Google Ruled a Trademark Infringer

Stephan writes "Google lost a trademark-infringement case in France. News.com is reporting that a Paris District Court ruled yesterday against Google in a lawsuit filed by high-end fashion designer Louis Vuitton. The company is suing Google for allowing its competitors to buy targeted ads on the search engine's search results pages that use or are associated with the Vuitton trademark. The court charged Google with trademark counterfeiting, unfair competition and misleading advertising. Google was ordered to pay $257,430 (200,000 euros). Google is facing similar lawsuits in different countries. In the United States, the company recently won a favorable ruling in a similar case brought by GEICO, the car insurance company."

Don't worry Google...

Pedro offers you his protection

I dont see a diffenence

Could somebody tell me why this is diffrent than on comericals when say Subway uses The whatever-selects. McDonalds own that. Or then McDonalds compairs to Burger Kings wooper? I3 onion rings

international vs national

some things are still permitted in the US that are not elsewhere.

comparative advertising being one of them

why too scared?

barely legal.
http://www.chaillot.com/En/pages/p9.html
" The comparative advertising is rarely used in France because its conditions are very strict and the limit with the unfair and denigrating advertising is quickly passed over."

so, google crossed the line.

Re:I dont see a diffenence

Note that such commercials are not possible in many parts of the world. Here in NZ, you can't use comparative advertising like that. Of course they still try in more subtle ways, but you can't do it outright.

Unfair Ruling

From the article: The court charged Google with trademark counterfeiting, unfair competition and misleading advertising.

Trademark counterfeiting? I really don't see this as being the case. Google is simply a tool by which various links are collected and set out in a presentable manner. Instead of shooting the messenger (Google), it seems to me that a more fair ruling would be to go after the counterfeitters themselves.

Unfair competition? I thought France had a relatively free market? And what exactly *is* "unfair competition" anyway? This aspect of the ruling seems as though it's set out to protect French business interests more than anything else.

Misleading advertising? Once again, it's the advertisers doing the misleading, not Google.

Versus Billboards

IMHO, this is a pretty bogus ruling. The ads are distinct from the regular results and marked as such, so there's little grounds for any of the typical trademark "confusion" statues to apply. I don't think that this case would pass muster in a US court.

In short, I fail to see how Google selling Louis Vuitton adwords to LV's competitors is any different than State Farm putting up billboards across the street from Geico offices or Viagra buying an ad on the page after a Cialis article in Men's magazine. It's nothing more than good business sense. It isn't TM infringement.

Re:Versus Billboards

IMHO, this is a pretty bogus ruling. The ads are distinct from the regular results and marked as such, so there's little grounds for any of the typical trademark "confusion" statues to apply. I don't think that this case would pass muster in a US court.

Actually, according to the article, it didn't pass muster in the US.

In short, I fail to see how Google selling Louis Vuitton adwords to LV's competitors is any different than State Farm putting up billboards across the street from Geico offices or Viagra buying an ad on the page after a Cialis article in Men's magazine. It's nothing more than good business sense. It isn't TM infringement.

Here, I have to disagree. Putting up billboards across the street is not the same thing. This is more like putting a phone tap on the line, and setting it up so that each time someone calls Geico, they get an intercept telling them how wonderful State Farm is.

The real question in my mind is whether, if this ruling holds up pretty broadly, the Google adwords (tm) model will suffer. How many ads are for competitors, versus how many just for a generic term like "car insurance"?

In the end, if I were Geico or Louis Vuitton, I think I'd be pretty upset too.

Re:Versus Billboards

It's more like looking up a company in the yellow pages, and finding competitors' ads right next to it.

Stupid!

Stallman likes to point out that the term "Intellectual Property" is a fallacy in the sense that copyright, patents, and trademarks are very different things that need to be discussed seperately. But one can at least identify one problem that they are all suffering from: courts and lawmakers forgetting their actual purpose, and treating them like they exist to protect incumbant companies.

In the case of Trademark, it's purpose is not to protect companies that take out trademarks, but to protect _consumers_. The point with trademark is that if I want a Coca-Cola, or a Louis-Vuitonn bag, I can be sure that what I buy is actually such a product, and not a cheap knock-off. Without trademark laws, it would be next to impossible to know what you are buying. That this leads to brands with incredible value is entirely incidental, and possibly not entirely positive.

So, in this context, the ruling could not be more stupid. How does it, in any way, hurt the consumer that competitors can advertise under queries for Louis-Vuitonn? As long as the ads are clearly marked as being adds for somebody else (as they are on Google), this will only increase competition and give the consumer more choice.

One can understand why Louis-Vuitton might not like that, but the role of the courts ought not be to do their bidding!

Now I don't entirely understand this..

So the french government is now dictating what results a search engine can produce? If someone is injecting a query into my system, I would expect that I could return whatever information I want, unless the information in and of itself was illegal. For example when I click "similar pages" link at google for amazon.com and I get an overstock.com link is that illegal? Aren't I free to make whatever associations I want, possibly with the exception of when implying a false relationship? Google ads are marked as such even though many people can't tell the difference - there clearly is no direct relationship between the search query and the ads. Even so, who is to say that by default a search engine's results imply a particular relationship to the search terms?

It is not the fault of the technology, but users that are just plain confused. This ruling will look incredibly dumb in a generation or two when people are generally more saavy.

just remove them

Google could remove ads + indexed pages. Those who sue Google are not worth it to be found ;)

lets see who's laughing

when google takes them out of their search results. After all why risk another lawsuit when someone else will gladly take those hits.

The real reason this is stupid

LV is trying to claim that Google, a company which is not beholden to them, has somehow diluted their trademark by associating other companies with it. However, if google didn't index pages linking to them, or their pages, then they wouldn't come up at all. When X is the amount of business driven to LV by google, and Y is the percentage of that business lost by people buying competing (and sometimes knockoff) products, Losing Y percent of X still leaves you with infinitely more profit from that source than you paid for.

In other words, google is a free resource and they have no right to bitch about what ads are shown along google searches for their trademark.

The counterargument is probably that because google is ubiquitous in search, they have an unfair position in the market from which to do things like this. However, they are anything but a monopoly, so that argument really doesn't wash - especially since it's not illegal to sell LV and a competing product in the same store (unless the competing product is illegal anyway) so it makes no sense to make it illegal to mention them together on the same web page. But then, most legal systems since Hammurabi are not based on what makes sense for the most people.

Extremely misleading translation.

Forewords : I am a french lawyer.

The parent article is awfully misleading. Our legal systems differ on trademarks enforcement, and google fell in a trap it should have avoided by simply asking a competent local lawyer. Who's concerned ? google.FR ; why ? so-called anti-americanism ? Bullshit. We've got cases of the very same nature dating back to the 19th century between french firms. Google pobably thought they could come down there and do business as they see fit, but we're not a 3rd world country, and you can't bribe judges to twist the law. It has nothing to see with governement either.

So what's it all about ? Unfair competition. It has been ruled for over a 100 years that it is a civil wrong for a company to use the efforts made by another firm to promote its trademarks. Little example : A has a trademark 'a' ; B pays 'wall mart' for, whenever a consummer wants 'a' product, to give him a discount on 'b' product, or advertize 'b'. Why ? because B is in fact capitalizing on the money A spent to have 'a' trademark known to the public, without paying back A for this effort, thus 'stealing' it from A. 'wall mart' is wrongfully getting a profit out of it either.

The case of YP is different, because when one checks the YP, it looks for a type of good or service, and the YP comprehensively lists all the places you can find one, in alphabetical order, and no discrimination ; you can't check the YP for a trademark.

You may have a different opinion in the USoA, but know what ? We don't care.

Change your sunglasses

Since most of the folks here are in America, they tend to respond with American ways of thinking. For the record, I'm a US citizen with 11 years of service in the US Navy and I am a disabled vet.
A good example of how France handled the case can be seen in how many cars are marketed in Europe. In the US, every vehicle is compared to the competition (ex: The Ford F250 has more towing power than a Chevy pickup, has more legroom than a Dodge pickup, and has better rims than the Toyota Tundra). This is not allowed in Europe. They can extoll the virtues of their own vehicles without dragging in other manufacturers products. To an informed consumer, both methods are silly, since they're all based on lies, damn lies and statistics.
Therefore, one is not allowed to use someone else's trademark in advertising in most European countries. This seems to be the spot where Google got in trouble. While it can be argued that Google was only the messenger, they actually made money from selling the key adwords that were trademarked. I think this is where they got hit, since they made a profit from the dealing. If they didn't charge for keywords, they probably would have avoided the fine. Perhaps if they change their adwords to kill trademarked names and separate the first and last names as different words, instead of the phrase "Louis V..." use "Louis" "Vuitton" "handbag", they could get away with it, but with this on the books I'd be extra cautious. As someone else pointed out, hire a lawyer and get legal in most of Europe - pay less than the 250K they were fined. Good insurance, IMHO.

Re:This is plain stupid.

Because they are making money of a trademark they don't own.

It's not complicated.

Re:This is plain stupid.

They are selling AD SPACE. If I have a Mazda to sell, I can mention the Mazda trademark in ads. If I buy ad space in the newspaper opposite a full-page Honda ad, or on the same page as a story about GM opening a new plant, that's their tough shit. Sure, my ad will be seen by more people because it's next to something else - that's life.

People doing searches for Louis V-whatever-the-frig-handbags are going to see ads for others - boo hoo.

Re:This is plain stupid.

If I have a Mazda to sell, I can mention the Mazda trademark in ads.

I think you're misleading people. It's more the case of (to use your example) Ford outbidding Mazda for the advertising space on their name. You search for Mazda and up comes Ford.

You might not care much about Ford vs. Mazda. Suppose it were Microsoft buying up all the ad-space for Red Hat, or Walmart buying up the ads for $SMALL_CHAIN.

If they want to bid on a type of item, say car, well that's one thing. But should they be able to out-bid you on your own name? One to think about more carefully.

Re:This is plain stupid.

It's more the case of (to use your example) Ford outbidding Mazda for the advertising space on their name. You search for Mazda and up comes Ford.

I honestly don't think Mazda would mind [ford.com]...

Anyway, I still don't see the issue with respect to Google. You can't buy "all the advertising space" related to your rival with Google, all you can do is have it so your advertising comes up if you search for that rival.

From the point of view of an end user, this is far from evil or misleading. This isn't about people trying to pass themselves off as a company, it's simply marketing to people interested in a particular product. If I search for "Biro", the chances are I want a pen. If I'm searching for something specific to Biro (like "How do I contact them about repairing this pen"), then the relevent links will appear on the left, as always. If I'm looking to buy a biro, then I'll be interested in the unobtrusive links on the right from companies that feel I may be interested in their product. Maybe I would prefer a Parker. Maybe I want to buy the Biro from WHSmiths.

I think the fairest comparison is actually Parker Pens going to a newspaper and saying "When you next do a story concerning Biros, can you put our ad next to it?"

That shouldn't be considered trademark infringment, and it's certainly not evil business practices. Trademarks were intended as a way to guarantee against fraud, as one group passing its products off as the other's. It strikes me that the laws here are being taken to go far beyond that remit, to the point that it threatens speech instead. If they carry on this way, just as the DMCA is undermining the legitimacy of copyright, and software patents the legitimacy of the patent system, they risk undermining trademarks too. Legislatures need to intervene and stop this abuse.

Re:This is plain stupid.

Actually, they do. The same goes for off-the-shelf products you buy at places such well known computer stores. Did you ever wonder why some companies seem to get better spots for their products than others?

In the early 90's, we (a small startup company...now defunct) were going to bring a product to market for sale in a large computer store. At the time, to get our shrink-wrapped product into consumer's hands, the only place to sell it was in the large computer store chains - the internet was just starting to take off and most people didn't buy online.

The price at the time was about $250,000 year for a decent spot on the shelf - more if we wanted a highly visible end spot. Our business plan had us breaking even around year 5. You do the math. For a small, 2 man startup, that was some serious cash even before we factored in paying ourselves and making a living.

Perhaps, today, the prices have gone down due to competition from online stores. But, at the time, it was THE only way to go.

RD

Re:This is plain stupid.

But stores DO charge Coke a fee for "shelf face space" and/or "product presentation".

WalMart is notorious for this, but they only took an existing practice and expanded on it ...

Same with beer companies paying extra to have their brand placed more conveniently, or with more linear feet of exposure.

Tobacco companies pay your local store hundreds of dollars every month so that their package is right behind the cashier, and their competitors' is less visible.

Nobody has a right to be protected from competitors ads if they are not lies.

Re:This is plain stupid.

So all Google has to do is change a couple lines of code so that the search term "louis vuiton" is ignored, just like it ignores "as", "the", etc.

Google could easily make it a policy that if you sue them, they blacklist you. They have NO obligation (other than to their shareholders) to index your site. It's their servers and their software, so they can do whatever they want with it. Actully, you could even make a strong argument that they have a fiduciary obligation to their shareholders to avoid lawsuits, so blacklisting the trademarks of hostile companies is just good business practice.

If it were me, I'd say something like: You're not happy that your trademarked words can result in your competitors' pages coming back in the search results or adsense? No problem, well make it so that someone entering your trademark as a search term brings up a message that says "The following words are protected trademarks and were not included in your search: $TRADEMARK". Hope you're happy now, asshat.

Re:Screw France

There is no anti-americanism in France, it's just a stupid court order. As for the nazi Yahoo auctions, it's just that Europe has a different version of what is free speech, which is comprehensible from a geographical point of view: Germany (with the Hitler guy) is in Europe.

Of course I don't pretend I can explain this court order, but it has absolutely nothing to do with the USA, GWB, the Irak war, the Nazis or an international Jewish/Freemasonry conspiracy, just some trademark issues.

Re:Screw France

The fact that they are messed up to begin with...France is irrelevant.

That's rather extreme. Just because the French state has different political views and opinions to you, doesnt mean they are any less valid. We don't know enough about the case to judge whether or not their was any bias, so jumping to these sort of conclusions is not particularly helpful.