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Appeals Court Rules Against Google On Keyword Ads 39

Posted by timothy
from the black-robes-and-handwaving dept.
Eric Goldman writes "The Second Circuit Court of Appeals ruled against Google in Rescuecom v. Google (PDF), a trademark infringement lawsuit over Google's keyword advertising practices. The court said: 'The Complaint's allegations that Google's recommendation and sale of Rescuecom's mark to Google's advertisers, so as to trigger the appearance of their advertisements and links in a manner likely to cause consumer confusion when a Google user launches a search of Rescuecom's trademark, properly alleges a claim under the Lanham Act.' While this result hampers Google's ability to end trademark lawsuits early, the case is still at an early stage and Google could still win."
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Appeals Court Rules Against Google On Keyword Ads

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  • by Trepidity (597) <delirium-slashdot@@@hackish...org> on Saturday April 04, 2009 @04:44PM (#27460407)

    The ruling holds little besides the fact that Google did engage in a "use in commerce" of the trademarks. The Court followed the not hugely surprising line of reasoning that: 1) AdSense is clearly a commercial endeavor; and 2) AdSense clearly uses the trademarks, e.g. in its keyword suggestion tool. Therefore Google's claim, that the case should be dismissed immediately for failing to even fall within the scope of trademark law, was rejected.

    Of course, Google's uses may still be perfectly legal. All the court's held is that Google does, as a factual matter, use the trademarks, and does so commercially. The case going forward will decide whether that use was within the scope permitted by trademark law.

    • Re: (Score:3, Informative)

      by gravesb (967413)
      It was a 12B6, so they didn't rule on anything as a matter of fact, just a matter of law, right? This ruling was just that a legal claim had been stated, but there hasn't been any discovery or fact finding, has there?
      • by Trepidity (597)

        Ah yeah, I wasn't meaning to use "factual matter" as a term of art. The court relied on facts that were conceded by both sides, such as how Google AdSense operates, to determine whether, as a matter of law, such usage would constitute "use in commerce".

  • by Anonymous Coward

    Trademarks *are* special entities under the law. Doesn't it dilute a trademark when your competitor or unrelated or derogatory things come u from a search? Ultimately google will prevail for the same reason advertisers can use names for comparisons in their advertisements, it's a free speech issue which will trump commerce law.

    • by mysidia (191772)

      Hrm.. Google is a commercial search engine, and users can enter their trademarked words into google and click "Search"; some results will be displayed.

      So Google uses their marks even without AdSense.

      The only way google could refrain from ever using their mark in commerce would be to reject, prevent, or block any user's search attempt, if a protected name was entered into the search box.

      I doubt that very many businesses would prefer this as an alternative to allowing Google expected and ordinary uses

  • I use Google Adwords for targeted marketing campaigns. Try using any well-known trademark in a new campaign; as of a month ago, they started getting much more aggressive about filtering these out. You can't save an ad unit if it contains trademarked phrases. I don't have any problem with this, aside from cases where you're using the trademark with permission. At some point I'm probably going to wind up emailing the Adwords team about cases like this, offering written verification of license to use such terms.
    • Using a competitor's trademark without permission in your own advertising is not necessarily illegal. If Google is blocking particular trademarks from being used, it's probably just a CYA measure.

      • Re: (Score:3, Insightful)

        by palegray.net (1195047)
        True, but it does depend on the circumstances. With the huge number of Adwords campaigns being created on a daily basis, I really can't blame Google for covering their rears. It would be nice if they added some functionality to help automate the process of verifying permission to use a trademark, although offhand I don't know where to start on such a framework. In fact, that kinda sounds like a good idea for a startup, developing a system that would interface between separate organizations for such a purpos
    • by badasscat (563442)

      I don't have any problem with this, aside from cases where you're using the trademark with permission.

      Well, but a lot of people are. Google is not actually allowing anyone to use trademarked names at the moment, including advertisers who have distribution deals with those who own the trademark (which generally gives them the right to use the trademark in marketing - after all, what manufacturer wouldn't want their officially authorized dealers to advertise that they sell their items??). There are a lot o

  • by dada21 (163177) <adam.dada@gmail.com> on Saturday April 04, 2009 @05:32PM (#27460725) Homepage Journal

    I'm a consultant. People hire me to ask me questions about areas I am an expert in.

    A few months ago, someone called me to ask about a product made by an obscure printer manufacturer, Mutoh. They had problems with some of their hardware and support. They asked me "What else is out there that you recommend?" Since I have expertise in this area, I told them I had some options for them. They hired me, and I offered them good advice.

    I was a middle man between Customer A and a competitor to Mutoh (in their case, Mimaki). Should I be sued for Trademark infringement?

    Google is a middle man between customers looking for information, and people offering answers to those questions. Mimaki has not paid me to dole out information, but in the case of a relatively free market, many "consultants" are actually commissioned by manufacturers to push their products. This isn't uncommon. If someone goes to an electronics store asking about an HP printer, the salesman MIGHT turn and offer an Epson because of a SPIF or other incentive to sell Epson over HP. It's the customer's responsibility to ask "Are you getting anything additional if I buy an Epson over an HP?"

    Google isn't selling anyone's trademarked name, they're allowing two third parties to meet over what party A is looking for and party C might have information over to offer party A in their decision-making process.

    If anything, this may actually HELP companies who have competitors buying their trademarked names as keyboards on Google AdWords. It offers reputation to the original company, and they can stake out a claim by promoting it.

    Anyone who is afraid of their competition is only afraid because their competition is doing something better, cheaper or faster. Trying to shut down Google AdWords for letting 2 third parties interact over a keyword is going to make your market SMALLER, not bigger.

    What a bunch of morons.

    • Re: (Score:1, Informative)

      by Anonymous Coward

      I'm not sure that it's fear of competition.

      I have a client who's closes competitor has taken out google ads using my clients trademarked name as their keywords. So when you search by that company name the top thing on the page is their competitions ad followed by my client who appears at the top of the search list.

      My client then has to take out ads as well just to keep customers who were already looking for them specifically. it turns into a bidding war between my client and his competitor and the only wi

      • Are the ads clearly distinguishable from the rest of the content, i.e the results? When I run a Google search they are.
    • Re: (Score:2, Informative)

      by StormReaver (59959)

      You could look at it a different way, as well. If someone asks you, "What Mutoh printers do you have to replace this one?", but you then point them to the HP printers and say, "these."

      By itself, it's not a problem. But what if HP paid you to point customers to their printers anytime someone asked about Mutoh printers? That is the essence of what Google is doing here: being paid by an advertiser to interject its products into the search results for competing products.

      Google should be bitch-slapped for thi

      • Re: (Score:3, Insightful)

        by mysidia (191772)

        In this case, the name's not important. The trademark isn't the significant thing here.

        HP could have paid them to point out the HP printers any time a customer asks about any type of printer at all, no matter what name.

        And more importantly, things are properly labelled. They aren't lying to the customer and saying the HPs are Mutoh printers, that would be confusing.

        HP could even pay them to stack up the HP printer boxes on the front of all the shelves, so that to find a Mutoh printer, the customer

      • Google should be bitch-slapped for this, everyone at Google involved with this should have to write their "don't be evil" slogan 5,000 times, and turn it into the teacher before the end of the day.

        because this is obviously worse thing any company has done. A company the size of Google is not going to be perfect, I doubt the people at Google went out of their way to break these laws like other companies

      • But what if HP paid you to point customers to their printers anytime someone asked about Mutoh printers?

        This isn't a problem if ads and search results are separate. The ads come from money. You already know this. The search results /should/ be the output of the neutral search engine algorithm. So, there is no problem until the search results are purposely skewed by advertising dollars.

    • Re: (Score:3, Interesting)

      by AgNO3 (878843)
      That is such a flawed argument. Its more like Mc Donalds running an ad saying there is a Burger King at such and such address but their isn't a Burger King there is a Mc D's. Its not up to Google to decide to help a company that doesn't want its help. Company B doesn't have the right to use Company A's built and paid for reputation for their gain.
      • Re: (Score:2, Insightful)

        by mysidia (191772)

        That is such a flawed argument. Its more like Mc Donalds running an ad saying there is a Burger King at such and such address but their isn't a Burger King there is a Mc D's

        No, that would be lying. They aren't lying, the ads are in general clearly labelled, if you click the ad, you KNOW you aren't going to the site of the product you originally search for (They CONVINCED you to investigate an alternative), they are just shown when you look for a competitor name.

        It's like if you go to a restaurant and as

    • Re: (Score:3, Insightful)

      f anything, this may actually HELP companies who have competitors buying their trademarked names as keyboards on Google AdWords. It offers reputation to the original company, and they can stake out a claim by promoting it.

      They already have protection for their reputation in trademark law. Trademark law, just like copyright, needs to stop having Google and non-Google versions.

      Anyone who is afraid of their competition is only afraid because their competition is doing something better, cheaper or faster.

      What

  • From the PDF:

    "Rescuecom alleges, however, that a user might easily be misled to believe that
    the advertisements which appear on the screen are in fact part of the relevance-based search
    result and that the appearance of a competitor's ad and link in response to a searcher's search for Rescuecom is likely to cause trademark confusion as to affiliation, origin, sponsorship, or approval of service."

    When I did a search for 'Rescuecom' my adsense suggestion was 'iyogi.ca' with the caption 'Get computer service be

  • When I go to the supermarket here in France and buy Nestle baby food for my little boy, the supermarket system prints and hands me 1 discount tickets for "Bledina baby food" for each Nestle product I bought.

Forty two.

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