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Lawsuit Says Google's Sale of Keywords Is Illegal
Posted by
Soulskill
on Sat May 16, 2009 08:16 AM
from the search-is-mightier-than-the-sword dept.
from the search-is-mightier-than-the-sword dept.
Hugh Pickens writes "Google encourages advertisers to purchase other companies' trademarks as targeted search terms, and they're expanding the practice into 190 countries. When Audrey Spangenberg typed the name of her small software company into Google and saw the ads of competitors that had paid Google to display their marketing messages whenever someone searched for FirePond, a registered trademark, she was furious. This week, her company filed a class-action suit against Google in federal court, saying that Google had infringed on her company's trademark, and challenged Google's policies on behalf of all trademark owners in the state. Legal experts said it was the first class-action suit against Google over the issue. Google's acceptance of such competitive uses of trademarks has irked many other companies, including the likes of American Airlines and Geico, who have filed suits against Google and settled them. Many brand owners say the practice abuses their brands, confuses customers and increases their cost of doing business. 'I know of several companies spending millions of dollars a year in payments to Google to make sure that their company is the very first sponsored link' on searches for their own names, said Terrence Ross, a partner at Gibson Dunn, who represented American Airlines in its suit against Google. 'It certainly smacks of a protection racket,'"
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Been there done that. . . (Score:2)
I'm not entirely sure how you're going to prove trademark infringement. Courts have argued whether Google's use is even commercial, much less if the use has a significant likelihood of confusion (mainly because Google's act of only putting these ads in a sponsored link is usually sufficient for the ordinary user to know that the trademark owner isn
Geico banned keyword (Score:2)
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Apparently, they've already added "FirePond" to that list as a search for that term yields no ads [google.com]. What's more, the first link is to firepond.com, presumably the plaintiff's company. So I'm not really sure what the problem is.
Re:Geico banned keyword (Score:4, Insightful)
Uh, the problem is systemic.
We like car examples here, so: your mechanic keeps breaking a different part when you come in, so that you have to pay him to fix it a few weeks from now. You catch him at it, and he fixes that broken part for free, and your car never again has mysterious parts broken.
However, he continues this practice with all his other customers.
The class action suit is to get him to stop breaking anyone's cars, not just your own.
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These suits against Google are losers (Score:5, Insightful)
The primary focus is *not* protecting the trademark owner.
Trademark law is all about protecting consumers from being deceived about the source of goods/services.
But Google is not confusing anyone.
If Google was displaying the word "FirePond" as a hyperlink to a competitor, THAT would be closer to trademark infringement because there would at least be "initial interest confusion" (where a consumer ends up at the wrong website).
But Google isn't doing that. Google is simply promoting competition by displaying competitor's ads when you search for a trademark. The sponsored links, as everyone knows, are displayed in a separate section from the "organic" links.
That doesn't confuse anyone, it just gives them more options. Obviously, nobody likes it when you give their customers other options. But it's not trademark infringement.
Re:These suits against Google are losers (Score:4, Insightful)
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Re:These suits against Google are losers (Score:4, Insightful)
The way I see it is that it's little different to a supermarket having competing brands of say, coffee in the same aisle, or shelf.
If Dowe Egberts want - or even pay to be next to Percol the fact that they SAY to the supermarket 'put us next to the Percol coffee' doesn't infringe Percol's trademark, and the resulting proximity doesn't create any confusion.
The search results are an on-the-fly aisle created on the use of a keyword. The keywords are sold simply to REFERENCE the competitor's product so that the 'aisle' can be created.
I don't think it's so much about trademark law or confusion as brand owners whining that a search for their trademark produces a list of results that is not exclusively about them! Oh my! Someone wanting to buy our trademarked product might be reminded that another competing product exists and might buy that instead!
In other words they're trying to stifle competition.
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Trademark isn't really about sources anymore (Score:5, Informative)
Trademark law is all about protecting consumers from being deceived about the source of goods/services.
In theory, yes, but in practice (as you probably know, since you know what initial interest confusion is), that's not the reality. IIRC, consumers don't even have standing to sue in a case of trademark infringement. Maybe they can sue for false advertising, but it's the trademark owner who has to bring the lawsuit for infringement.
Besides, with the expansion of trademark due to the notion of "dilution", and the licensing of trademarks for purposes other than source-identification (sponsorship, etc. - the stadium doesn't come from M&T Bank), it's hard to argue that trademark is all about protecting consumers, or even mostly about it anymore.
In 1-800 Contacts v. WhenU, [internetlibrary.com] WhenU didn't run into trouble because their ads popped up in a separate window. That's not the case with Google (though they do clearly say "Sponsored Link"). WhenU was also not found to be "using" the trademark (despite including it in a database), because "use" of a trademark for the purpose of infringement has to be in commerce, and simply using the mark in a database didn't count as such.
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Re:Trademark isn't really about sources anymore (Score:4, Insightful)
In 1-800 Contacts v. WhenU, WhenU didn't run into trouble because their ads popped up in a separate window. That's not the case with Google (though they do clearly say "Sponsored Link").
A separate window from what, the content of the site in question? Google isn't displaying ads next to the content of the site. They are displaying ads next to a fair-use sized snippet of the content on the site, namely the search result. This very tiny piece of text is carefully constructed so as not to violate any legal guidelines by people much smarter than either one of us (probably) and is in any case a de facto allowable amount of content to display for the purpose of helping a search engine user decide whether that is the result they're looking for. When you click through the site, there are no more google ads.
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Re: (Score:3, Insightful)
A separate window from what, the content of the site in question?
Yes.
This very tiny piece of text is carefully constructed so as not to violate any legal guidelines
The thing is, this is not settled, black-letter law. The best "guidelines" are probably case law, and if you looked at the 1-800 Contacts v. WhenU case, you'll notice that other courts have ruled in different directions.
by people much smarter than either one of us (probably) and is in any case a de facto allowable amount of content to display for the purpose of helping a search engine user decide whether that is the result they're looking for.
More informed about the relevant law? Sure. Smarter? Maybe, but not necessarily. You don't necessarily have to be "smart" to be a lawyer (though I'm sure Google's lawyers are better than the average one).
Furthermore, just because they're very smart doesn't mean other very smart people wo
Re: (Score:3, Interesting)
> The primary focus is *not* protecting the trademark owner.
> Trademark law is all about protecting consumers from being deceived about the source of goods/services.
That is accomplished in part by protecting the integrity of the trademark. Google is allowing company A to advertise via explicit use of company B's trademark, which is illegal. There are only a few instances in advertising where using another company's trademark is allowed, and this isn't one of them. Using another company's trademark
its not right (Score:2)
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Re:its not right (Score:4, Insightful)
They aren't messing with the -results- of the search. They are merely adding advertisements around the search. You'll still be able to find all the wacky Al Harrington products you want.
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Shocking. (Score:4, Insightful)
Genius (Score:2)
What do they think it will happen if they win?
what if they win (Score:2)
FirePond will get back control of their own trademarked name
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It's all about the consumer's confusion (Score:2)
IANAL, but from what I've read, and what I've heard lawyers quote, one of the main factors in judging trademark infringement is the potential of confusion in the mind of the consumer (citation [findlaw.com]).
So if company A can show that the intent of a competitor (company B) buying keyword ad space specifically with company A's trademark in it and their intent is to confuse consumers into thinking company B is company A, then they have a case.
That said, there may be more to this due to the actual practice I've seen in b
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This is.... (Score:2)
no it's not (Score:2)
This is like going into the store and asking to see a range of Nintendo games consoles and the staffer slipping in a PlayStation on top, cause the company slipped him some notes
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misuse of trademarks (Score:2, Redundant)
The purpose of a trademark is to identify a product uniquely; this is done in order to help buyers, not to help companies.
As long as customer is not misled about what he is buying, the use of the trademark is OK. So, if someone responds to a search for "FirePond" with an ad for "SmokeLake", that's not a problem. They can even talk about "FirePond" and why "SmokeLake" is so much better.
It would cross the line if SmokeLake made a web site that looked like it belonged to FirePond and customers might actually
Heh... (Score:3, Interesting)
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ALL their assets are being sold off? They still seem to have a domain.
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In other words, they're going bust and rather than actually try to fix the problem they decided to see if they could get some cash out of google.
Their Real problem... (Score:4, Funny)
1. FirePond, Inc. ...
FPX offers the only true multi-tenant configure, price, quote solution featuring our robust product configurator software and unqiue proposal generation
So, what do they sell??
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I dunno ... perhaps you should check out one of their competitors' ads to find out.
Duplicate names and the world at large... (Score:2)
I think a real problem is that many names for trademarks and businesses will be duplicated through sheer probability, I really doubt this case has any legs at all against google. Google gahters the enormous amounts of data from all over the world, it would be like trying to sue someone because they have the same name as you or your business and they are located in another country. It doesn't make any kind of sense.
Personally I think a lot of old laws simply have to be obsoleted or updated to deal with th
Re:is it infringement? (Score:5, Funny)
What google did is more akin to spraying a car with McDonalds analogies, then leaving the key in the ignition.
Next to an open wifi point.
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Re:is it infringement? (Score:5, Insightful)
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Re: (Score:2, Funny)
What Google did is like accepting money from Ford to hire a goon squad sit outside a GM dealership and beat the shit out of any potential customers.
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If Google would actually suppress search results of competition you might have a point, but that doesn't seem to be the case here. As far as I understand it, its just Google selling targeted advertisment space. Nothing wrong with that. How is it illegal for Ford to place an advertisment next to a GM dealership?
Re:is it infringement? (Score:5, Insightful)
Placing a physical ad in proximity to a plot of land belonging to a competitor does not specifically depend on the exploitation of the competitor's trademark - a mark which they have to pay for and which supposedly affords them a degree of legal protection versus others exploiting it to their benefit.
Placing a web ad effectively "on" a competitor's trademark does - it could be argued (and seems likely to be the thrust of the lawsuit) - does mean that the ad's existence entirely depends on that trademark. The party selling the keyword is - again it could be argued - effectively selling the misuse of competitor's protected trademarks - definitely a no-no.
The fact that earlier one-to-one cases with Google vs large corporates resulted in settlements would seem to suggest to (IANAL) me that Google themselves may be concerned that there could be a case to answer here.
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Trademark confusion (Score:3, Insightful)
"...depend on the exploitation of the competitor's trademark..."
Which is where the confusion lies. Trademark law doesn't exist to completely protect someone from using the trademark in any way, shape, or form.
Remember the Pepsi Challenge ads? It's perfectly legal to create an ad that says I'm as good as Coke, or better than Coke, or that more people prefer me to Coke. What I can't do, however, is create a competing product and slap a Coke label on it. IOW, I can't market my product under the same name, as t
Re:is it infringement? (Score:5, Insightful)
That's about the best analogy I've read so far. There's a car angle and everything.
Google is simply firing ads at users based on the search string they entered. If they wanted to give Fold ads to people who searched for 'peanut butter' that's their business.
How is Google supposed to know a word is violating someone's trademark? They're not all as obvious as Xerox, or IBM. Is Google expected to do a trademark search on every word and phrase their advertising customers want to purchase? That's going to get awfully expensive.
Or should the customer have to sign an agreement stating that none of their adsense words violate anyone's trademark anywhere, and provide some sort of notification/counter-notification system? I guess the customer should be doing a trademark search anyway, if they are going to compete in the international marketplace.
Why isn't this woman suing the company who purchased her name as an adsense word? If anyone has violated her trademark, it's them.
Here's another analogy, if I bought an ad in a national magazine advertising my company, who's name happens to be trademarked by another another company in the same industry that I may or may not have known about, is that company going to sue the magazine that ran the ad, or me? Can the magazine be responsible for doing a trademark search on every ad they run?
How about other IP laws? Is Google responsible because I bought an adsense word to advertise my new software that violates someone else's software patent? Or violates the GPL?
Is Google responsible because I advertised a site with a bunch of bit torrent trackers to illegal copies of Wolverine?
It will be interesting to see where this one goes.
Parent
Re: (Score:3, Interesting)
Okay, so does my local newspaper have to do an expensive trademark search on all of the copy in every advertisement they sell, or should that be the responsibility of the person placing the ad?
What if I use a phrase in the copy of my ad that happens to be a registered trademark of one of my competitors. So the family-owned and operated local weekly newspaper I like to read - which compet
Re:is it infringement? (Score:4, Insightful)
How is Google supposed to know a word is violating someone's trademark?
They should hire someone to research these things.
This whole argument fails because it implies that a "word" violates a trademark. Trademarks's are words, phrases, images, and the like that are associated with a specific company or product in a specific market. The same word can be trademarked hundreds of times as it applies to different markets.
The purpose of trademark laws are to prevent one company from masquerading as another and thus mislead customers. If you offer a product similar to someone else you can't have a name so similar that it would confuse customers. That's the only valid purpose for trademarks.
So you're saying only large companies deserve trademark protection?
This is a strawman argument. He said no such thing.
YES That is why we have trademarks. The IPO (UK trademark office) has a searchable database and I'd bet the US equivalent does too.
No we have trademarks to prevent one company from fooling consumers into thinking they're buying from someone else. For example, say I do a search for "hydra". The word is trademarked by several companies. Google wants to provide appropriate ads. Suppose they show an advertisement for the services offered by the Hydra Biosciences company. Does this mean they're confusing users since they might think those services are being offered by the same software company that produces the sewage planning software "Hydra" (also trademarked under that name)? If they show ads for other biosciences companies like Phizer, are they misleading consumers into thinking that the advertisements which clearly say "Phizer" in them are actually from the company "Hydra Biosciences"?
You can make that argument, but it is a bloody weak one. I don't buy it and I don't think the courts will. Presenting me with ads for competitors is not a trademark violation any more than when I go to the grocery store and buy Coke, the company matches a keyword and gives me a coupon for Pepsi. I'm not confused that one is actually the other unless the names and products are confusingly similar. This is just companies looking for any and all ways to use the courts to try to stop competitors from advertising to people who know their brand. Here's a better idea, make products that are better and cheaper, rather than trying to prevent people from hearing about your competitors through legal shenanigans.
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Re: (Score:3, Insightful)
I must be doing this whole google thing wrong then. When I use google, I do it for the search results. I rarely look a the ads that pop up...
Re:is it infringement? (Score:5, Interesting)
Yeah, except you'd have to expand that to "Google owns the building the dealership is in".
People can't get around Google today. Or at least, nobody wants to. Google owns the search engine, google profits from the advertisers, google provides a place for people to questionably violate trademark for profit, google profits from this questionable behavior.
It'll be interesting to see what happens.
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Re: (Score:3, Interesting)
Fair point, but I'm still inclined to believe Google is in the right here. Apart from anything else, the actual non-sponsored listings are not affected, and they're free; if I search for American Airlines the first real result is their website, at no cost to them whatsoever. The only cost is if a company demands to be top in the sponsored listings as well, and to block out the suggestion of their competitors' products.
To warp a tenuous analogy even further: Google is like a department store. The customer en
Re:is it infringement? (Score:5, Insightful)
But Google does accurately provide the link to the brand you asked for. It's almost invariably the top link of the actual search results, which are freely included and not interfered with by Adsense payments. In fact, for any moderately popular brand there will be pages upon pages filled entirely with various suppliers of precisely the trademarked brand name you searched for.
The search results - the 'true' product of your search, include only the keyword Armani. To me this is akin to being placed in the Armani section of the hypothetical store. Surrounding the search results, but separate from them, are the context adverts - these point to other brands you are likely to be interested in. Akin to flyers, or posters on the wall, in my opinion.
I think the key issue is that they do not redirect or alter the main body of your search. Only the data presented alongside, related to but not part of the search is for sale.
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Re:is it infringement? (Score:4, Informative)
You must be new to the internet. Let me help you out a little. When you use Google, they provide both search results, and ads. The search results are the ones that you normally want to look at after a search. Those are the equivalent to the nice associate giving you the information on how to find Armani. The flier that the associate hands you is the equivalent to a targeted ad. You still get your search result. You are also given an ad.
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Re:is it infringement? (Score:4, Insightful)
What Google did is more like walking around in front of a Ford dealership while wearing a sandwich board advertising Chevrolet.
Which is legal. Public sidewalks, and all that. A local pizza joint has a guy out on the street corner with signs telling them to stop on by and get a pizza from a locally owned mom and pop pizza joint.
Mind you, the street corner he stands on is about 3 blocks away from said joint, and coincidentally right next to a local Pizza Hut...
And you're forgetting one important thing, which makes it even more legal.
What Google did is more like walking around in their own business in front of a Ford salesman that they invited into their business while wearing a sandwich board advertising Chevrolet.
www.Google.com is not public property. We go to their private servers and bring them our business because they have the best search resource available to us, and because they are mostly neutral.
But they don't have to be. They are, but they are not legally required to be. And no one would ever accuse them of being neutral on the "Sponsored links" sections.
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Re:is it infringement? (Score:5, Insightful)
First, your analogy does not apply here. And yes, if I sell T-shirts with a trademark on them without permission(McDonalds, Nike, NHL team names, whatever) then I am opening myself up to a very simple trademark case, one that I will lose badly (if I don't settle, which is the wise thing to do). I can mention trademark names as part of a discussion, but just sticking them on a T-shirt would be a problem.
Now if you have a T-shirt that says "McDonalds sucks" and/or a picture of Ronald being bitch-slapped by Hamburglar then that would be protected as free speech because it is parody. They might come after you to surpress it, but they likely won't win. But most people will settle anyways because they can't afford a legal siege, even if they are right.
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Re: (Score:2)
You must be somewhere in Europe. In the US, you're allowed to mention your competitors by name in your advertisements (as long as you're not impersonating them). What you're not allowed to do however is to list yourself in the white pages under your competitor's registered name (and yes, I am indeed mixing apples and oranges by using this analogy, I just couldn't think of a better one).
And let's assume that a com
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Or maybe a book...
http://www.uofupress.com/store/product395.html [uofupress.com]