aba’s 25th annual intellectual property law conference google’s adwords program: the current...

ABA’s 25th Annual Intellectual Property Law Conference

Google’s AdWords Program: The Current State of the Law in the U.S. and Internationally Presented by

James R. Davis, II

Arent Fox LLP

Washington, DC | New York, NY | Los Angeles, CA

April 7, 2010

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How Google Makes $

“Google AdWords is our advertising solution that lets businesses such as yours promote their products and services alongside or above Google.com search results.”

Source: Google.com

Google AdWords Disputes

How Advertisers Participate

Prospective advertisers must specify: The words that will trigger their ads; and The maximum amount they will pay per click.

Example: Rosetta Stone language program

3Google AdWords Disputes

AdSense

A method of placing ads on Web sites that are relevant to the keywords chosen by the advertiser.


$23,000,000,000$23,000,000,000


Why TM Owners Object

Trademarks are “used” several waysThird parties can buy TMs they want to be associated with their goods/services/sitesThe TMs trigger sponsored ads when consumers search for the trademarks on Google.comThe TMs can show up in the text and title of the sponsored ads


Typical Causes of Action

Plaintiffs typically allege the following TM claims: Direct, contributory and vicarious trademark infringement False representation Trademark dilution Initial interest confusion


Elements of a TM Infringement Claim

P owns a valid and protectable TM, D used the TM in commerce, In connection with the sale or advertising of

goods or services, Without P’s consent, and The use is likely to cause consumer confusion(But see initial interest confusion)


Google’s Defenses

Sale does not amount to using the TM if the TM does not appear in the sponsored ads.

Google does not compete with the P’s business: “Google operates a search engine. American flies airplanes.”

Grocery store analogy: “Just as it's reasonable to expect a range of brands on any shelf in a grocery store, providing users on Google with more than one option when they search for a brand name or other trademark helps them to find the best product at the lowest price.”

Communications Decency Act


Critical TM Issues

Is Google “using” the TMs in commerce?

If not, case usually dismissed on summary judgment

Initial Interest Confusion


Initial Interest Confusion

Infringement caused by temporary confusion that is dispelled prior to sale

Does not require a likelihood of confusion at the time of sale; the mark must only capture the consumer’s initial attention

Particularly applicable to the Internet: domain names, metatags, and search engine keywords


Litigation

Brookfield; Playboy v. Netscape U.S. Pending U.S. Resolved International


Initial Interest Confusion Cases

Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).

Meta-tags

“although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using moviebuff.com or MovieBuff to divert people looking for MovieBuff to its web site, West Coast improperly benefits from the goodwill that Brookfield developed in its trademark.”


Initial Interest Confusion Cases (cont’d.)

Playboy Enterprises, Inc. v. Netscape Comm. Corp., 354 F.3d 1020 (9th Cir. 2004).

Banner ads triggered by trademarks

“analogies to Brookfield suggest that PEI will be able to show a likelihood of confusion sufficient to defeat summary judgment” even though consumers will know they are not buying Playboy’s products.


Pending: Rescuecom Corp. v. Google (N.D.N.Y.)

N.D.N.Y. ruled in favor of Google and held that Google was not using Rescuecom’s trademarks by selling them as keywords because the sponsored ads did not display the trademark.

Second Circuit overturned the district court’s ruling and remanded case. Sale of trademarks as keywords may constitute use in commerce.

Status: Pending


Pending: Rosetta Stone Ltd. v. Google (E.D.Va.)

Court denied Google’s motion to dismiss re: Lanham Act trademark infringement and

dilution; VA unfair competition

Court granted motion to dismiss re: false endorsement and conspiracy claims

Status: Pending


Pending: Tokyo Broadcasting Sys. v. American Broadcasting Cos. (C.D. Cal.)

P alleged infringement based upon ABC’s purchase of P’s trademarked TV show names as Google AdWords

ABC filed 12(b)(6) motion claiming no initial interest confusion because TMs do not show up in sponsored ads (and ABC does)

Court denied ABC’s motion, citing Brookfield and Playboy

Status: Pending


Pending: Class Action Suits

FPX, LLC v. Google (E.D. Tex.) - seeking class action status against Google, AOL, YouTube, Turner Broadcasting System, MySpace, and IAC/InterActiveCorp

John Beck Amazing Profits v. Google (E.D. Tex.) - seeking class action status against Google and AOL


Resolved: Google v. Amer. Blind & Wallpaper (N.D. Cal.)

Holding: Google’s AdWords program may violate trademark law because it: allows advertisers to key their ads to American Blind's trademarks; and may cause initial interest confusion.

Status: Settled


Resolved: Google v. American Airlines (N.D. Tex.)

Google moved to dismiss, claiming: - sales of AA's TM as keyword does not constitute

use b/c TM does not appear in sponsored ads;- Google and AA not competitors and Google

does not actually provide the keywords.

Court denied Google’s motion in a one-page order without analysis.

Status: Settled


Current State of Law Internationally

In October 2009, the E.U. Advocate General and Advisor issued formal opinion in Google v. LVMH Moët Hennessy — Louis Vuitton

Held that Google France’s sale of TMs as keywords in its AdWords advertising program did not infringe those marks.

Status: Case remanded to the European Court of Justice


France

French courts have tended to find that Google’s sale of trademarks as keywords is a use in commerce, opening Google and its advertisers up to claims of trademark infringement


Google’s Adjustments

Different Policies Around the World

“Depending on the regions in which you have trademark rights, we may investigate the use of trademarks in ad text only or in ad text and keywords.”


Where Google Only Investigates TM Use in Ad Text

About 200 countries, including: U.S. U.K. Canada MexicoNote: in the U.S., Google allows some ads to include TMs if for a reseller or information site. But not for competitors or criticism.


Where Google Investigates TM Use as Keyword and In Ad Text

About 60 countries, including: Australia ChinaMost of Europe (except UK, Switzerland, Ireland)


URL Displayed in Sponsored Ad

In 2008, Google amended its policy and required advertisers to display an accurate URL in sponsored ads“Your display URL must accurately reflect the URL of the website you're advertising. It should match the domain of your landing page so that users will know which site they'll be taken to when they click on your ad.”

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[email protected]

202.857.6169

Presented by

James R. Davis, II

Arent Fox LLP

Washington, DC | New York, NY | Los Angeles, CA

April 7, 2010

aba’s 25th annual intellectual property law conference google’s adwords program: the current...

Documents

google adwords disputes

adwords program

confusion infringement

source confusion

consumer confusion

temporary confusion

likelihood of confusion

protectable tm