such explicit evidence shall be found only in the form of statements in a machine-readable file to be placed on the website and accessible to providers of search engine services.


A provider of search engine services who acts in accordance with this section shall not be liable for any breach of copyright in respect of the actions described in subsection (1).""


4. Keyword Lawsuit Morningware v. Hearthware

In Morningware Inc. v. Hearthware Home Products Inc., N.D. Ill, No. 09-4348, 11/16/09, the court relied on Rescuecom Corp. v. Google to hold that Hearthware’s purchase of plaintiffs trademark as keywords was an actionable use in commerce. This behaviour might also have initially confused consumers as to the source of its products.

The text of the ad in question reads: “The Real NuWave ® Oven Pro Why Buy an Imitation? 90 Day Gty.”  Morningware alleges that the topmost placement of Hearthware’s advertisement on the search results page coupled with the “Why Buy an Imitation?” statement demonstrates a false claim of product superiority over Morningware’s products, and that this misleads and/or confuses consumers into “believing that [Morningware]’s products are inferior to Hearthware’s because they are ‘Imitations,’ and thus fakes, of Hearthware’s products, which they are not.” In its decision the court declined to dismiss a product disparagement claim and State Law claims.

Also see: Schubert, ’Why Buy an Imitation?’: Acts of Unfair Competition Through Keyword Advertising, Austrotrabant



5. Borings: 1 US Dollar from Google?

The Third Circuit has reinstated a lawsuit that the Borings filed against Google after a driver for its Street View service took photographs of their home. The court upheld the lower court’s decision tossing most of the claims, but said the court erred on the trespass claim: “The Borings have alleged that Google entered upon their property without permission. If proven, that is a trespass, pure and simple,” the 3rd U.S. Circuit Court of Appeals said. “It was thus improper for the District Court to dismiss the trespass claim for failure to state a claim.” But the Court hinted that Aaron and Christine Boring may only be able to wrest $1 in damages from the search company - unless they can prove that they were actually harmed in the moment the Google driver lingered on their property.

 Boring v. Google Inc., 2010 WL 318281 (3rd Cir. Jan. 28, 2010).



6. German Court Surprisingly Liberal on Derogatory Domains & Likeliness of Confusion Online:

The OLG Braunschweig, which used to be known for its TM-holder-friendly attitude, has recently delivered a very surprising liberal decision concerning the likeliness of confusion online in relation to a criticizing website. Continue reading at Maximilian Schubert's


7. In short

  • And even more Adwords related lawsuits: King Pharmaceuticals, Inc., v ZymoGenetics, Inc., 2009 WL 4931238 (E.D. Tenn. Dec. 10, 2009). For more information see Goldman, Eric, Pharma Company Avoids Injunction By Dropping Competitive Keyword Ads--King v. ZymoGenetics, Technology & Marketing Law Blog.

  • A complaint filed in Wisconsin alleges that purchasing a law firm’s name as keyword violates the privacy rights of the named shareholders of that firm. The claim is based on Wisconsin statute § 995.50 (2)(b), which prohibits "the use, for advertising purposes or for purposes of trade, of the name, portrait or picture of any living person, without first having obtained the written consent of the person." Habush v. Canon, Wis. Cir. Ct. No. 09CV018149, 11/18/09

    Rescuecom seeks declaratory judgement that its use of Best Buy’s trademark „geek squad“ is legitimate. It’s the same Rescuecom that is suing Google for trademark infringement because the search engines allows advertisers to buy trademarks as keywords… See Mediapost for details!

  • Shanda Literature Limited (SDL) sued Baidu, China's biggest search engine claiming that its links lead to web sites that offer free ilegal downloads of works written by their contracted writers (Chinadaily).

  • Canadian search engine Groovle has won a domain name dispute with Google. The court held that the name was not similar enough to confuse people and the word 'groovle' was more closely linked to "groovy" or "groove" rather than Google (BBC News).

  • A French appeals court has ruled against Google in a case about Google Suggest. Google has been ordered to remove the word arnaque — which means “scam” — from appearing as a Google Suggest term on searches for the Centre National Privé de Formation a Distance (CNFDI). See Big Mouth Media and Update 65 for information on the first instance decision.

  • In December 2009, Google lost a Book Search lawsuit in France. Here is an english translation of the case!

  • Yahoo has settled a lawsuit by American Airlines about the alleged use of its name to trigger search ads.

  • A new lawsuit over allegedly mismanaged AdWord bids. The plaintiff, Largo Cargo, claims that "Google does not inform ist advertisers that if they leave the CPC content bid input blank, Google will use the advertiser’s CPC bid for clicks occuring on the content network. Google does this despite the fact that ads placed on the content network are demonstrably inferior to ads appearing on search result pages. Because there is no option to opt out of content ads during AdWords registration process, advertisers reasonably believe that by leaving the CPC content bid input blank they can opt out of having their ads placed on the content network."

    Largon Cargo v. Google


8. New in Legal Resources

  • Viefhues, Martin, Markenrecht und Google AdWods: Ist die Werbefunktion der Marke die Lösung?, GRUR-Prax 2009, 28

  • Ruessmann, Laurent / Melin, Hanne, Ode to the Digital Single Market: And the Google AdWords case plays a part, CRI 2009, 161-165

  • Batalla, Enrique, Sanmartìn, Marìa Jesùs, Lights and Shades on the Future of Keyword Advertising, CRI 2009, 165-169

  • Rauer, Nils, Das Google Book Settlement 2.0, K&R 2010, 9-15

  • Auer-Reinsdorff, Astrid, Affiliate-Marketing und Suchstichwörter, ITRB 2009, 277-280

  • Kenneddy, Charles, FTC Presses ist Attack on Behavioral Advertising, CRI 2009, 180-183

  • Seidel, Janine / Nink, Judith, Personensuchmaschinen, CR 2009, 666-671

  • Zeck, Keven, Referential Fair Use & Keyword Advertising: The Necessity of Product Placement to our Domestic System of Free-Market Enterprise, 44 Gonz. L. Rev. 519 2008-2009

  • Mercadante, Joseph M., What is Google's Reputation Score? A Method for Modified Self-Regulation of Search (2008). Available at SSRN:

  • Ventose, Eddy D., Search and You Will Find: Google AdWords and Trade Mark Protection (January 12, 2010). Journal of Intellectual Property Law and Practice, 2010. Available at SSRN:

  • Lee, Edward, Technological Fair Use (January 3, 2010). Southern California Law Review, Forthcoming. Available at SSRN:

  • Czerniawski, Michal, Responsibility of Bittorrent Search Engines for Copyright Infringements (December 20, 2009). Available at SSRN:


Update 67: December 13, 2009

1. Google Book settlement: The new version
Google, the Authors Guild and the Association of American Publishers submited a newer version of their settlement (Amended Settlement Agreement, ASA). The Notice of Motion for Preliminary Approval of Amended Settlement Agreement provides a good overview over the modifications. The most important points are:
  • A work is now included in the settlement only if, by January 5, 2009, it has been registered with the United States Copyright Office, or published in Canada, the United Kingdom, or Australia. This addresses concerns expressed e.g. by the French and German government.
  • As in the original Settlement Agreement, the ASA provides that Google may make Display Uses of Books that are Commercially Available only after the Rightsholders affirmatively authorize Google to do so. Although Google is authorized by default to make Display Uses of Books that are not Commercially Available, the Rightsholder can turn those uses off at any time.
    The ASA clarifies the definition of “Commercially Available.” Under the amended definition, a Book is categorized as Commercially Available, and thus will not be displayed without explicit permission, if new copies are available for purchase by consumers in the United States, Canada, the United Kingdom, or Australia from sellers anywhere in the world.
  • Google has agreed to give the Book Rights Registry (the “Registry”) sixty days’ notice after Google classifies a Book as not Commercially Available before it makes any Display Uses of that Book.
  • The parties deleted Section 3.8(a), which provided “Most Favored Nation” status to Google.
  • The proposed Final Judgment and Order of Dismissal provides that the Court’s approval of the settlement does not provide any immunity from the antitrust laws, such as via the Noerr-Pennington Doctrine. This might enable the District Judge and the DOJ to not address the antitrust concerns at this point, but instead wait how the market develops and act later (see Picker, Accessing Competition Issues in the Amended Google Book Search Settlement).
  • The ASA now provides that the Registry’s Charter will ensure that an independent fiduciary will be delegated the responsibility to represent the interests of the Rightsholders of unclaimed Books and Inserts with respect to the exploitation of their works under the ASA.
  • The ASA also changes the provisions relating to the use and disposition of funds generated by a Book whose Rightsholder has not made a claim. Now, the Registry will hold these funds, for the benefit of that Rightsholder, for at least ten years (extended from five years under the original Settlement Agreement). ASA § 6.3(a)(i)(1). Beginning five years after the Effective Date, subject to the approval of the fiduciary, the Registry may use 25% of all funds earned in any one year that have remained unclaimed for at least five years for the sole purpose of locating the Rightsholders of unclaimed works. ASA § 6.2(a)(i)(2).
 The Registry still has not the power to grant a similar license to any other company that might want to make the same kinds of uses that Google will be allowed to make under the settlement.
U.S. District Judge Denny Chin granted preliminary approval for the agreement and ordered that groups will have until Jan. 28 to file objections with the court. The fairness hearing will  be held on Feb. 18, 2010.

For more information see:


2. USA: Google's impact on a jury verdict
The South Dakota Supreme Court upheld a trial court's decision that granted a motion for a new trial alleging jury misconduct.
The plaintiff had claimed that the seat belts unlatched during a deadly accident because they were negligently designed. He brought suit against the manufacturer Takata Corporation and its American Subsidiary, TK Holdings, Inc. Prior to the trial the then prospective juror Flynn conducted two quick Google searches, one for Takata, one for TK Holdings. It was revealed to him that Takata is a seat belt and airbag manufacturer and that TK Holdings is the American subsidiary of Takata.
During the trial evidence was presented that Takata had notice its seat belts were defective. At least four drivers claimed their seatbelts had come unbuckled during accidents. Ten other lawsuits had been filed against Takata.
During deliberation, juror Flynn told another juror about his web search. He said he did not find any information on other lawsuits during his search. Three other jurors heard the exchange. The jury finally reached its verdict for the defense.

Following a motion by the plaintiff, the trial court set aside the verdict on finding that one juror had introduced extrinsic evidence into deliberation that prejudiced the jury and swayed the outcome. Extrinsic evidence includes "knowledge relevant to the facts in issue not obtained through the introduction of evidence but acquired prior to trial."

The Supreme court agreed, but did not announce a "hard and fast rule that all such types of internet research by a juror prior to trial without notice to the court and counsel automatically doom a jury's verdict. Rather, as we do in such cases, we give deference to the trial court, which had the distinct advantage of being present throughout the nineteen-day trial."
For more information see: Jensen, Gary, How the Internet is impacting our legal system, KOTA Territory News
3. Switzerland: Lawsuit against Google Street View
Hanspeter Thür, the federal data protection and information commissioner, brought suit against Google over an alleged failure to protect people's privacy on its Street View website. In a statement he said: "Numerous faces and vehicle number plates are not made sufficiently unrecognizable from the point of view of data protection, especially where the persons concerned are shown in sensitive locations, e.g. outside hospitals, prisons or schools... The height from which the camera on top of the Google vehicle films is also problematic. It provides a view over fences, hedges and walls, with the result that people see more on Street View than can been seen by a normal passer-by in the street."
Prior to taking Google to the country's Federal Administrative Court Thür had asked Google to take various measures, but the company had not complied with the request. Thür inter alia demanded that Google develop a better system for blurring faces and licence plate numbers to guarantee privacy protection.


For more information see: Claburn, Thomas, Google Fights Street View Ban in Switzerland, InformationWeek
4. USA: "Expert witness": Keyword metatag matters
We have seen several keyword metatag cases in the last years, way too many, considering that Google never used the information provided in the keyword metatag for ranking its search results. Nethertheless companies sued competitors for using their mark as metatag. Untill recently, they could at least claim that Google did not publically talk about it. But a few months ago, Google confirmed what was known for years in a video.
Ling Chai, the CEO of the software company Jenzabar sued the makers of a documentary, because they had used "Jenzabar" as metatag, which Jenzabar believes violates its trademark. And the company succeeded in finding an expert witness, who claims that the keyword metatag does in fact influence Google's search results! It is not clear from his statement how he has expertise in this field. We'll see if the court finds that Google is lying about his algorithm. I very much doubt it. Pretty much everyone in the search optimizing field knows that the keyword metatag does not matter to Google. And when you look at the statement of the witness, he always mentions the importance of the keyword metatag and the title of the web site. He shoud have left out the metatag and he would be right. See e.g. Nr. 26: " is my professional opinion that LB's incorporation of Jenzabar's registered marks, as both keyword meta-tags in the source code for pages on LB's website, together with "JENZABAR" as the title tag, is a primary reason for why Web search engines, including Google, Bing, and others rank LB's website so high on a search of the term "jenzabar".
5. Germany: A new neighboring right for publishers?
The German government has announced plans to create a new kind of copyright to protect online journalism and to help major media companies to build a succesfull business model on the internet. Although it is not at all clear how a new neighboring right might look like, newspaper and magazine publishers in Germany welcomed the proposal. In my view this looks very much like an attempt to hurt Google News and to protect dinosaur businesses that are not able to adapt to the online world. One can only speculate about what the government has in mind. One possibility would be to require a license for any commercial use of published material. That might even include linking to it. But where does the commercial use of an article start? Would a blogger, who takes part in the Google AdSense programm, be required to ask for permission to link to articles? And what about Google? In Germany, there are no ads on their News web site. And even if the new right would be tailored to stop services like Google News. Isn't it likely, Google would pay no money to index the news web sites. Instead, I would expect Google to just remove the sites of companies from the index, who insist on a compensation. Google does not depend on the media websites, while they receive up to half of their visitors from Google. So they might experience a significant loss of money from advertising on their web sites (According to Cashmore, the Wall Street Journal alone could face an estimated 15 million US Dollar decline in revenue). As long as there is no united front against Google, I see no danger to the search giant.

Also important in this context: Last month, Murdoch announced he will block Google from indexing News Corps materials and do a deal with Microsoft, so consumers will have to use the Bing search engine to find Murdoch owned content. The frightening aspect of this: If content provider begin striking deals with search engines, we'll no longer have a "single index of the entire web". Want to find articles of newspaper A und B, then Google them, want to find articles of newspaper C and D: You have to Bing them ...

Jeff Jarvis, author of the book "What Would Google does" comments Murdoch's move on his blog as follows:

News Corp. leaving Google would be a mosquito bite on an elephant’s ass, unnoticed by Google or by the audience. For there will always be – as Murdoch laments – free competitors: the BBC and Australian Broadcasting Corp, which he and his son complain about, not to mention the Guardian, the Telegraph, NPR, CBC and any sensible news organization worldwide.

This silliness is emblematic of the end of the Gutenberg age, the industrial age, the age of control, the age of centralization, Murdoch’s age. The problem here is that Google-virgin Murdoch simply does not understand the dynamics of the link economy. He roars against them. Google et al do not take his content, they send it audience and value. It is up to him to exploit that. The business failure here is Murdoch’s, not Google’s.


For more information see: Pfanner, Eric, Germany look at ways to protect online journalism, New York Times
6. UK: Interflora v. Marks & Spencer: The questions!
As I have mentioned here earlier, the Adword case between Interflora and Mark & Spencer has been referred to the European Court of Justice (ECJ). It took Mr. Justice Arnold some time to formulate the exact questions, but finally here they are:


Questions referred
Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website (i) selects a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with the trade mark as a keyword for a search engine operator's sponsored link service, (ii) nominates the sign as a keyword, (iii) associates the sign with the URL of its website, (iv) sets the cost per click that it will pay in relation to that keyword, (v) schedules the timing of the display of the sponsored link and (vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the competitor within the meaning of Article 5(l)(a) of First Council Directive 89/104/EEC1 of 21 December 1988 ("the Trade Marks Directive") and Article 9(l)(a) of Council Regulation 40/942 of 20 December 1993 on the Community trade mark ("the CTM Regulation")?
Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?
Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?
Does it make any difference to the answer to question 3 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State of the Community to block the selection of signs identical to their trade marks as keywords by other parties?


Where the search engine operator (i) presents a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with a registered trade mark to a user within search bars located at the top and bottom of search pages that contain a sponsored link to the website of the competitor referred to in question 1 above, (ii) presents the sign to the user within the summary of the search results, (iii) presents the sign to the user by way of an alternative suggestion when the user has entered a similar sign in the search engine, (iv) presents a search results page to the user containing the competitor's sponsored link in response to the entering by the user of the sign and (v) adopts the user's use of the sign by presenting the user with search results pages containing the competitor's sponsored link, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute "use" of the sign by the search engine operator within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?


Is any such use "in relation to" goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?


Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?


Does it make any difference to the answer to question 7 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State to block the selection of signs identical to their trade marks as keywords by other parties?


If any such use does fall within the scope of either or both of Article 5(l)(a) of the Trade Marks Directive/Article 9(l)(a) of the CTM Regulation and Article 5(2) of the Trade Marks Directive/Article 9(l)(c) of the CTM Regulation:
(a) does such use consist of or include "the transmission in a communication network of information provided by a receipt of the service", and if so does the search engine operator "select or modify the information", within the meaning of Article 12(1) of European Parliament and Council Directive 2000/31/EC3 of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market ("the E-commerce Directive")?


(b) does such use consist of or include "the automatic, intermediate and temporary storage of information, performed for the sole purpose of making more efficient the information's onward transmission to other recipients of the service upon their request" within the meaning of Article 13(1) of the E-commerce Directive?
(c) does such use consist of or include "the storage of information provided by a recipient of the service" within the meaning of Article 14(1) of the E-commerce Directive?
(d) if the use does not consist exclusively of activities falling within the scope of one or more of Article 12(1), 13(1) and 14(1) of the E-Commerce Directive, but includes such activities, is the search engine operator exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?


If the answer to question 9 above is that the use does not consist exclusively of activities falling within the scope of one or more of Articles 12-14 of the Ecommerce Directive, may the competitor be held jointly liable for the acts of infringement of the search engine operator by virtue of national law on accessory liability?


1 - First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks OJ L 40, p. 1

2 - OJ L 11, p. 1

3 - OJ L 178, p. 1

There are currently seven cases pending at the ECJ (see this overview). The Advocate General's Opinion on the French cases was published on 22 September 2009 (for more information click here).
7. Germany: Criminal Investigation against Google
A criminal investigation has been launched against Google in Hamburg, Germany, because of its YouTube web site. Jens Schippmann, attorney of a group of several German independent labels, publishers and artists has filed claims with the public prosecutor's office. He alleges that Google didn't respond to requests to take down more than 8000 infringing videos and that users would utilize YouTube as a kind of "covert file-sharing platform".
It is still unclear if the ongoing investigation will ever lead to a court case.
For more information see: Spahr, Wolfgang, German Indies, Artists, File against YouTube/Google,


8. USA: Google sues over alleged work-at-home scams

Google is suing Pacific WebWorks over the creation of scam ads ("Use Google to Make 1000s of Dollars!" or "Easy Cash with Google: You Could be Making up to $978 a Day Working from Home!") that have fooled thousands of job hunters into thinking they were applying for work with the internet giant. Because the logo is displayed prominently on the ads, Google claims the unaffiliated websites are misusing its trademark to deceive unsuspecting consumers, many of whom have turned to Google to lodge complaints and ask for refunds. According to Google,  consumers who sign up for these products either receive nothing except fraudulent credit card charges, or DVDs with computer viruses.

See: Fighting fraud online: taking "Google Money" scammers to court, Official Google Blog


9. In short 


10. New in Legal Resources

  • Cornthwaite, Jonathan, AdWords or Bad Words? A UK Perspective and Trademark Infringement, E.I.P.R. 2009, 347-352
  • Wieduwilt, Hendrik, Warnschuss für Web 2.0-Juristen, Anmerkung zu LG Hamburg - Google AGB, K&R 2009, 741-742
  • Shoemaker, Don't Blame Google: Allowing Trademark Infringement Actions Against Competitors Who Purchase Sponsored Links on Internet Search Engines under the Initial Interest Confusion Doctrine, Catholic University Law Review, v58 no2 p535-66 Wint 2009
  • Laidlaw, Private Power, Public Interest: An Examination of Search Engine Accountability, International Journal of Law & Information Technology v17 no1 p113-45 Spr 2009
  • Ott, Stephan, EuGH: Schlussanträge in den AdWords-Verfahren - Konsequenzen für die Anbieterhaftung in Deutschland, MMR-Aktuell 11/2009, S. V-VI
  • Dreier, Thomas, Thumbnails als Zitate?, in: Festschrift für Achim Krämer, 2009, S. 225-239
  • Jahn, David / Striezel, Julia, Google Street View is watching you, K&R 2009, 753-758
  • Heymann, Britta / Nolte, Georg, Blockiert das Urheberrecht sinnvolle Informationsdienste?, K&R 2009, 759-765



Update 66: October 19, 2009

1. ECJ: Advocate General says use of trademarks as keywords is ok!

Google is before the European Court of Justice (ECJ) in connection with a French case in which a number of companies, including Louis Vuitton complained that Google had infringed their trademark rights by allowing advertisers to use company trademarks as keywords. The winner in the latest round: Google. An adviser to Europe’s highest court said that Google’s controversial practice was not illegal under European law. Google mays allow advertisers to select the keywords and also display ads for searches involving the keywords.

The opinion contains some interesting statements on the questions whether there is a likelihood of confusion or not:

"86.      By comparing ads with natural results, the parties assume that natural results are a proxy for ‘true’ results – that is to say, that they originate from the trade mark proprietors themselves. But they do not. Like the ads displayed, natural results are just information that Google, on the basis of certain criteria, displays in response to the keywords. Many of the sites displayed do not in fact correspond to the sites of the trade mark proprietors.

87.      The parties are influenced by the belief to which I referred at the outset – that if an internet user seeks something in Google’s search engine, the internet user will find it. However, that is not a blind belief; internet users are aware that they will have to sift through the natural results of their searches, which often reach large numbers. They may expect that some of those natural results will correspond to the site of the trade mark proprietor (or an economically linked undertaking), but they will certainly not believe this of all natural results. Moreover, sometimes they may not even be looking for the site of the trade mark proprietor, but for other sites related to the goods or services sold under the trade mark: for example, they might not be interested in purchasing the trade mark proprietor’s goods but only in having access to sites reviewing those goods.

88.      Google’s search engine provides help in sifting through natural results by ranking them according to their relevance to the keywords used. There may be an expectation on the part of internet users, based on their assessment of the quality of Google’s search engine, that the more relevant results will include the site of the trade mark proprietor or whatever site they are looking for. However, this is nothing more than an expectation. Confirmation only comes when the site’s link appears, its description is read, and the link is clicked on. Often the expectation will be disappointed, and internet users will go back and try out the next relevant result."

Trade marks which have a reputation enjoy special protection as compared with ordinary trade marks: their use can be prevented not only in relation to identical or similar goods or services, but also in relation to any good or service that takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. This special protection for trade marks which have a reputation does not depend on there being a risk of confusion on the part of consumers. But still, no trademark violation by Google, because:

In my opinion, it's too early for Google to celebrate. The Advocate General's opinion definitely is a huge victory, but the European Court of Justice still has to follow it. It often does, but e.g. last year in another internet law case, where it had to decide whether a service provider operating exclusively on the Internet is under an obligation to communicate its telephone number to clients prior to the conclusion of a contract, it did not ( The discussion about the use of trademarks as keywords has been going on for nearly a decade now, it has produced more than 100 judgements world-wide and uncountable articles on the subject and still, the Advocate General came up with some new legal considerations. I would expect some further surprises in the European Court of Justice judgement, although I find it likely that Google will win again.

So let's assume Google is not infringing trademark rights by allowing advertisers to buy keywords: In June 2009, Google has liberalized its trademark policy in 190 countries to conform it to its policy in the US, Canada, Ireland and the UK. Google does not block the sales of trademarked keywords in these countries. It is very likely that following a victory in the Adword lawsuit Google will liberalize its trademark policy in the EU member states, too. Maybe with one - at first sight surprising - exemption: France. No court there sided with Google in the AdWords lawsuits, although some found that Google did not commit a trademark violation. Instead they based Google's liability on the common civil principle of fault (Section 1382 of the Civil Code, which provides that "Any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it.") So French courts might still find a way around a Google friendly decision by the European Court of Justice and there might be one more battle ahead for Google in France.

There is one more important point of the Advocate General's opinion, that is hidden in Footnote 72: We have an ongoing discussion in many EU member states about the liability of search engines for search results that lead to infringing content. The Advocate General says, that in his opinion a search engine may fall under the liability exemption provided in respect of "caching" in Article 13 of the E-Commerce-Directive 2000/31. That would pretty much exempt search engines from liability. If the European Court of Justice would side with this opinion, this would be another  important victory for search engines. But this point has no importance for the outcome of the AdWords lawsuits, so it remains to be seen if the ECJ makes some obiter dictum statements.


2. Author's Guild v. Google - The latest developments

  • After the settlement in the class action lawsuit between Google and the Authors Guild and the Association of American Publishers was announced last October, nearly 400 parties have filed positions on the proposed settlement, with the majority of them opposing the deal. Amazon, Yahoo and Microsoft e.g. fear that the deal would give Google too much control over orphan works. Google co-founder Sergey Brin reacted to the critics of the settlement, saying that Google was the only company that has stepped up to scan the millions of out-of-print books and make them available to users. Companies that are complaining are doing nothing for them. (see Google Co-founder Sergey Brin Fires Back at Google Book Search Critics

  • The German Governement has lodged an objection to the deal between Google and the Authors Guild alleging that it would undermine the rights of German authors within the US. In its weekly podcast, German Chancellor Merkel said there are considerable dangers for copyright protection on the Internet. "That’s why we reject the scanning in of books without any copyright protection — like Google is doing. The government places a lot of weight on this position on copyrights to protect writers in Germany.

  • The European Commission has called for a "European solution" to book digitisation. But a cooperation with Google might be possible. "Digitisation of books is a task of Herculean proportions which the public sector needs to guide, but where it also needs private-sector support. It is therefore time to recognise that partnerships between public and private bodies can combine the potential of new technologies and private investments with the rich collections of public institutions built up over the centuries. If we are too slow to go digital, Europe's culture could suffer in the future," said a joint statement by Information Society Commissioner Viviane Reding and Internal Markets Commissioner Charlie McCreevy. Please note, there is already a digital library of scanned works in Europe, Europeana. See: EU calls for European solution to book digisation, Outlaw.

  • Google has agreed to change the proposed settlement after the Department of Justice said it opposed the deal: "A global disposition of the rights to millions of copyrighted works is typically the kind of policy change implemented through legislation, not through a private judicial settlement. If such a significant (and potentially beneficial) policy change is to be made through the mechanism of a class action settlement (as opposed to legislation), the United States respectfully submits that this Court should undertake a particularly searching analysis to ensure that the requirements of Federal Rule of Civil Procedure 23 ('Rule 23') are met and that the settlement is consistent with copyright law and antitrust law. As presently drafted, the Proposed Settlement does not meet the legal standards this Court must apply." But the DOJ also stressed the positive effects of the greement: "The Proposed Settlement has the potential to breathe life into millions of works that are now effectively off limits to the public. By allowing users to search the text of millions of books at no cost, the Proposed Settlement would open the door to new research opportunities."

  • The fairness hearing was postponed and New York District Judge Denny Chin ordered the parties to present the revamped deal to the court Nov. 9. The final hearing could happen as soon as late December or early January.

    Paul Aiken, executive director of the Authors Guild, said in an interview that “the core agreement is going to stay the same.

 It's my guess that the revised settlement agreement will

  • exclude foreign authors and publishers from the class so that the settlement has no impact on them. This would eliminate many objections raised by the German and French government. Let's be honest, Book Search is a service for people in the US. I think Google can live with excluding works from foreign authors, most of them probably not written in English. Google was criticised for not having translated the settlement agreement. Some authors saw a violation of an international treaty, the RBÜ. All these objections could easily be wiped away (but there would still be one problem: Google has already scanned many books of foreign author's. What would happen with them? Will Google only continue showing snippets, claiming this to be fair use?). 

  • explicitly give the book right's registry the right to licence orphan works to Google's competitors. Google might accept this as long as the registry is not allowed to give competitors a better deal than itself for the next 10 years.

Justia page


In short:

  • For a report about an AdWords related lawsuit in India, see PC World and for a metatag-case in Poland

  • The appeal court's decision in Person v. Google (see Update 45) is not very surprising. It took the Ninth Circuit only two pages to hold that Person has failed to plead sufficient facts to raise the allegations that Google engaged in exclusionary, anticompetitive, or predatory behavior beyond a speculative level.
    Person v. Google, 2009 WL 3059092 (9th Cir. Sept. 24, 2009); also see Goldman, Eric, Person v. Google Appeal Rejected, Technology & Marketing Law Blog

  • Tom Curley of AP and News Corp.'s Rupert Murdoch continue complaining about Google and Yahoo. The "evil search engines" link to their stories but don't pay the AP or News Corp. to do so! They described the likes of Google and Yahoo as "content kleptomaniacs" and promised to charge them for using their company's content. Well time to wake up and stop blaming others for your own failure to compete in a changing marketplace. How about robots.txt, or do you like the free service that drives users to your content? See Olesen, AP, News Corp bosses tell search engines to pay up

  • The British Columbia Court of Appeal has issued a judgment on the  issue of linking to a website wih defamatory statements. The appeals court confirmed the lower court's ruling (see Update 60) that hyperlinks will not in themselves implicate a website owner in publishing defamatory material found on the linked to site. But, if a Court finds that the person providing the hyperlink endorses or adopts the defamatory content, or explicitly encourages the reader to link to the offending material, then the hyperlinking website owner may be deemed to have participated in a republication of the offending material, and face liability and damages. See: p2pnet wins precedent-setting Crookes appeal

  • The homepage of Pirate Bay disappeared from Google's search results for a few days. In a first statement Google said that it received a take-down request that erroneously listed and as a result, this URL was accidentally removed from the search index. Later, Google updated its statement: "The removal appears to be an internal error and not part of a DMCA request". See: Google: Pirate Bay booted off search by mistake, CNet 


New in legal resources

  • Peguera, Miquel, The DMCA Safe Harbors and Their European Counterparts: A Comparative Analysis of Some Common Problems (September 4, 2009). Columbia Journal of Law & the Arts, Forthcoming. Available at SSRN:

  • Hausman, Jerry A. and Sidak, J. Gregory,Google and the Proper Antitrust Scrutiny of Orphan Books (August 2009). Journal of Competition Law & Economics, Vol. 5, No. 3, p. 411, 2009. Available at SSRN:

  • Garon, Jon M.,Searching Inside Google: Cases, Controversies and the Future of the World’s Most Provocative Company (August 25, 2009). Available at SSRN:





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