The U.S. District Court for the District of
Minnesota held that the use of a rival real estate broker's trademark as a
keyword term, as well as in the text of sponsored links, is not a fair use of
the mark where there are other opinions for describing the market the defendant
Without lengthy analysis, the court found that the
defendant's purchase of search terms like “Edina Realty,” “Edina Reality,” “EdinaReality.com,”
“EdinaRealty,” “EdinaRealty.com,” “www.EdinaReality.com” and “www.EdinaRealty.com”
on both Google and Yahoo did constitute use of the plaintiff's mark in commerce.
The court held that although defendant's use was not "conventional," the
purchase of terms comprising the marks, in order to generate sponsored link
advertisements, satisfied the definition of use in commerce as provided in 15
The court briefly evaluated the standard likelihood
of confusion factors and found enough dispute about several factors to require a
trial. Edina Realty proffered as evidence of actual confusion several e-mails
received by MLSonline from consumers inquiring about Edina Realty.
MLSonline also sought dismissal of the trademark infringement claims advanced
against it on the ground that its use was a permitted nominative fair use:
The Court holds that defendant's use of the Edina Realty mark does not
constitute nominative fair use as a matter of law. Defendant uses the mark
as an Internet search term, in its Sponsored Link advertisements, and in
hidden text and hidden links on its website. None of these uses requires
the Edina Realty mark. In its advertisements and hidden links and hidden
text, defendant could easily describe the contents of its website by stating
that it includes all real estate listings in the Twin Cities. Similarly,
defendant could rely on other search terms, such as Twin Cities real estate,
to generate its advertisement. In addition, defendant's use of the Edina
Realty mark in its advertisement does not reflect the true relationship
between plaintiff and defendant. Defendant's advertisement that has
appeared on Yahoo, for example, places the Edina Realty mark in the headline,
which is underlined and in bold font. The name of defendant's company is
listed in much smaller font at the bottom of the ad. Defendant could have
done more to prevent an improper inference regarding the relationship.
In May 2006, the case settled. Lawyers representing
Edina Realty and TheMLSonline.com confirmed that a deal has been reached but
said its terms were confidential.
2. Merck & Co. Inc. v.
Mediplan Health Consulting Inc.
The U.S. District Court for the Southern District
of New York held that the purchase of keyword advertising triggered by a
trademarked term is not an actionable "use in commerce" (Merck & Co. Inc. v.
Mediplan Health Consulting Inc. (SDNY Mar. 30, 2006). Federal law provides that
a mark is "used in commerce" (15 U.S.C. § 1127 (1)) in connection with services
"when it is used or displayed in the sale or advertising of services and the
services are rendered in commerce" (15 U.S.C. § 1127 (2)). According to the
court "the ZOCOR mark is used only in the sense that a computer user's search
of the keyword "ZOCOR" will trigger the display of sponsored links to
defendant's website. This internal use of the mark "ZOCOR" as a key word to
trigger the display of sponsored links is not use of the mark in a trademark
sense." The Court found further support for its decision in the fact
that "defendants actually sell Zocor (manufactured by Merck's Canadian
affiliates) on their websites. Under these circumstances, there is nothing
improper with defendants' purchase of sponsored links to their websites from
searches of the keyword "Zocor."
So, simply put the Merck case is directly contrary
to the Edina Realty case on the question of whether purchasing a
competitor's trademark as a keyword constitutes use in commerce. Upon a
motion to reconsider and review the Edina Realty opinion, the Merck
court reaffirmed its ruling dismissing the mark owner's trademark infringement
Merck., F.Supp.2d, 2006 WL 1418616 (S.D.N.Y. May 24, 2006).
Two lower courts have ruled that use of a
trademarked term to trigger ads is "use in commerce." See Government Employee
Ins. Co. v. Google Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) and Google Inc. v.
American Blind and Wallpaper Factory Inc. (N.D. Cal. March 30, 2005).
Hotels Meridian v. Google France (for more information
on the lawsuit click here)
The verdict in the main procedure opposing Société des Hôtels Méridien and
Google France was handed down on March 2, 2006. The Nanterre
court of first instance heldthat Google France has committed acts of
trademark infringement within the meaning of articles L 713-2-a and L 713-3-b of
the Intellectual Property Code. The court ordered Google to
to delete from its key-word
generator, which is accessible from its website www.google.fr, any and all
reference to the trademarks “MERIDIEN” and “Le MERIDIEN”, identically or
similarly, under daily penalty of 5000 €
to publish on the first page of its website
accessible under the address www.google.fr the following legal
advertisement, under the title “JUDICIAL PUBLICATION”, for a duration of
fifteen days and under penalty of 3000 € per day, beginning 48 hours after
the notification of the present verdict: "The first chamber of the Nanterre
Court of First Instance has sentenced the company Google France by verdict
of March 2, 2006 for having infringed on the rights of the company Société
des Hôtels Méridien in the trademarks “MERIDIEN” and “Le MERIDIEN”"
The court also sentenced Google France to pay to the
plaintiff the sum of 150.000 € in compensation for the infringement.
The case is currently on appeal to the French Supreme
Court. A decision is expected for the end of 2006.
Google v. Louis Vuitton
The Paris Court of Appeals decision is expected soon. So
far Google has already lost two appeal cases regarding adwords in France.
4. Yahoo Sued for Buying Trademarked Keywords on Google
JP Enterprises -which runs the
online dating service lovecity.com- has sued Yahoo and three other
companies for allegedly paying to have their ads come up when its name is
typed into the Google search page. The lawsuit,
filed in federal district court in Colorado accuses Yahoo and the other
companies of bidding to appear on Google's results pages when users query on
"lovecity" and the related terms "lovecity.com" and "www.lovecity." JP
Enterprises claims that Yahoo and the other companies are violating the JP
Enterprises trademark by using it to trigger ads for their own dating sites,
and seeks punitive damages because, the suit alleges, the sponsored ads
appearing through the AdWords system caused confusion with consumers, hurt
the "lovecity" brand and cost sales.
On May 15, 2006, Judge Pechman of the U.S. District Court
for the Western District of Washington entered an order enjoining a former
employee from using his former employer's trademarks as metatags in a web
site promoting competing services, Shainin II, LLC v. Allen, (Slip
Op.) 2006 WL 1319405 (May 15, 2006).
6. Google, Perfect 10 appeal thumbnails case (for more details on the case
Both Google and Perfect 10 have appealed a
district court ruling finding that Google's creation and display of
thumbnail photos for indexing purposes likely infringes Perfect 10's
copyrights in those photos, but Google's inline links to the fullsized
7. "Syndication Fraud" Lawsuit
An online advertiser filed a
lawsuit May 1 in the U.S. District Court for the District of New Jersey
against Yahoo, alleging that Yahoo's practice of causing online ads to be
displayed via spyware and on typosquatted web sites violates its contract with
advertisers (Crafts by Veronica v. Yahoo! Inc., D.N.J., No 12:06-cv-01985,
complaint filed May 1, 2006). If the class action is certified, any Yahoo!
customer in the United States would be a member of the class.
been sued for allegedly refusing an anti-China ad. According to the
complaint, activist Christopher Langdon submitted a three-line ad through
Google's AdWords program on Thursday, March 29. The ad read simply:
"Communist China Has Murdered Millions - Boycott China"
Langdon also attempted to
advertise his website www.ncjusticefraud.com with Google. That site accuses N.C.
Attorney General Roy Cooper of lying to the U.S. Supreme Court and perpetrating
other fraud on the Court. The proposed ad read: "Roy Coopers Fraud--Cooper's
fraud on the Supreme Court--Corruption within the N.C.D.O.J.
That ad was rejected,
purportedly because: "At this time, Google policy does not permit ad text that
advocates against an individual, group or organization. In addition, this
policy does not permit the advertisement of websites that advocate against a
group protected by law."
Langdon claims that Google's
reticence violates his constitutional right to free speech. In his opinion
private property owners can be bound by the First Amendment if the property
becomes a public space.
"There is a great deal of
inconsistency and hypocrisy in the application of Google's Content Policy.
Google's Content policy requires that the ads, and the associated website,
conform to the Content Policy. However, Google routinely allows large budget
advertisers to evade Google's Content Policy. For example, if you Google Search
"Impeach Bush," or, "Anti-Hillary Clinton," there are a large number of ads (sponsored
links) next to the search results. One of those sites sells material that calls
Senators Clinton, Kenendy and Kerry, Communists. They also sell material
accusing President Bush, and members of his administration, of murder, treason,
election fraud, lying and of being Nazis. It seems to me that if those sites
can make those statements, then I should be allowed to accuse Roy Cooper of
lying to the U.S. Supreme Court."
Mark Roberts claimed breach of
contract, in part because of Google's add URL feature and help pages supposedly
formed a promise that his pages should be top ranked. After Google threatened to
file an anti-SLAPP motion against him, a means of effectively getting the court
to agree that the case is without merit and recovering costs, he
voluntarily dismissed the complaint without prejudice.
Roberts v. Google, No.
1-06-CV-063047 (Cal. Superior Ct.
filed May 5, 2006)
11. Links to Podcast-Feeds a
After providing links to
publicly accessible MP3’s hosted on This American Life’s own servers, Jon Udell
and Jared Benedict received friendly emails (no “nastygram” or formal ceast and
desist letter) from Ms. Meister, This American Life’s webmaster, making a
request to take down the hyperlinks and RSS feeds - accusing them of copyright
infringement - or she’d regrettably have to get lawyers involved. Both
webmasters voluntarily removed the items.